OPPOSITION No B 2 507 930

Glintt - Global Intelligent Technologies, S.A., Beloura Office Park, Edifício 10, uinta da Beloura, 2710 693 Sintra, Portugal (opponent), represented by PLMJ, Edificio Eurolex, Av. da Liberdade, 224, 1250-148 Lisbon, Portugal (professional representative)

a g a i n s t

Glimts IVS, Mellem Broerne 3, ST TV, 9400 Nørresundby, Denmark (applicant),

On 27/01/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 507 930 is partially upheld, namely for the following contested goods:

Class 9: Computer programs [downloadable software]; Communication software.

2. Community trade mark application No 13 615 901 is rejected for all the above goods. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of Community trade mark application No 13 615 901. The opposition is based on, inter alia, Portuguese trade mark registration No 537 542. The opponent invoked Article 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s figurative Portuguese trade mark registration No 537 542 not under use obligation.

1. The goods and services

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

Class 9: Fire alarms; alcoholmeters; speakers; altimeters; amplifiers; antennas and components; data recording device; appliances for anti-theft warning; electric and electronic control apparatus for use with equipment or air conditioning systems, communication devices data and instruments; flame detection equipment; recording apparatus and reproduction of sound; video and data; measuring devices; apparatus electronic surveillance; display devices and optical recording; demagnetisers appliances for bands or tapes; apparatus and equipment for money authentication; apparatus and photovoltaic systems to generate solar power; laboratory instruments and apparatus; measurement apparatus and instruments; measuring and control equipment and instruments; weighing apparatus and instruments; electric monitoring apparatus; devices for recording sound or images; apparatus to verify the authenticity of banknotes; diagnostic devices, for non-medical use; data processing apparatus and equipment; electrical and electronic appliances and instruments of control and regulation; electrical and electronic appliances and instruments for measuring, control and supervision; electronic apparatus for wireless reception, storage and transmission of data and messages; electronic appliances for telephone unities; electronic devices for telecommunications; apparatus for input, output, transmission and storage of data telecommunications apparatus and instruments; apparatus and instruments for telecommunications and telephony; apparatus and instruments to transfer, receive and store sounds, images and data, both digital and analog format; appliances for processing electronic payments; devices for processing, transmission and storage of information databases; apparatus data verification in magnetically encoded cards storage and transmission of data and messages; earphones; precision scales; telephonic apparatus; scales and weights; alarm whistles; ballasts for lighting; lithium batteries; electrical coils; coaxial cables; power cords; optic fibre cable; electrical cables, cable harnesses, connectors, terminal blocks and toggle switches; switch boxes [electricity]; junction or ramification boxes [electricity]; junction boxes [electricity]; video cameras; cash registers; battery chargers; cards with electronic chip; integrated circuit memory cards; encoded magnetic cards; magnetic identity cards; sim cards; electronic components for antennas; computers; . switches; smoke detectors; detectors of counterfeit currency; scanners [scanners]; hard drives external to computers; breakers; telecommunications devices, apparatus and instruments; memory devices for computers; docking stations electronic; electronic labels for products; peripheral equipment for computers and data processing equipment; extinguishers; optical fibres [carriers of light beams]; power supplies, converters; electronic controllers and processors; photocopiers; hardware and firmware; computer hardware and software; hardware and software to provide secure remote access to computer networks and communication; hydrometers; hygrometers; hubs of computer networks; computer printers; temperature indicators; interfaces [computers]; barcode readers; dvd players and recorders; luminous signs; money counting and sorting machines; automatic machines for deposit and payment; automated banking machines (atms); electrical machines and communication instruments; pressure gauges; special furniture for laboratory; modems; monitors [hardware]; monitors [computer software]; integrated software packages; panels, control panels and keyboards on ticket distribution machines; periscopes; peripherals and computer accessories; computer peripherals; dry alkaline batteries; computer software products; computer programs for software designing, development and testing, and testing tools for software aided by computer related to them; computer programs for connecting to remote computers and computer networks; program networks of operating systems; computer programs and software for image processing; recorded computer programs; computer programs [downloadable software; programs of computer games; video game programs for consumers; programs of it games; programs of interactive computer games; data processing programs recorded in storage media readable by machine; cylinders (vials); rats [computer]; receptors global positioning systems [gps]; networking and communications equipment; computer networks' routers; sirens; video surveillance systems; bioinformatics software; computer software and telecommunications equipment, including modems, to enable connection to databases, computer networks and the internet; software for pdf creation and conversion; scanning software and image processing software; download software for instant messaging and email services; firewall computer software; privacy protection software; multimedia software for use in creating presentations, database management and access and display information; software for internet access; embedded operating software; software to create, facilitate and manage remote access and communication with local and global networks; software for computer security download; software for searching and retrieving information through a computer network; computer software, firmware and hardware; computer keyboards; lcd, plasma and led televisions; thermometers, for non-medical use; glassware graduated

Class 20: Staves; pillow support; vinyl application in windows, mirrors and other solid surfaces; plastic tubes, empty, for sale; plastic cable ties or tubing; non-metallic bushings; ergonomic chairs for massages in the sitting position; plastic access cards, not encoded; exhibitors [mobile]; drawers; signs in wood or plastic; furniture; non-metallic nameplates; magazine rack; workstations with multi functions components, intended for various purposes; shelves; plastic containers for medicines, in commercial use [packing]; stools.

Class 35: Employment agencies; consultancy for human resources; personnel management and consultancy in the field of employment; staff recruitment; staff recruitment; personnel selection using psychological tests; consulting and advisory services related to placement, recruitment and personnel management; search services and selection of executives; recruitment and personnel management services; recruitment agencies; secondment of temporary staff; employment agency services related to placement of medical and nursing staff; administration of loyalty programs involving discounts or incentives; consultancy organization and business direction; management and administration of business projects; sales promotion [for others]; audit services; outsourcing services [in commercial business assistance]; administrative services.

Class 36: Consultancy in insurance underwriting matters; consultancy, research and information related to financial transactions; providing advice on the mortgage organization; asset management for third parties; consulting in finance and insurance; property management for third parties; financial, monetary and real estate transactions; provision of financial loan services for others; transaction processing with store card; banking and financial services; financial evaluation services for insurance, banking and real estate; real estate asset management services; property management services related to residential buildings; property management services related to commercial real estate; payment and credit services; processing services for checks and payment of invoices; payment processing services; processing services for transaction performed by credit card, debit card and electronic check; insurance services and provision of information about them; financial and monetary transaction services; verification services and collection of checks; insurance; processing electronic payments; processing payments for the purchase of products and services through an electronic telecommunications network; processing of payment transactions; electronic processing of payments; payment services through wireless devices telecommunications; payment processing services; electronic transfer of funds; electronic. funds transfer and payment services.

Class 37: Advice on the installation, maintenance and repair; stand construction in fairs and shops; providing information for the reconstruction of buildings; provision of information relating to the renovation of buildings; installation of heating and cooling apparatus; installation of lighting; installation of energy-saving appliances; installation of refrigeration appliances; installation of electrical appliances or generators; installation of wiring for internet access; installation of theft prevention devices; installation of computer hardware; installation of fire-prevention equipment; installation of hydraulic equipment; hardware installation and cables for internet access; hardware installation for computer systems; installation of furniture; installation of air conditioning systems; installation and repair of anti-theft alarms or fire; installation and repair of air conditioners; installation and repair of refrigeration appliances; installation and repair of anti-theft alarm devices; installation and repair of fire alarm devices; installation, maintenance and repair of fire and security alarms; installation, maintenance and repair of air conditioners; installation, maintenance and repair of computers; installation, maintenance and repair of smoke detectors, fire and heat; maintenance of intruder alarms; hardware maintenance and repair for computer networks; repair of air conditioners; repair and maintenance of air conditioners; repair and maintenance of computer and telecommunications equipment; repair and maintenance of furniture; consultancy and information services relating to construction; supervision of construction works; installation of electric light and energy systems; installation and repair of anti-theft alarms or fire.

Class 38: Communication via virtual private network [vpn]; communication through interactive voice response [ivr]; electronic communication; established communication by and between computers and computer terminals; communications network of optical fibers; consultancy, information and advice in the field of telecommunications; continuous dissemination of audio and video content over the internet; broadcasting of audiovisual and multimedia content over the internet; broadcasting audio content, video and multimedia over the internet and other communication networks; distribution of motion pictures through internet; dissemination of films and television programs, internet, mobile telecommunication networks and other media; video programming broadcast and sound over the internet broadcasting television programs, motion pictures and other audiovisual and multimedia content through internet protocol and communication networks; dissemination and access, through telecommunications, to video and audio contents provided by on-demand video services through the internet; dissemination and access, through telecommunications, to motion pictures and television programs provided by on-demand video services; provision of access by means of telecommunications, to motion pictures and television programs made available by ondemand video services; providing access, via telecommunication, to television programs on-demand; providing access by users to information and information services available on the internet and other computer networks; providing telecommunications connections to global communication networks or databases; provision of online forums; provision of information on broadcasting; providing software in data network to access the internet; forwarding messages of all kinds for internet addresses [web posts] providing access to data through the internet; providing access to information available on computer networks; providing access to computer programs in data networks; provide electronic mail services and instant messaging; supply 'chatrooms' on the internet and internet forums; providing access to databases; providing access to internet chat rooms; providing access to data in communication networks; providing access to forums on the internet; providing access to information via internet; providing access to lines of conversation, chat rooms and forums on the internet, including the mobile internet; providing access to multiple users on a global computer network; providing access to platforms and portals on the internet; providing access to electronic platforms of information, communication and transaction on the internet; providing access to platforms on the internet as well as in the mobile internet; providing access to internet portals to third parties; providing access to portals of video sharing; providing access to portals on the internet as well as in the mobile internet .; providing access to global computer networks; providing access to chat rooms on the internet; providing access to websites on the internet or any other communications network; providing access to a network of global computers and online sites containing information on a wide range of topics of information; providing access to users information available on the internet; providing access to data and information on the internet; providing access to electronic communications networks, the internet and extranets; providing access to an electronic market [website] on computer networks; providing access to the internet platform for the purpose of exchanging digital photographs; providing high-speed access to computer networks and communication; providing user access to internet portals; network access provision to computer database; providing access to multimedia content online; providing telecommunications channels for teleshopping services; providing telecommunications connections to the internet in cafe environment; providing telecommunications connections to phone lines and call centers; providing information on the broadcasting cable; providing information on television; providing telecommunications connections to telephone lines of 'chat’; telephone exchange services; advice and consul tangy in the field of wireless communications and wireless communications equipment services; communication services and access to internet and intranet; communication and telecommunication services; communication services and transmission of video and audio; communication services by computer to transmit information; streaming services of video, audio and television; wireless transmission [wireless]; digital data transmission.

Class 42: Management of user rights on computer networks; server administration; hosting of computer databases; hosting of computer applications for others; hosting multimedia and interactive applications; web slogs hosting [slogs]; multimedia entertainment hosting and educational content for others; electronic memory space hosting on the internet for advertising goods and services; memory space hosting on the internet; hosting of .customized web pages; hosting of e-commerce platforms on the internet; platforms hosting on the internet; web portals hosting; web site hosting (web sites); software hosting for the management of libraries; hosting and storage space rental for websites; computerized hosting of data, folders, applications and information; rental of computers and computer equipment; memory space for rent in servers to store electronic bulletin boards; rental of security programs on the internet; rental of web servers; software rental; rental of peripheral for computers; analysis of cqmputer systems; rental and provision of computer programs to conduct financial transactions; architecture; electronic data storage and backup services; electronic data storage and backup in computer databases; technical advice on computers; update of web pages; update of web sites; software update; design of homepages and web pages; calibration (measuring); compilation of computer software; compilation of web pages to the internet; design of homepages and web pages; comprehension of data for electronic storage; design of computer systems and analysis; of software conception, firmware, hardware and computer systems; design and web portals hosting; design and software rental; conception and update of homepages and web pages; conception and construction of homepages and websites; conception and creation of homepages and web pages; conception and creation of homepages and web pages; conception and creation of homepages and websites; conception and development of hardware architecture; conception and development of software architecture; conception and development of new technologies for others; custom design of hardware and software; conception, programming and software maintenance; conception and graphic design to create web pages on the internet; conception and graphic design to create websites; conception and maintenance of internet homepages; conception and technical planning of power stations; conception and maintenance of websites for others; consulting analysis of computer systems; advice on conception, programming and software maintenance; management consulting on hardware and software; advice on analysis of computer systems; advice on energy efficiency; consul tangy on the area of savings i energy saving; technical advice on savings and energy efficiency; consul tangy in hardware , software and programming; advice on recovery of computer data; advice on networks and applications in the cloud; consultancy on technological services in energy supply; consultancy on software update; consulting on telecommunications engineering; technical consulting in hardware conception, software and computer peripherals; technical consulting services for installation and maintenance of software; advice on design of homepages and web pages; advice on design of homepages and websites; advice on conception and development of hardware and software architecture; advice on conception and software development; advice on creating homepages and web pages; advice on hardware and software management; consultancy in database programs; advice on technical and scientific supervision; consultancy in the field of conception and development of communication and information technology; consultancy in the area of creation and design of websites; technical consulting services for implementation and use op software; design of machines, apparatus and instruments; design of internet sites; designing web pages for others; conception of computer peripherals; design of web portals; design of prostheses; designing web sites for others; conception and creation of homepages and web pages; conception and development of diagnostic devices; conception and development of devices, tools and worms and data transmission equipment; conception and development of electronic dictionaries and translation databases; conception and development of electronic dictionaries; conception and development of endoprosthesis; data entry conception and development; conception and development of hardware, software and databases; conception and development of input systems, output, processing, display and data storage; conception and development of navigation systems and route planning software; conception and development of data output systems; conception and development of data processing systems; conception and development of data visualization systems; conception and development of systems for regenerative energy generation; conception and development of communication and information technology; conception and development of medical technology; conception and graphic design for the creation of web pages on the internet; conception and graphic design for the creation of websites; custom design of hardware and software; conception, programming and software maintenance; consulting in architecture; consul tangy in the design and hardware development; data conversion and computer programs except physical conversion conversion of data or hardware documents to electronic format; converting images in electronic format to a physical support; converting text to digital format; creation and maintenance of customized web pages; creating and maintaining websites for mobile phones; creating and maintaining web sites for others; creation, maintenance and hosting of third-party web sites; drawing graphic arts; development of energy and power management systems; development of computer programs and computer software programs; development of hardware and software; development and maintenance of software; development and testing of computer methods, algorithms and software; technical development of structural elements, devices and systems for solar panels and photovoltaic plants; development, programming and rental of data processing programs; interior design; diagnosing hardware problems through the use of software; diagnosing software problems; image scanning [conversion from physical means to electronic means]; provision of information on industrial analysis and research services; provision of information on conception and development of hardware and software; provision of information on conception and development of software, systems and computer networks; provision of technical information about computers, software and computer networks; provision of information on research and results in the area of technology, science and medicine through consulting an on line database; provision of computer programs according to third-party specifications; providing computer programs on data networks; provision of software, online, not liable to download for use in database management; providing temporary use of online applications and software tools; providing temporary use of online applications and software tools; providing temporary use of web applications; providing temporary use of web software; providing or rental of electronic storage space [web site] on the internet; temporary provision of non-downloadable software management applications; temporary provision of software applications insusceptible accessible download through a web site; temporary provision of non-downloadable software applications for accessing and using a cloud computing network; temporary provision of non downloadble software applications to analyse financial data and reporting; temporary provision of non-downloadable software applications for database management; temporary provision of non-downloadable software applications for inventory management; temporary provision of non-downloadable software applications to import and data management; temporary provision of non-downloadable software applications for the development of websites; temporary provision of non-downloadable software applications for sharing multimedia content and comments among users; temporary provision of non-downloadable software applications to allow content providers to follow the multimedia content; temporary provision of non-downloadable operational software applications for computer networks and servers; temporary provision of non-downloable software for emissions control applications; temporary provision of non-downloadable software download for language translation; preparation of plans for construction; engineering; telecommunications engineering; management of it projects management of it projects in processing electronic data [pde]; computer program implementations in networks; computer program implementations of networks; installation; maintenance, updating and upgrading software; research related to the development of hardware; scientific and industrial research in the photovoltaic area and solar panels; research on development of computer programs and software; planning technical projects; recovery of computer data; computer animation programming; computer programming; programming web pages; programming security programs on the internet; computer programming of data processing and communication systems; scientific, technological and development services; scientific services, technological, research and design relating to the monitoring and control of telecommunications and navigation satellites ·and signals; scientific services, technological, research and design relating to satellite signals for telecommunication and navigation; scientific services, technological research and design relating to telecommunication signals and navigation; advisory and consultancy services in hardware and software; counselling services and software development; counselling and information services hardware, software and computer peripherals; consultancy and information services in it architecture and infrastructure; back-up services of electronic data; consultancy and information services in design, programming and software maintenance; consultancy and information services in computer systems integration; consultancy and information services relating to software rental; consulting services and technical advice on hardware and software; consul tangy and information services in computer programming; consultancy and information services in information technology, architecture and information technology infrastructure and computer systems integration; consulting and maintenance services related to software used in e-commerce; engineering services in the area of communications technology; engineering services related to energy supply systems; testing of computer facilities; quality testing of products for certification; tests in hardware; software problem resolution [technical support]

Further to the withdrawal of Class 42 goods, the contested goods and services are the following:

Class 9: Computer programs [downloadable software]; Communication software.

Class 45: On-line social networking services; Dating services provided through social networking.

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 9

The contested Computer programs [downloadable software] are identically covered by the opponent’s computer software. The contested Communication software are included in the broad category of the opponent’s computer software. The goods are identical.

Contested services in Class 45

The contested services are networking and dating services, that are ‘personal and social services’. Although both are provided through social networking, that does not make them similar to the IT related goods and services of the opponent since the contested services have a different nature, they are not in competition nor strictly speaking complementary to the opponent good and services, otherwise all services provided through IT means would be found similar. They usually don’t have the same origin. They are dissimilar.

2. The signs

	Glimts
Earlier trade mark	Contested sign

The relevant territory is Portugal. The earlier trade mark is figurative in colour orange and in addition to the stylized letters ‘glintt’ in lower case, it displays three lines above the penultimate letter ‘t’. The contested sign is a word mark.

Visually, the signs are similar to the extent that they both have six letters and coincide in the letters ‘GLI*T*’. Their fourth letters are also visually close, respectively n/m. However, they differ in their last letter respectively t/s and in the figurative characteristics of the earlier trade mark.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘GLI*T present in both signs, and in addition, the pronunciation of their fourth letters N/M is close. To that extent the signs are aurally similar. The pronunciation differs in the sound of the final letter of the contested sign ‛S’ which nevertheless does not introduce a striking phonetic difference (the double ‘T of the earlier mark would not be perceived phonetically).

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

Taking into account the abovementioned visual and aural coincidences, the signs under comparison are 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 or 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’). Therefore, it is considered that the mark has an average distinctive character.

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 are software that can be directed at the public at large and to business customers with specific professional knowledge or expertise. The degree of attention can vary from average to high because they can be specialized goods.

6. Global assessment, other arguments and conclusion

The contested goods are identical and the contested services dissimilar. The trade marks were found similar as they share four letters GLI*T* out of six while their fourth letter N/M is visually and phonetically similar. Their different last letter T/S is not a sufficient difference to balance the similarities between the remaining letters nor are the figurative characteristics of the earlier sign (orange with stylised letters which remain clearly recognizable and three decorative lines).

In fact, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements.

In addition, part of the goods and services are identical and even if the level of the public can sometimes be higher, this is not sufficient to avoid a likelihood of confusion.

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

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

The contested services 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 services cannot be successful.

Since the opposition is partially successful on the basis of the inherent average distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use/reputation as claimed by the opponent and in relation to identical goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• Community trade mark registration No 13 359 781 for the figurative trade mark in Classes 9, 20, 35, 36, 37, 38 and 42.

• Portuguese trade mark registration No 433 749 for the word mark ‘GLINTT’ in Classes 9, 35, 38 and 42 (for which proof of use has been requested).

• Portuguese trade mark registration No 433 746 for the word mark ‘Glintt- Global Intelligence Technology’ in Classes 9, 35, 38 and 42 (for which proof of use has been requested).

Since these marks are identical to the one which has been compared or similar (‘the word mark GLINTT) or even less similar because of the additional elements ‘Global Intelligence Technology’ and cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected and there is no need to assess the evidence of use filed for the two Portuguese trade marks under use obligation. Therefore, no likelihood of confusion exists with respect to those services.

Since the services have been found dissimilar, the decision must continue base on the claimed reputation of the earlier trade marks.

REPUTATION – ARTICLE 8(5) CTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier figurative Portuguese trade mark registration No 537 542  , for which the opponent claimed reputation in Portugal for the above mentioned goods and services in Classes 9, 20, 35, 36, 37, 38 and 42.

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 (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.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Portugal.

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 02/01/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Portugal 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 the previous mentioned goods and services for the earlier Portuguese trade mark in Classes 9, 20, 35, 36, 37, 38 and 42.

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 09/04/2015, the opponent submitted, the following evidence:

• Opponent website http://www.glintt.com (annex 4)

• News in Portuguese in order to show that the Company has an international expansion strategy (annex 5).

On 28/08/2015, namely before the deadline to substantiate that expired on 29/08/2015, the opponent also filed evidence to proof use of the earlier two Portuguese trade marks submitted to use obligation. For sake of completeness, the evidence relating, among other, to the earlier Portuguese word mark GLINTT, will be assessed in order to see if it can also support reputation of the figurative Portuguese trade mark for the above mentioned goods and services since evidence of use of a figurative mark in its word form can also support other type of evidence showing use of the figurative mark as such.

The evidence consists of the following documents:

• Item 1: 8 Commercial proposals and 3 quotations for Portugal and other countries dated between 2011 and 2015 for IT services such as software developing process, consultancy services specialized in the development of IT systems, IT solutions for internal portals, etc.

• Item 2: 60 Invoices in Portugal, Spain, UK, Ireland, France, the Netherlands and other non EU countries, between 2010 and 2014 concerning IT services such as software developing process, consultancy services specialized in the development of IT systems, IT solutions for internal portals, etc.

• Item 3: 10 Press reports in Portuguese with English translations in professional magazines about the company Glintt and its activities, one of which is about the Blue Coat’s “Best Partner 2012 Award” showing that one company (Blue Coat) has considered Glintt as a strategic company concerning Blue Coat’s solutions application.

• Item 4: Public Statements from members of the board of directors of Glintt stating that the two Portuguese trade marks under use obligation are in use for IT services.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier figurative trade mark acquired a reputation.

The evidence shows use of the trade mark for different IT services but it does not provide any indication of the extent of recognition by the relevant public. Most of the evidence relates to the opponent as a company providing IT services but it does not show that the trade mark has a reputation for these services. The affidavit and the invoices are not sufficient for the assessment of reputation as it cannot support a qualitative valuation of the reputation of the mark. The press reports and the invoices do not allow appreciating that the trade mark is reputed. Even the award is not able to provide information about reputation of the mark since it comes from another company in the same field and only shows that Glintt as a company has been recognised by a single entity as best partner. These documents generally show there is a company called Glintt which provides different services in the IT sector.

Therefore, despite showing some use of the trade mark including in its figurative form, the evidence provides little information on the extent of such use and it does not provide sufficient indications of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, 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.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) CTMR 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) CTMR is not fulfilled, and the opposition must be rejected.

The opponent also invoked reputation for the other three earlier marks

• Community trade mark registration No 13 359 781 for the figurative trade mark in Classes 9, 20, 35, 36, 37, 38 and 42.

• Portuguese trade mark registration No 433 749 for the word mark ‘GLINTT’ in Classes 9, 35, 38 and 42 (for which proof of use has been requested).

• Portuguese trade mark registration No 433 746 for the word mark ‘Glintt- Global Intelligence Technology’ in Classes 9, 35, 38 and 42 (for which proof of use has been requested).

The result is the same as to reputation of these other rights which must be considered as not proven since the evidence is the same and it has already been assessed for the Portuguese earlier figurative mark.

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 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

Jessica Norma LEWIS

Benoit VLEMINCQ

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.