OPPOSITION No B 2 453 960

Harlequin Football Club Limited, Stoop Memorial Ground, Craneford Way, Twickenham, Middlesex TW2 7SQ, United Kingdom (opponent), represented by Blake Morgan LLP, New Kings Court Tollgate, Chandler's Ford, Eastleigh, Hampshire SO53 3LG, Unite Kingdom (professional representative)

a g a i n s t

TS/54 di Tasselli Sara, Via S.Paolo 115/D, 59100 Prato, Italy (applicant).

On 23/12/2015, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 453 960 is partially upheld, namely for the following contested goods:

Class 14: Jewellery; Time instruments; Jewellery boxes and watch boxes; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Trinkets of bronze; Key charms coated with precious metals; Trinkets coated with precious metal; Objet d'art made of precious stones; Silver objets d'art; Objet d'art of enamelled silver; Works of art of precious metal; Objet d'art of enamelled gold; Key rings [trinkets or fobs] of precious metal; Boxes of precious metal; Key fobs [rings] coated with precious metal; Fancy keyrings of precious metals; Key fobs of precious metals; Key rings [trinkets or fobs].

Class 18: Umbrellas and parasols; luggage, bags, wallets and other carriers; Shoulder belts; Boxes made of leather; Cases, of leather or leatherboard.

Class 25: Clothing; Headgear; Footwear.

2. Community trade mark application No 13 248 513 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of Community trade mark application No 13 248 513. The opposition is based on Community trade mark registration No 269 050. The opponent invoked Articles 8(1)(b) and 8(5) CTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Video cassettes, audio cassettes, records, compact discs, computer games.

Class 16: Match day programmes; writing instruments; all relating to rugby.

Class 18: Bags, satchels, pouches, shoulder bags, kitbags, rucksacks, wallets, key cases, credit card cases, business card cases; umbrellas; all relating to rugby, football and excluding hand bags, purses and carrying cases for women.

Class 25: T-shirts, shirts, shorts, exercise-wear, sportswear; pants, jeans, sweatshirts, jackets, coats, raincoats, hats, caps, scarves and gloves; all relating to rugby; excluding womens lingerie, womens underwear, womens apparel, womens swimwear.

Class 41: Entertainment services relating to rugby football; provision of sports and recreational services related to sports; organisation of sporting events.

Class 42: Catering and conference services; restaurant, café, canteen, banqueting and bar services; day nursery services and corporate hospitality services.

The contested goods are the following:

Class 14: Gemstones, pearls and precious metals, and imitations thereof; Jewellery; Time instruments; Jewellery boxes and watch boxes; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Trinkets of bronze; Key charms coated with precious metals; Trinkets coated with precious metal; Objet d'art made of precious stones; Silver objets d'art; Objet d'art of enamelled silver; Works of art of precious metal; Objet d'art of enamelled gold; Key rings [trinkets or fobs] of precious metal; Boxes of precious metal; Key fobs [rings] coated with precious metal; Fancy keyrings of precious metals; Key fobs of precious metals; Key rings [trinkets or fobs].

Class 18: Saddlery, whips and animal apparel; Umbrellas and parasols; Luggage, bags, wallets and other carriers; Studs of leather; Leather, unworked or semi-worked; Leather for shoes; Leather thread; Moleskin [imitation of leather]; Imitation leather; Worked or semi-worked hides and other leather; Leather and imitation leather; Polyurethane leather; Shoulder belts; Leather cloth; Butts [parts of hides]; Boxes made of leather; Cases, of leather or leatherboard; Skins of chamois, other than for cleaning purposes; Curried skins; Hides.

Class 25: Clothing; Headgear; Footwear.

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.

Contested goods in Class 14

The contested trinkets of bronze; key charms coated with precious metals; trinkets coated with precious metal; key rings [trinkets or fobs] of precious metal; key fobs [rings] coated with precious metal; fancy keyrings of precious metals; key fobs of precious metals; key rings [trinkets or fobs] are similar to the opponent’s key cases; all relating to rugby, football and excluding hand bags, purses and carrying cases for women in Class 18. The goods have the same purpose of holding the keys together and they target the same end users. Furthermore, they can be in competition.

The contested gemstones, pearls and precious metals, and imitations thereof; jewellery; time instruments; jewellery boxes and watch boxes; ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; objet d'art made of precious stones; silver objets d'art; objet d'art of enamelled silver; works of art of precious metal; objet d'art of enamelled gold; boxes of precious metal; are dissimilar to all the opponent’s goods and services. The compared goods and services have different natures, purposes and distribution channels. Furthermore, they are not complementary nor in competition.

Contested goods in Class 18

The contested saddlery is equipment for horses, such as saddles and harnesses; whips are instruments used for driving animals; animal apparel is accessories for animals; The nature of these goods is very different from that of the opponent’s goods in Classes 9, 16, 18 and 25 and services in Classes 41 and 42. They serve very different purposes. They do not usually have the same retail outlets and they are usually not made by the same manufacturers. These goods are considered dissimilar.

The contested umbrellas; luggage, bags, wallets and other carriers; cases, of leather or leatherboard are identical to the opponent’s bags, wallets, key cases, credit card cases, business card cases; umbrellas; all relating to rugby, football and excluding hand bags, purses and carrying cases for women either because they include, as a broader category, the opponent’s goods or overlap with them.

The contested parasols are similar to the opponent’s umbrellas; all relating to rugby, football and excluding hand bags, purses and carrying cases for women as they have the same purpose, namely protection against the elements) and nature. Furthermore, they can coincide in producer, end user and distribution channels.

The contested shoulder belts are similar to the opponent’s shoulder bags; all relating to rugby, football and excluding hand bags, purses and carrying cases for women as they can coincide in their producers, distribution channels and end users.

The contested boxes made of leather are similar to the opponent’s key cases, credit card cases, business card cases; umbrellas; all relating to rugby, football and excluding hand bags, purses and carrying cases for women as they can coincide in producers, distribution channels and end users.

The contested studs of leather are small round items used for decoration. The contested leather, unworked or semi-worked; leather for shoes; leather thread; moleskin [imitation of leather]; imitation leather; worked or semi-worked hides and other leather; leather and imitation leather; polyurethane leather; leather cloth; butts [parts of hides]; skins of chamois, other than for cleaning purposes; curried skins; hides are various kinds of animals’ skins (or imitations thereof). These are raw materials. These goods satisfy different needs than the opponent’s goods and services. They do not have the same retail outlets and are not made by the same manufacturers. Moreover, the goods and services are neither in competition nor complementary. Therefore, they are considered dissimilar.

Contested goods in Class 25

The contested clothing includes, as a broader category, the opponent’s T-shirts, shirts, shorts, exercise-wear, sportswear; pants, jeans, sweatshirts, jackets, coats, raincoats, scarves and gloves; all relating to rugby. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested headgear includes, as a broader category, the opponent’s hats, caps,; all relating to rugby. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The broad category of the contested footwear includes items related to rugby or sport. These goods are similar to the opponent’s T-shirts, shirts, shorts, exercise-wear, sportswear; all relating to rugby in the opponent’s list. The compared goods have the same purpose and can be found in the same retail outlets. Consumers will expect to find them in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both the opponent’s and the contested goods.

2. The signs

HARLEQUIN	HARLEQUINE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 (judgment of 08/09/2008, C‑514/06 P ‘Armacell’, paragraph 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.

Visually, the signs are similar to the extent that they coincide in ‘HARLEQUIN’. However, they differ in the final ‘E’ of the contested sign.

Aurally, a part of the relevant public may pronounce the signs identically and another part may pronounce the final letters ‘QUIN’/‘QUINE’ slightly differently because of the presence of ‘E’ at the end of the contested sign.

Conceptually, the relevant public may associate both signs with, inter alia, ‘a stock comic character originating in the commedia dell'arte’, ‘a clown or buffoon’, ‘varied in colour or decoration’, ‘comic’; ludicrous’ (www.collinsdictionary.com). Therefore, the signs are conceptually identical.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are highly similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks under comparison have no elements which could be considered clearly more distinctive than other elements.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.

4. 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. 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 goods found to be identical or similar are directed at the public at large. The degree of attention is average.

6. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar.

The signs are highly similar overall, since they coincide in almost all the letters except for the final letter ‘E’ of the contested sign. A part of the relevant public will pronounce the signs identically. Furthermore, the public is likely to link the signs with the same concept.

The degree of distinctiveness of the earlier trade mark is average.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partially well founded on the basis of the opponent’s Community trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) CTMR, the opposition based on this article and directed at these goods cannot be successful.

REPUTATION – ARTICLE 8(5) CTMR

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, 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) CTMR 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) CTMR (judgment of 16/12/2010, joined cases T‑345/08 and T‑357/08, ‘BOTOCYL’, paragraph 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the [applicant][holder] establishes due cause for the use of the contested trade mark.

In the present case, the [applicant][holder] 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.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) CTMR. Reference is made to those findings, which are equally valid for Article 8(5) CTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the United Kingdom and the European Union.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 11/09/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

Class 9: Video cassettes, audio cassettes, records, compact discs, computer games.

Class 16: Match day programmes; writing instruments; all relating to rugby.

Class 18: Bags, satchels, pouches, shoulder bags, kitbags, rucksacks, wallets, key cases, credit card cases, business card cases; umbrellas; all relating to rugby, football and excluding hand bags, purses and carrying cases for women.

Class 25: T-shirts, shirts, shorts, exercise-wear, sportswear; pants, jeans, sweatshirts, jackets, coats, raincoats, hats, caps, scarves and gloves; all relating to rugby; excluding womens lingerie, womens underwear, womens apparel, womens swimwear.

Class 41: Entertainment services relating to rugby football; provision of sports and recreational services related to sports; organisation of sporting events.

Class 42: Catering and conference services; restaurant, café, canteen, banqueting and bar services; day nursery services and corporate hospitality services.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 21/05/2015 the opponent submitted the following evidence:

• Affidavit of the opponent’s company secretary, dated 19/05/2015, explaining the history and activities of Harlequin Football Club Limited known as ‘the Harlequins’ or ‘Harlequins Rugby Football Club’. It contains information about the turnover increase from 1996 to 2014, merchandise revenue increase from 1998 to 2014, marketing expenditure in 2011 and 2014 and explanation of other parts of the evidence. Details of the total revenue for the years 1996 and 1997 as well as of the total revenue with separate information on revenue from merchandise and marketing expenditure for the years 1998-2014 are presented on a separate sheet attached.

• Various screenshots from websites, copies of promotional material, pictures of advertisements and copies of press cuttings relating to ‘Harlequins’ also called ‘Quins’. They are in English, French and Italian. The dates that appear on some of them are between 27/12/2010 and 22/04/2015.

• Screenshots from the opponent’s website www.quins.co.uk showing various items such as clothing items, mugs, car hanger, key rings, pen, magnets, towels, umbrella, mascots, figurines, leather goods. ‘Harlequins’ or ‘QUINS’ appears on certain items or in their description.

• A letter from the Chief Executive of England’s Rugby Football Union (RFU) confirming that Harlequin Rugby Club was a founding member of the RFU and has remained a member since 1871 and acknowledging the club’s significant reputation in the ‘HARLEQUIN’ mark throughout the world for the club and associated merchandise.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation at least in the United Kingdom.

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time. The marketing efforts suggest that the trade mark has a consolidated position in the market. This is also confirmed by the pictures of advertisements in public spaces and the various references to ‘HARLEQUINS’ in the press. The use of the registered trade mark ‘HARLEQUIN’ through use of the sign ‘HARLEQUINS’ does not alter the distinctive character of the original registered trade mark. The additional, final letter ‘S’ neither substantially influences the visual appearance or pronunciation of the registered mark nor produces a different conceptual impression. For the English-speakers the trade mark will be perceived as being in the plural instead of the singular (see decision of 29 July 2008, R 1939/2007-1, ‘TEMPTATION FOR MEN YANBAL (fig.)/TENTATION’, paragraph 17. Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public at least in the United Kingdom, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) CTMR to be applicable depends on other factors relevant under Article 8(5) CTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to entertainment services relating to rugby football; provision of sports and recreational services related to rugby football in Class 41, whereas there is no or little reference to the remaining goods and services. This is clear, for example, from the advertisements and copies of press cuttings, where only the former are mentioned. Although the remaining evidence also contains reference to certain of the opponent’s goods, it is not sufficient to prove the reputation for them.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) CTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, ‘Adidas’, paragraphs 29 and 31, and of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraph 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

In the present case the signs, each composed of one word, have been found visually, aurally and conceptually similar as they differ in only one additional letter ‘E’ in the end of the contested sign. A part of the relevant public will pronounce the signs identically. Consequently, the signs are highly similar overall.

It has been established that the earlier mark enjoys a certain degree of recognition among the relevant public. The services for which the earlier mark is reputed are directed at the public at large and the contested goods are also directed at the public at large and professionals. Consequently, there is an overlap of the public.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs for the following contested goods:

Class 14: Jewellery; Time instruments; Jewellery boxes and watch boxes; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Objet d'art made of precious stones; Silver objets d'art; Objet d'art of enamelled silver; Works of art of precious metal; Objet d'art of enamelled gold; Boxes of precious metal.

However, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them in relation to the remaining contested goods:

Class 14: Gemstones, pearls and precious metals, and imitations thereof.

Class 18: Saddlery, whips and animal apparel; Studs of leather; Leather, unworked or semi-worked; Leather for shoes; Leather thread; Moleskin [imitation of leather]; Imitation leather; Worked or semi-worked hides and other leather; Leather and imitation leather; Polyurethane leather; Leather cloth; Butts [parts of hides]; Skins of chamois, other than for cleaning purposes; Curried skins; Hides.

Although the relevant public for the goods may overlap to a certain extent, the use of the contested sign for these contested goods is unlikely to bring the earlier mark to the mind of the relevant public because the contested goods are precious stones or materials used for making jewellery or various kinds of animals’ skins (or imitations thereof). These contested goods and the opponent’s services for which its mark has a reputation belong to very different and unrelated market sectors. The Opposition Division considers that the degree of reputation of the earlier mark is not sufficient for the consumers to make a link between the signs in relation to these contested goods.

As the relevant section of the public for the abovementioned contested goods is unlikely to establish a link between the trade marks in dispute, such a link being a precondition for the application of Article 8(5) CTMR (judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, paragraphs 30–31), the Opposition Division concludes that the use of the contested trade mark in connection with those goods will not take advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark. The opposition is therefore not well founded under Article 8(5) CTMR insofar as it is directed against those goods.

Consequently, the examination of the opposition under Article 8(5) CTMR will continue in relation to the contested goods for which the relevant consumers are likely to establish a mental ‘link’ between the signs.

However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) CTMR (judgment of 26/09/2012, T‑301/09, ‘CITIGATE’, paragraph 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) CTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) CTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (judgment of 06/06/2012, T‑60/10, ‘ROYAL SHAKESPEARE’, paragraph 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

According to the opponent the contested application is likely to take unfair advantage of and be detrimental to the distinctive character of the earlier mark without due cause and consequently the perseverance, time, skill and innovation invested in the same’.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the distinctive character of the earlier trade mark.

Before examining the opponent’s claim, it is appropriate to recall that the opposition remains directed against the following goods:

Class 14: Jewellery; Time instruments; Jewellery boxes and watch boxes; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Objet d'art made of precious stones; Silver objets d'art; Objet d'art of enamelled silver; Works of art of precious metal; Objet d'art of enamelled gold; Boxes of precious metal.

As seen above, the earlier trade mark was found to have a reputation for:

Class 41: Entertainment services relating to rugby football; provision of sports and recreational services related to rugby football.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) CTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (judgment of 06/06/2012, T‑60/10 ‘ROYAL SHAKESPEARE’, paragraph 48; and judgment of 22/03/2007, T‑215/03, ‘VIPS’ paragraph 40).

The opponent bases its claim on the following.

 the contested application ‘is likely to take unfair advantage of and be detrimental to the distinctive character of the Opponent’s Mark without due cause and consequently the perseverance, time, skill and innovation invested in the same’.

In the present case, the signs are highly similar overall. The difference in one final letter of the contested sign may easily go unnoticed. The earlier mark enjoys a certain degree of recognition among the relevant public. In view of the earlier trade mark's attractiveness, it may be exploited even outside its natural market sector, by licensing and merchandising. The opponent presented evidence to show that its mark is used in relation to items such as clothing items, mugs, car hanger, key rings, pen, magnets, towels, umbrella, mascots, figurines, leather goods. Therefore, using the contested goods in Class 14 with the mark ‘HARLEQUINE’ applied on them may be considered as a message of being a supporter of the rugby-related services with which the earlier mark ‘HARLEQUIN’ is associated. This would give the applicant a competitive advantage as the marketing of the contested goods would benefit from attractiveness gained by association with the opponent’s mark. It is also likely, that the certain of the contested goods in Class 14 may be used for merchandising purposes. Items such as watches or jewellery are often used as marketing means bearing trade marks which relate to distinct goods and services. Consequently, the relevant public, when confronted with these goods bearing the contested sign, would make a mental connection with the opponent’s reputed sign and the services for which it is reputed.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) CTMR insofar as it is directed against the following goods:

Class 14: Jewellery; Time instruments; Jewellery boxes and watch boxes; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Statues and figurines, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Objet d'art made of precious stones; Silver objets d'art; Objet d'art of enamelled silver; Works of art of precious metal; Objet d'art of enamelled gold; Boxes of precious metal.

The opposition is not successful insofar as the remaining goods are concerned.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Eamonn KELLY

Justyna GBYL

Natascha GALPERIN

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.