OPPOSITION No B 2 448 705
Wargaming.net LLP, Sterling House, Fulbourne Road, Walthamstow, London E17 4EE, United Kingdom (opponent), represented by Wildbore & Gibbons LLP, Sycamore House, 5 Sycamore Street, London EC1Y 0SG, United Kingdom (professional representative)
a g a i n s t
Beijing Zhiminghudong Technology Co. Ltd., Room 1492A, 3 Building, 3 xi jing Road, Badachu Hi-tech Park, Shijingshan District, Beijing, People’s Republic of China (applicant), represented by Christoph Lösch, Albrecht-Dürer-Platz 4, 90403 Nürnberg, Germany (professional representative).
Class 9: Computer operating programs, recorded; computer peripheral devices; computer software, recorded; computer programs [downloadable software]; computer game software; computers; electronic publications, downloadable; animated cartoons; telephone apparatus; sound transmitting apparatus.
Class 41: Game services provided on-line from a computer network; entertainment; amusement parks; holiday camp services (entertainment); radio entertainment; layout services other than for advertising purposes; publication of electronic books and journals on-line; providing on-line electronic publications, not downloadable; educational services; publication of books.
Class 42: Computer programming; computer software design; computer system design; conversion of data or documents from physical to electronic media; installation of computer software; computer software consultancy; data conversion of computer programs and data [not physical conversion]; updating of computer software; maintenance of computer software.
Union trade mark application No
3. Each party bears its own costs.
opponent filed an opposition against all the goods and services of
European Union trade mark application No
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Computer games software; computer games; video games; computer software for video games or for games machines; computer programs for video and computer games; video discs, discs, tapes, cassettes, compact discs; CD-ROMs, data bearing record carriers for computers; sound recordings, video recordings; software for playing video, computer and on-line games; software for enabling video, computer and on-line games to be run on multiple platforms; downloadable software for developing, designing, modifying and customizing video, computer and on-line games; games software for mobile phones; electronic publications (downloadable) provided on-line from databases for the Internet; video games enhancers; parts and fittings for all the aforesaid goods.
Class 28: Games and playthings; handheld computer games equipment; home video game machines and hand-held video game machines; computer games equipment adapted for use with TV receivers; parts and fittings for all the aforesaid goods.
Class 41: Entertainment provided via the Internet; on-line gaming services; providing on-line computer games, multi-player matching services, and on-line entertainment in the nature of tournaments, cyber or virtual sports leagues, games shows; providing on-line information in the field of computer gaming entertainment; providing games by cellular telephone communication; providing games by or for use on cellular telephones; providing on-line electronic publications (not downloadable).
The contested goods and services are the following:
Class 9: 1. computer operating programs, recorded; 2. computer peripheral devices; 3. computer software, recorded; 4. computer programs [downloadable software]; 5. computer game software; 6. computers; 7. electronic publications, downloadable; 8. animated cartoons; 9. telephone apparatus; 10. sound transmitting apparatus.
Class 41: 1. game services provided on-line from a computer network; 2. entertainment; 3. amusement parks; 4. holiday camp services (entertainment); 5. radio entertainment; 6. layout services other than for advertising purposes; 7. publication of electronic books and journals on-line; 8. providing on-line electronic publications, not downloadable; 9. educational services; 10. publication of books.
Class 42: 1. technical research; 2. computer programming; 3. computer software design; 4. computer system design; 5. conversion of data or documents from physical to electronic media; 6. installation of computer software; 7. computer software consultancy; 8. data conversion of computer programs and data [not physical conversion]; 9. updating of computer software; 10. maintenance of computer software.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Before proceeding to the comparison, it is noted that each of the contested goods and services has been numbered by the applicant at the time of filing the EUTM application, as shown above when listing the contested goods and services. In its further examination of the opposition, the Opposition Division will only mention the specific goods/services without any references to the numbering system used by the applicant, as the scope of protection of the contested sign is only determined by the explicit goods/services for which the mark has been applied for and the numbers are not part of the classification.
Contested goods in Class 9
The contested computer operating programs, recorded; computer software, recorded and computer programs [downloadable software] overlap with the opponent’s computer programs for […] computer games. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested computer game software is also protected under the earlier mark. The goods are therefore identical.
The contested electronic publications, downloadable cover as a broad category the opponent’s electronic publications (downloadable) provided on-line from databases for the Internet. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical.
The contested computers are found similar to a high degree to the opponent’s discs, in the same class. The goods can coincide in producer and distribution channels and can be addressed to the same public. Furthermore, they are complementary.
The contested sound transmitting apparatus share relevant connections with the opponent’s compact discs. The goods may be manufactured by the same companies and target the same consumers. Furthermore, they are complementary and can coincide in distribution channels. They are, therefore, highly similar.
The contested animated cartoons refer to films for cinema, television or computer screens, made from a series of drawings, computer graphics, or photographs of inanimate objects (as puppets) and that simulate movement by slight progressive changes in each frame. They are considered similar to a high degree to the opponent’s video recordings to the extent where the goods share a similar purpose, are addressed to the same consumers and may be distributed through the same channels in trade. Moreover, they can be interchangeable.
The contested computer peripheral devices are found similar to the opponent’s computer games software as they can be directed at the same consumers and can be distributed through the same channels in trade. Moreover, they are complementary.
The contested telephone apparatus are related to the opponent’s games software for mobile phones. The goods are complementary and can coincide in consumers and distribution channels. Therefore, they are considered similar.
Contested services in Class 41
The contested game services provided on-line from a computer network is also protected under the earlier mark, albeit in slightly varying wording (on-line gaming services). They are, therefore, identical.
The contested entertainment includes, as a broader category, the opponent’s entertainment provided via the Internet. Moreover, the contested radio entertainment overlaps with the opponent’s services above mentioned. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s entertainment provided via the Internet.
The contested publication of electronic books and journals on-line and the contested publication of books overlap with the opponent’s providing on-line electronic publications (not downloadable). Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the services of the earlier mark.
Providing on-line electronic publications, not downloadable are identically contained in both lists of services in Class 41.
The contested amusement parks and holiday camp services (entertainment) have, broadly speaking, a similar purpose as the opponent’s entertainment provided via the Internet. Moreover, the services can coincide in the targeted public and providers. They are, therefore, considered similar.
The contested educational services are considered similar to the opponent’s providing on-line electronic publications (not downloadable) as they can coincide in distribution channels and be addressed to the same public. Moreover, the services are complementary and can originate from the same providers.
The contested layout services other than for advertising purposes are defined as the process of placing, arranging and rearranging text and graphics on the page to produce documents. The opponent’s providing on-line electronic publication (not downloadable) require the use of the contested services and as such there is a certain degree of complementarity between them to the extent where the public may consider that they originate from the same companies. Furthermore, they can coincide in distribution channels. They are, therefore, considered similar to a low degree.
Contested services in Class 42
The contested computer programming; computer software design; computer system design; installation of computer software; computer software consultancy are considered similar to the opponent’s computer programs for [..] computer games and computer games software in Class 9. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary.
The same conclusion must be reached as regards the contested updating of computer software and maintenance of computer software. Indeed, these services can share the same producers/providers and distributions channels as the opponent’s computer programs for [..] computer games and computer games software in Class 9 and can be addressed to the same consumers. They are, therefore, similar.
The contested data or documents from physical to electronic media and data conversion of computer programs and data [not physical conversion] are related to the opponent’s downloadable software for developing, designing, modifying and customizing [...] computer […] games in Class 9, to the extent where the latter goods could include software for data conversion. As such they can serve a similar purpose and target the same consumers. They are, therefore, considered similar.
The same conclusion cannot be reached as regards the remaining contested services for which protection is sought in this class (i.e. technical research). They are specialised services serving a different purpose and having a different method of use than the opponent’s goods and services in Classes 9, 28 and 41. Moreover, they are not in competition or necessarily complementary thereto. Therefore, they are considered dissimilar.
Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the relevant goods and services are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention is likely to vary from average to higher than average, depending on the particular type of the goods/services concerned.
WORLD OF TANKS BLITZ
Earlier trade mark
The relevant territory is the European Union.
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).
The earlier mark is a word mark featuring four verbal elements (‘WORLD OF TANKS BLITZ’). As the protection offered by the registration of a word mark applies to the word as such and not to the individual graphic or stylistic characteristics which that mark might possess, it is irrelevant that the earlier mark is represented in upper-case letters. ‘WORLD’ refers to, among other things, all that relates to a particular sphere of activity, way of life or those involved in it or an area or realm considered as a complete environment. ‘OF’ is a preposition used to indicate origin, association or possession. ‘TANKS’ means, inter alia, heavy armoured fighting vehicles carrying guns and moving of a continuous articulated metal track and ‘BLITZ’ will be associated with an intensive or sudden military attack. For the relevant public the expression ‘WORLD OF TANKS’ of the earlier mark forms a logical and conceptual unit, understood as referring to the general field or realm of tanks, whereas ‘BLITZ’ will be associated with the meaning specified hereinabove. There is no concept attributed as a whole to the earlier mark, other than the sum of these elements.
In terms of distinctiveness, the opponent puts forward that the expression ‘WORLD OF’ of the earlier mark is ‘a popular prefix used in computer game title’ and given ‘the prevalence of this phrase within the computer gaming world, it is natural for consumers to pay greater attention to the words following ‘WORLD OF’ in order to distinguish the origin of the computer games’. In support of its argument, it filed as Exhibit 7, printouts from the website http://www.metacritic.com/browse/games/title (four pages in English) displaying a list of games titles that include the word ‘WORLD’ or, as the case may be, the expressions ‘WORLD IN’/’WORLD OF’, for example World Cup, World Destroyers, World in Conflict, World in Flames, World of Arch, World of Battles, World of Leaders, World of Mixed Martial Arts, World of Subway or World of Warcraft.
In this regard, it is noted that the expression ‘WORLD OF’ will be understood as meaning ‘something that relates to a particular sphere of activity/the general field or realm of something’ and that it is widely used in connection with computer games to denote a feature of the game that allows the user to create a virtual world. Therefore, its distinctiveness has been lowered for some of the relevant goods and services, as it will be perceived as descriptive of, or at least strongly allusive to the characteristics/features of part of the goods and services concerned (for example computer programs for computer games, computer games software, games software for mobile phones, entertainment provided via the Internet, on-line gaming services). The public will not pay as much attention to it as to the other, more distinctive, elements of the earlier mark. Consequently, the impact of this expression is limited when assessing the likelihood of confusion between the marks at issue. Nevertheless, that applies only in connection with the goods/services which can reasonably have such characteristics/features; for the remaining goods and services, for which this expression does not carry the above descriptive/allusive meaning the earlier mark has no elements which could be considered clearly more distinctive than other elements.
The contested sign, on the other hand, is a figurative mark, portraying the five-letter word, ‘Blitz’, in title case letters and slightly stylised bold script. It will convey to the relevant public the same concept as explained above for the earlier mark and has an average degree of distinctiveness for goods and services at issue.
Visually, the signs are similar to the extent that they coincide in the word ‘BLITZ’, which is the sole element of the contested sign and the fourth in the earlier mark. The signs differ in the remaining words of the earlier mark (‘WORLD OF TANKS’), in their length (seventeen letters versus five) and structure (four words versus one word), as well as in the slight stylisation of the contested sign. Albeit it is true that ‘BLITZ’ is the last word of the earlier mark and normally consumers pay more attention to the beginning of a sign, account must be taken of the fact that ‘BLITZ’ still occupies an independent and distinctive role in the earlier mark. Moreover, for some of the relevant goods and services ‘WORLD OF’ will play a lesser role given its lower than average degree of distinctiveness, as explained above. In addition, the stylisation of the contested sign is so minimal that consumers will barely notice it. All in all, taking into consideration the overall impressions given by the signs, it is considered that the level of visual similarity varies from low to average depending on the weight attributed to the expression ‘WORLD OF’.
Aurally, the pronunciation of the signs coincides in the sound of the letters ‘b/l/i/t/z’ present identically in both signs and differs in the sound of the remaining letters of the earlier mark, ‘w/o/r/l/d o/f t/a/n/k/s’, which have no counterparts in the contested mark. Taking into account the overall aural impressions created by the signs and along similar lines of reasoning as regard the role of the juxtaposition of words ‘WORLD OF’, the degree of aural similarity between them is considered to be low or average.
Conceptually, bearing in mind the above considerations on the meaning(s) attributed by the relevant consumers to the signs under comparison, it is considered that there is a linkage between the signs as the overall meanings they convey are similar (being in the case of the earlier sign that of a sudden military attack and of the general field of tanks and in the case of the contested sign that of a sudden or intensive military attack) and more particularly the overall image of war. It follows that overall, the signs are conceptually highly similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
According to the opponent the earlier trade mark has a reputation in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).
The opponent submitted the following evidence to support this claim:
Exhibit 6: Printouts (three pages) from the website http://wotblitz.eu containing information on the ‘World of Tanks Blitz’ game. The opponent informs that ‘World of Tanks Blitz’ is a variant of the game ‘World of Tanks’ and that it is played on smartphones and tablets. The evidence shows, among other things, that the game was considered ‘E3 2014 Best Mobile Game’ according to the Russian magazine Game World Navigator. The documents show the sign .
Exhibits 8 to 10: Screenshots (three pages) from https://youtube.com (showing the gameplay trailer, published on 05/05/2014 and which had 106,153 views), from wotblitz.eu (informing that ‘World of Tanks Blitz’ is a mobile free-to-play MMO action game for smartphones and tablets and that it can be downloaded in App Store or Google Play; in the lower left hand side corner of the printout the inscription ‘G-Star 2013 Best Mobile Game’ ‘according to the Korean magazine Inven’ appears) and from the Facebook page ‘World of Tanks Blitz’ (displaying a number of 105,000 likes).
Exhibits 13 and 14: Printouts from https://itunes.apple.com (four pages) in relation to the free-to-play mobile MMO action game ‘World of Tanks Blitz’ showing the customers ratings for the UK and Ireland as follows:
Exhibit 15: Printouts from the Facebook page of the game for Europe (three pages), showing a number of 105,000 likes. The evidence provides information on, inter alia, the release date (26/06/2014) and includes a short description of the game and a list of the awards received as follows:
Exhibit 16: Printouts from http://forum.wotblitz.eu (the official online European forum for the game) showing the number of ongoing discussions for the English-, German-, French-, Polish-, Czech-, Spanish-, Italian- and Turkish-speaking communities (for example 3,990 topics for the English-speaking community).
Exhibit 17: Printouts from http://www.pocketgamer.biz/asia featuring the article ‘Has World of Tank Blitz’s 1.4 GB file size restricted its top grossing chart success?’ published on 06/10/2014. In relation to Europe the evidence shows that ‘the game’s level of consistency has been much higher, with the title spending the majority of its time in the top 50, and, in some regions, the top 25. Peak positions of 11 in Spain, 18 in Germany and Italy, 19 in France, and 26 in the UK – arguably the title’s Achilles’s heel – also show how World of Tanks has blossomed in Europe compared to the US’. The document further includes an image of the European top grossing chart (which looks at performances in Spain, Italy, Germany, France and the UK) as follows:
Exhibit 18: Printouts from https://www.appannie.com (an independent business intelligence site, according to the opponent’s submissions) providing information about the game and showing it has been featured 39 times on the iTunes Home Page (as of 25/06/2015).
Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a higher degree of distinctiveness through its use let alone a reputation.
Both enhanced distinctiveness and reputation require recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).
Furthermore, it must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys enhanced distinctiveness or reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).
In the present case, an overall assessment of the documents submitted shows that ‘World of Tanks Blitz’ is a free-to-play mobile MMO action game built specifically for tablets and smartphones, that was released by the opponent’s company on 26/06/2014.
In particular, the evidence consists of printouts from the opponent’s website, from the Facebook page dedicated to the ‘World of Tanks Blitz’ game and from some independent sources. It is true that it provides some information on the degree of knowledge the public has of the earlier mark (youtube views, facebook likes, some awards received, the performance of the game in some Member States – see above under the list of the evidence). However, these documents alone do not support, without resorting to probabilities and assumptions, a conclusion that the earlier mark was known by a significant part of the relevant consumers for all or some of the goods and/or services concerned by the filing date of the contested EUTM application.
First, it must be mentioned that the contested trade mark was filed on 31/07/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based had acquired a reputation/enhanced distinctiveness in the European Union prior to that date. However, in the present case, the documents submitted do not allow the Opposition Division to reach a positive finding of reputation or enhanced distinctiveness of the earlier mark at the relevant date, without further information that could serve to corroborate the opponent’s statements and reflect in a clear and objective manner the degree of recognition of the earlier mark among the relevant public. Indeed, the period of time between the launch of the game and the filing date of the EUTM application is extremely short and the not so numerous references in the documents to the year 2014 are in a too general manner (for example the list of awards that merely shows the year 2014, but not the exact date) so that it can be ascertained that reputation actually existed by 31/07/2014.
Second and as regards the awards received by the game, the Opposition Division points out that the relevance of an award largely depends on its contents and usually it is not sufficient on its own to lead to a conclusion of reputation or at least enhanced distinctiveness. Furthermore, prizes or awards offered by unknown entities, or on the basis of unspecified or subjective criteria, should be given little weight. In the case at hand the opponent only submitted a listing (see above Exhibit 15); nevertheless, this does not automatically mean that the sign in question is known by a significant part of the relevant public. There is little or no information about the entities granting the awards and/or the criteria on the basis of which they were given. It is therefore considered that these documents alone cannot give first-hand information about the level of awareness of the earlier trade mark either.
Lastly, a number of 4305 customers ratings for the UK does not have on its own a significant probative value and cannot support a finding of reputation/enhanced distinctiveness among a significant part of the relevant public, not even for this Member State only, the population of which is approximately 64.1 million. Similarly, the number of ‘likes’ received by the Facebook page, the number of views of the game’s trailer on youtube or the number of topics on the official forum of the game alone cannot provide, in the absence of further objective evidence, sufficient information on the degree of knowledge the relevant customers have of the opponent’s mark and cannot be deemed to reinforce the evidential value of the assertions made in the opponent’s submissions as to the ‘high degree of knowledge among the relevant public’ acquired by the earlier mark.
Under these circumstances and in the absence of any independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public at the relevant date, the market share held by the mark, the position it occupies in the market in relation to competitors’ goods and/or services, the duration, extent and geographical area of its use or the extent to which it has been promoted, it is concluded that the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation or at least, an enhanced level of distinctiveness.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence, for some of the goods and services, of some weak elements in the mark as stated above in section c) of this decision.
Global assessment, other arguments and conclusion
The contested goods and services in Classes 9 and 41 are partly identical and partly similar (to various degrees), while the services in Class 42 are partly similar and partly dissimilar to the ones of the opponent.
The signs are similar to the extent where the contested sign, ‘BLITZ’, reproduces the last component of the earlier mark ‘WORLD OF TANKS BLITZ’. Admittedly, the contested sign is relatively short and there are differentiating elements between the marks, as illustrated in the comparison of signs. Nevertheless, the general impressions they create are not sufficiently apart as to dispel a likelihood of confusion (including the likelihood of association in the mind of the relevant public).
In this regard it is important to note that for the relevant consumers the shared component ‘BLITZ’ plays an independent and distinctive role in the earlier mark and despite its position in the latter sign, it will retain consumers’ attention as a stand-alone element. This is especially since, as explained above, the English-speaking part of the public will perceive the earlier mark as being composed of the logical and conceptual unit ‘WORLD OF TANKS’ plus the word ‘BLITZ’.
Against this background, it is concluded that the differences between the signs are insufficient to counterbalance the similarities and consequently when encountering the contested sign, consumers (including the part showing a higher level of attention) will make an association with the opponent’s earlier mark, which will lead them to believe that the identical or similar goods and services in Classes 9, 41 and 42 originate from the opponent or, as the case may be, from an economically linked undertaking.
Considering all the above and in a global assessment of all the relevant factors, the Opposition Division finds that there is a likelihood of confusion, including the likelihood of association between the marks in dispute on the English-speaking part of the public in the European Union. Therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (including to a low degree) to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.
For the sake of completeness, as regards the dissimilar services, the Opposition Division points out that there is no need to proceed further to the comparison of the signs for the remaining part of the public, as the outcome of the present decision would still be the same.
The examination of the opposition will continue in relation to the dissimilar services in Class 42 on the grounds of Article 8(5) EUTMR, also claimed by the opponent.
REPUTATION – ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.
The signs must be either identical or similar.
The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.
Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.
In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.
Reputation of the earlier trade mark
The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. In this regard, it must be recalled that the same kind of test is applied to ascertain whether or not a trade mark has acquired a reputation within the meaning of Article 8(5) EUTMR or has acquired enhanced distinctiveness through use for the purposes of Article 8(1)(b) EUTMR, since the subject matter of proof in all these cases is, in substance, the same, namely the degree to which the mark is known by the relevant public, without prejudice to the threshold required in each case. Reference is made, therefore, to the findings set out under Article 8(1)(b) EUTMR, which apply mutatis mutandis to the assessment of the reputation of the earlier mark. In view of those considerations, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier mark has acquired a reputation for the purposes of Article 8(5) EUTMR either.
As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.
In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Ana MUÑIZ RODRIGUEZ
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.