OPPOSITION No B 2 543 307

Universal City Studios LLC, 100 Universal City Plaza, 91608, Universal City, United States of America (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Vatche Kiwanian, 9844 Glenoaks Blvd, 91352 Sun Valley, United States of America (applicant), represented by A2 Estudio Legal, C/ Alcalá 143, 3º Derecha., 28009 Madrid, Spain (professional representative).

On 02/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 543 307 is partially upheld, namely for the following contested goods:

Class 32: Beer, ales, soft drinks, carbonated waters.

Class 33: Wines, spirits, liqueurs.

2. European Union trade mark application No 13 779 814 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 European Union trade mark application No 13 779 814 for the figurative mark . The opposition is based on European Union trade mark registration No 2 848 398 and European Union trade mark registration No 3 077 021, both for the word mark ‘THE FAST AND THE FURIOUS’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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.

1. The goods and services

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

European Union trade mark registration No 2 848 398

Class 9: Prerecorded video tapes, and prerecorded video cassettes all featuring motion pictures and television programs, cd rom programs featuring motion pictures and television programs; musical sound recordings; stereoscope and discs carrying a plurality of stereoscopic pairs of transparencies; photographic cameras; radios; sunglasses; decorative magnets; interactive computer game programs; interactive computer game cartridges; interactive computer game cassettes; video game cartridges, video game cassettes; computer navigation equipment; satellite navigation equipment; personal digital assistant; automobile speakers and stereos; mobile phones.

Class 16: Paper goods and printed matter, namely, address books; calendars; colouring books; comic books, graphic novels; magazines; notebooks; diaries; scrapbooks; sketchbooks albums; photograph albums; poster books; sticker albums; trading cards; greeting cards; paper pennants; wall posters; chalk; crayons; arts and crafts paint kits; markers; pens; pencils; pencil cases; pencil erasers; pencil sharpeners; decorative pencil top ornaments; drawing rulers; slateboards for writing; stencils; rubber stamps and stamp pads; heat applied appliques made of paper; decals and transfers; stickers; paper party decorations; paper party supplies, namely paper napkins, paper placemats, paper giftwrap and paper gift wrapping ribbons, paper table cloths and paper party bags; postcards, writing paper; envelopes; memo pads and activity kits consisting of stickers and stamps.

Class 25: Clothing, namely pajamas, nightgowns, robes, coats, jackets, shirts, blouses, t-shirts, sweatshirts, sweatpants, shorts, caps, hats, gloves, mittens, suspenders, skirts, pants, ties, stockings, undershirts, underwear, dresses, rompers, overalls, shoes, boots, slippers, aprons, sweaters, and Halloween costumes.

Class 28: Toys and games, namely action figures and accessories therefor; board games, card games; costume masks; miniature die cast vehicles; battery operated remote controlled toy vehicles; toy model kits; electric action toys; jigsaw puzzles; skateboards; rollerskates; toy banks; water squirting toys; toy pistols; target sets; Christmas tree ornaments; pinball and arcade game machines and hand held unit for playing electronic games; playing cards; paper party supplies, namely paper hats.

European Union trade mark registration No 3 077 021

Class 3: Perfumes and fragrances.

Class 4: Motor oil.

Class 6: Metal key chains.

Class 9: Computer accessories; software; joysticks; mouses; phone accessories; motorcycle helmets; consumer electronics (other than what is already covered).

Class 12: Automobile tires, hub caps, steering wheels, scooters and bicycles.

Class 18: Sports bags.

Class 28: Skateboards and snowboards.

Class 41: Publishing services.

Class 43: Restaurants and cafes.

The contested goods are the following:

Class 5: Pharmaceutical, veterinary products, dietetic supplements.

Class 32: Beer, ales, soft drinks, carbonated waters.

Class 33: Wines, spirits, liqueurs.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from 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.

Contested goods in Class 5

The contested goods in Class 5 are pharmaceutical preparations and dietetic substances. These goods are not sufficiently related to any of the opponent’s goods and services in Classes 3, 4, 6, 9, 12, 16, 18, 25, 28, 41 and 43, which have very different natures, purposes, methods of use and distribution channels. They are neither complementary nor in competition and are not produced by the same undertakings.

The opponent argues that the abovementioned contested goods are similar to the opponent’s goods in Class 3, which are perfumes and fragrances. It is of the opinion that the goods under comparison may be found in the same outlets, such as pharmacies and drug stores, and have the same purpose and relevant public. However, the Opposition Division considers that these goods under comparison have different natures and purposes, the contested goods in Class 5 being pharmaceutical preparations for treating or preventing diseases or illnesses in people or animals and dietetic substances prepared for special dietary requirements, while the opponent’s goods in Class 3 being perfumes and fragrances with the purpose to give a pleasant odour.

In addition, the mere fact that the potential customers coincide does not automatically constitute an indication of similarity, since the same group of customers may be in need of goods or services of the most diverse origin and nature.

Moreover, the Opposition Division notes that too much emphasis should not be placed on the factor of distribution channels as modern drugstores and department stores sell goods of all kinds. The relevant public is aware that the goods sold in these places come from a multitude of independent undertakings. Therefore, the point of sale is less decisive when deciding whether the relevant public considers that goods share a common origin merely because they are sold at the same outlet. Only where the goods in question are offered in the same section of such shops, where homogeneous goods are sold together, will this favour similarity. In such cases it must be possible to identify the section by its territorial and functional separation from other sections. This is not the case at issue as pharmaceuticals and dietetic substances are not sold side by side with perfumery and fragrances.

Considering all of the above, it is concluded that the contested goods in Class 5 are dissimilar to all of the opponent’s goods and services.

Contested goods in Classes 32 and 33

The contested goods in Classes 32 and 33 are related to the opponent’s restaurants and cafes in Class 43 of earlier EUTM No 3 077 021. The abovementioned contested goods are generally alcoholic and non-alcoholic beverages consumed to quench thirst or for enjoyment. Notwithstanding the different natures of the goods and services under comparison, from the point of view of the consumer the abovementioned contested goods and the opponent’s restaurants and cafes in Class 43 are complementary, in the sense that the contested goods are in the core of the provision of restaurant and cafe services, which entail the activity of preparing and serving drinks. The relevant public would expect that in some cases the commercial origin and distribution channels of these goods and services coincide. Therefore, the goods and services under comparison are similar to a low degree.

Some of the contested goods have been found to be similar to services of earlier EUTM No 3 077 021, while the remaining contested goods have been found to be dissimilar to all of the goods and services of both of the opponent’s earlier marks. According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Consequently, the examination of a likelihood of confusion will continue solely on the basis of earlier EUTM No 3 077 021.

2. 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 and services found to be similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs

THE FAST AND THE FURIOUS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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 the word mark ‘THE FAST AND THE FURIOUS’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof. Moreover, since it is a word mark, the earlier mark has no more dominant (visually eye-catching) elements.

The contested sign is a figurative mark consisting of the elements ‘Fast &’ and ‘Furious’ depicted over two lines in black bold italic characters. Horizontal stripes extend to the left of the letters, creating the impression of movement of the verbal element to the right.

The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

The word ‘FAST’, present in both marks under comparison, will be perceived by the English-speaking part of the relevant public as, inter alia, ‘acting or moving or capable of acting or moving quickly; swift’, ‘accomplished in or lasting a short time’ (information extracted from Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/fast). This word is meaningless for other parts of the public, namely those consumers with no knowledge of English.

The word ‘FURIOUS’, present in the marks under comparison, will be perceived by the English-speaking consumers as, inter alia, ‘extremely angry or annoyed; raging’, ‘violent, wild, or unrestrained, as in speed, vigour, energy, etc.’ (information extracted from Collins English Dictionary online, at https://www.collinsdictionary.com/dictionary/english/furious). This meaning may also be understood by other parts of the public, such as the Spanish, Italian, Portuguese and Romanian-speaking consumers due to the similarity of the above word with the equivalents in the respective languages, ‘furioso’ in Spanish, Italian and Portuguese, ‘furios’ in Romanian. It is meaningless for other parts of the public where no similar equivalents of this word exist.

The words ‘FAST’ and ‘FURIOUS’ have no connection to the relevant goods and services or any of their essential characteristics and, contrary to the applicant’s arguments, are fully distinctive. They are also fully distinctive for those consumers who do not understand their meanings and will perceive them as fanciful terms.

The word ‘AND’ of the earlier mark is an English conjunction used to join two or more words or phrases. It is likely to be understood by the majority of the consumers in the European Union since it is a very basic English word. The word ‘AND’ of the earlier mark and the ampersand ‘&’ of the contested sign will have less impact in the signs as their function is merely to join the meaningful words or phrases in the signs.

The word ‘THE’, used twice in the earlier mark, is the definite article in English and will be understood by the majority of the relevant public in the European Union since it is a rather basic feature of the English language. Less attention will be paid to it in the mark because it is used before a noun or an adjective when it functions as a noun to limit or individualise its meaning and does not in itself introduce any particular and distinctive concept.

The verbal elements in both signs, ‘THE FAST AND THE FURIOUS’ and ‘FAST & FURIOUS’, will be perceived as conceptual units by the English-speaking part of the public referring to objects which are acting or moving quickly, violently, wildly. For the remaining parts of the public, only some of the words constituting the marks will be understood in their individual meanings.

Visually, the signs coincide in the words ‘FAST’ and ‘FURIOUS’, included as identifiable and distinctive elements in both marks. They differ in the shorter and less distinctive (for the vast majority of the consumers) verbal elements in the marks, namely the word ‘AND’ in the earlier mark, which is substituted by the ampersand symbol in the contested sign, and the word ‘THE’ included twice in the earlier mark, which has no counterpart in the contested sign. They also differ in the stylisation of the verbal elements in the contested sign, which does not obscure or camouflage the verbal elements constituting the sign.

Consumers normally focus more on the beginnings of trade marks. Nonetheless, regarding the importance of the beginning of the signs, it must be recalled that that argument cannot hold true in all cases and does not, in any event, cast doubt on the principle that the assessment of the case must take account of the overall impression created by those marks, since the average consumer normally perceives a trade mark as a whole and does not proceed to analyse its various details.

Therefore, the fact that the most distinctive elements of the marks, ‘FAST’ and ‘FURIOUS’, can be identified as independent elements in the same order in both signs and form the major parts of these signs will not go unnoticed by the relevant public.

Consequently, it is considered that the marks are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the words ‘FAST’ and ‘FURIOUS’. For the English-speaking part of the public they also coincide in the pronunciation of the word ‘AND’ in the earlier mark and the ampersand ‘&’ in the contested sign which represents the same conjunction ‘and’. The pronunciation of the marks differs in the sound of the repeated word, ‘THE’, in the earlier mark, which will have less impact in the perception of the mark for the majority of the relevant public, as explained above, and in the pronunciation of the ampersand by the non-English-speaking parts of the public which will read it as the equivalent of ‘and’ in the respective languages.

Therefore, the signs are aurally similar to a high degree regardless of the part of the public under consideration.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks.

There is a conceptual link between the signs for the English-speaking part of the public to the extent that both marks will be associated with the idea of acting or moving quickly, violently, wildly, in an unrestrained manner. The marks differ conceptually only in the slight nuance introduced by the determiner ‘THE’ in the earlier mark which limits or individualises the object(s) referred to. Consequently, the marks are conceptually almost identical. The marks are also conceptually highly similar for the part of the public that understands only the word ‘FURIOUS’ in them.

For the remaining consumers which may only recognise the English words ‘THE’ and ‘AND’ and the ampersand symbol, the definite article and the ampersand cannot be connected conceptually to anything specific and no similarity can be extracted from a definite article and a conjunction on their own, since they do not carry a particular distinctive conceptual charge which could be remembered by the consumers.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 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 of some less distinctive elements in the mark, as stated above in section c).

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case the goods and services under comparison are partly similar to a low degree and partly dissimilar. The goods and services found to be similar are directed at the public at large with an average degree of attention. The assessment performed above rests on the earlier mark's inherent distinctiveness which must be seen as normal. The signs are visually and aurally similar to a high degree and, for a part of the public, conceptually also highly similar or almost identical. The marks differ in the figurative features of the contested sign, which are of lesser impact, as explained above, as well as in the additional word, ‘THE’, at the beginning and at the fourth position in the earlier mark. However, the general principle according to which differences at the beginnings of the marks are to be given more weight does not apply in the present case, since the majority of the relevant public will recognise the element ‘THE’ in the earlier mark as a determiner and will perceive it as complementing the meaning of the expression rather than introducing a relevant concept that could differentiate the marks.

Therefore, taking into account that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them and taking into account the interdependence principle mentioned above, the Opposition Division considers that the significant visual, aural and, for a part of the public, conceptual coincidences between the signs are sufficient to lead to a likelihood of confusion, including a likelihood of association, even in relation to goods and services which are similar to only a low degree.

Consequently, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 3 077 021.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree 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) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

Since the opposition is partially successful on the basis of the inherent 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 and reputation as claimed by the opponent and in relation to similar 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 goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As seen above, the goods and services covered by earlier European Union trade mark registration No 2 848 398 are also dissimilar to the remaining contested goods in Class 5 and the outcome cannot be different on the basis of that earlier right with respect to the goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods. Likewise, there is no need to examine the evidence of enhanced distinctiveness submitted by the opponent in relation to that mark as the result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

REPUTATION — ARTICLE 8(5) EUTMR

According to the opponent, the earlier trade marks have a reputation in the European Union.

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 will 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 for 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: 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.

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks, European Union trade mark registration No 2 848 398 and European Union trade mark registration No 3 077 021, both for the word mark ‘THE FAST AND THE FURIOUS’, have a reputation in the European Union for all the goods and services for which they are registered.

Reputation implies a knowledge threshold that 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 27/02/2015. Therefore, the opponent was required to prove that the trade marks 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:

European Union trade mark registration No 2 848 398

Class 9: Prerecorded video tapes, and prerecorded video cassettes all featuring motion pictures and television programs, cd rom programs featuring motion pictures and television programs; musical sound recordings; stereoscope and discs carrying a plurality of stereoscopic pairs of transparencies; photographic cameras; radios; sunglasses; decorative magnets; interactive computer game programs; interactive computer game cartridges; interactive computer game cassettes; video game cartridges, video game cassettes; computer navigation equipment; satellite navigation equipment; personal digital assistant; automobile speakers and stereos; mobile phones.

Class 16: Paper goods and printed matter, namely, address books; calendars; colouring books; comic books, graphic novels; magazines; notebooks; diaries; scrapbooks; sketchbooks albums; photograph albums; poster books; sticker albums; trading cards; greeting cards; paper pennants; wall posters; chalk; crayons; arts and crafts paint kits; markers; pens; pencils; pencil cases; pencil erasers; pencil sharpeners; decorative pencil top ornaments; drawing rulers; slateboards for writing; stencils; rubber stamps and stamp pads; heat applied appliques made of paper; decals and transfers; stickers; paper party decorations; paper party supplies, namely paper napkins, paper placemats, paper giftwrap and paper gift wrapping ribbons, paper table cloths and paper party bags; postcards, writing paper; envelopes; memo pads and activity kits consisting of stickers and stamps.

Class 25: Clothing, namely pajamas, nightgowns, robes, coats, jackets, shirts, blouses, t-shirts, sweatshirts, sweatpants, shorts, caps, hats, gloves, mittens, suspenders, skirts, pants, ties, stockings, undershirts, underwear, dresses, rompers, overalls, shoes, boots, slippers, aprons, sweaters, and Halloween costumes.

Class 28: Toys and games, namely action figures and accessories therefor; board games, card games; costume masks; miniature die cast vehicles; battery operated remote controlled toy vehicles; toy model kits; electric action toys; jigsaw puzzles; skateboards; rollerskates; toy banks; water squirting toys; toy pistols; target sets; Christmas tree ornaments; pinball and arcade game machines and hand held unit for playing electronic games; playing cards; paper party supplies, namely paper hats.

European Union trade mark registration No 3 077 021

Class 3: Perfumes and fragrances.

Class 4: Motor oil.

Class 6: Metal key chains.

Class 9: Computer accessories; software; joysticks; mouses; phone accessories; motorcycle helmets; consumer electronics (other than what is already covered).

Class 12: Automobile tires, hub caps, steering wheels, scooters and bicycles.

Class 18: Sports bags.

Class 28: Skateboards and snowboards.

Class 41: Publishing services.

Class 43: Restaurants and cafes.

The remaining contested goods are the following:

Class 5: Pharmaceutical, veterinary products, dietetic supplements.

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 07/03/2018 the opponent submitted the following evidence:

• Annex 1: Certificates of registration issued by the US Copyright Office between 2001 and 2016 for different visual artworks created for advertising purposes, representing film posters for ‘The Fast and the Furious’, ‘2 Fast 2 Furious’, ‘Fast Five’ (two posters), ‘Fast & Furious 6’ (three posters) and ‘The Fate of the Furious’. The words on the posters appear in the following ways centrally: , , , etc.

• Annex 2: Extracts from the cinema website www.boxofficemojo.com obtained on 26/02/2018, giving some information about the following films:

• ‘The Fast and the Furious’ released in 2001, with domestic total gross in the USA of USD 144 533 925, and foreign total gross of USD 62 750 000, broken down by countries and including ten EU countries (e.g. USD 5 163 335 in France, USD 7 651 437 in Germany, USD 2 851 944 in Italy, USD 3 218 711 in Spain, USD 9 235 142 in the United Kingdom).

• ‘2 Fast 2 Furious’ released in 2003, with domestic total gross in the USA of USD 127 154 901, and foreign total gross of USD 109 195 760, broken down by countries and including twenty EU countries (e.g. USD 12 638 130 in France, USD 10 562 064 in Germany, USD 3 944 594 in Italy, USD 6 829 459 in Spain, USD 12 527 013 in the United Kingdom).

• ‘The Fast and the Furious: Tokyo Drift’ released in 2006, with domestic total gross in the USA of USD 62 514 415, and foreign total gross of USD 95 953 877, broken down by countries and including 25 EU countries (e.g. USD 6 662 679 in France, USD 9 733 517 in Germany, USD 4 389 074 in Italy, USD 4 738 552 in Spain, USD 10 567 267 in the United Kingdom).

• ‘Fast and Furious’ released in 2009, with domestic total gross in the USA of USD 155 064 265, and foreign total gross of USD 208 100 000, broken down by countries and including 25 EU countries (e.g. USD 14 829 172 in France, USD 15 423 592 in Germany, USD 11 161 012 in Italy, USD 8 747 242 in Spain and USD 20 546 785 in the United Kingdom).

• ‘Fast Five’ released in 2011, with domestic total gross in the USA of USD 209 837 675, and foreign total gross of USD 416 300 000, broken down by countries and including 24 EU countries (e.g. USD 23 113 416 in France, USD 26 703 371 in Germany, USD 15 494 242 in Italy, USD 14 498 253 in Spain and USD 30 243 825 in the United Kingdom).

• ‘Fast & Furious 6’ released in 2013, with domestic total gross in the USA of USD 238 679 850, and foreign total gross of USD 550 000 000, broken down by countries and including 20 EU countries (e.g. USD 24 998 379 in France, USD 29 915 431 in Germany, USD 16 681 782 in Italy, USD 12 652 861 in Spain and USD 38 277 406 in the United Kingdom).

• ‘Furious 7’ released in 2015, with domestic total gross in the USA of USD 353 007 020, and foreign total gross of USD 1 163 038 891, broken down by countries and including 24 EU countries (e.g. USD 31 268 799 in France, USD 42 761 084 in Germany, USD 20 797 031 in Italy, USD 14 868 452 in Spain and USD 59 927 904 in the United Kingdom).

• ‘The Fate of the Furious’ released in 2017, with domestic total gross in the USA of USD 226 008 385, and foreign total gross of USD 1 009 996 733, broken down by countries and including 25 EU countries (e.g. USD 29 892 297 in France, USD 32 450 125 in Germany, USD 16 416 948 in Italy, USD 15 497 540 in Spain and USD 37 539 469 in the United Kingdom).

• Annexes 3.1 and 3.2: Website extracts obtained on 26/02/2018 concerning the opponent’s films:

• Website extracts from www.moviejones.de - a German website showing rankings for the world’s most successful films in several different years and listing ‘Fast & Furious Five’ (2011) at the seventh position for 2011, ‘Fast & Furious 6’ (2013) at the sixth position for 2013, and ‘Fast & Furious 7 - Zeit für Vergeltung’ (2015) (translated as ‘Fast & Furious 7 - Time for Vengeance’) at the third position for 2015.

• Website extracts from www.insidekino.com - a German website ranking ‘The 100 highest-turnover films worldwide’, among which ‘Fast & Furious 7’ was ranked fifth worldwide, ‘Fast & Furious 8’ was ranked 12th, and ‘Fast & Furious 6’ was ranked 75th.

• A website extract from www.filmstarts.de - a German website, showing that on 01/11/2014 the trailer of the film ‘Fast & Furious 7’ was published on the website and announcing the coming release of the film.

• An extract from ZauberFuchs’s website www.zauberfuchs.com - an Austrian online magazine, listing the film ‘Fast & Furious 6’ as third among the ‘Current list of the most successful films by revenue in Austria 2013 (in millions of euros / as of November 2013)’.

• Annexes 4.1, 4.2 and 4.3: Website extracts obtained on 27/02/2018 reporting on film premieres, containing in particular a publication in the German website https://www.waz.de made on 18/03/2009, a publication on www.zimbio.com and a publication on www.autoaufkleber24.de, all reporting on the European premiere of the film ‘Fast & Furious – New Model – Original Parts’ in Bochum, Germany on 17/03/2009; a publication on www.blackfilm.com made on 08/05/2013, a publication on http://metro.co.uk made on 07/05/2013 reporting on the world premiere of the film ‘Fast & Furious 6’ on 07/05/2013 in London, the United Kingdom.

• Annexes 5.1 and 5.2: Extracts from the social media website Facebook at www.facebook.com and the website Allocine at www.allocine.fr obtained on 01/03/2018, showing posts concerning the release of ‘Fast & Furious 4’ in 2009, ‘Fast & Furious 6’ in 2013, ‘Fast & Furious 7’ in 2015 and the Facebook page of ‘Fast & Furious 8’ with over 60 million people who have liked the page.

• Annexes 6.1, 6.2, 6.3 and 6.4: Extracts from the Amazon or eBay websites for Italy (https://www.amazon.it), Spain (www.amazon.es), Germany (www.amazon.de) and the United Kingdom (www.amazon.co.uk and www.ebay.co.uk), obtained between 26/02/2018 and 01/03/2018 showing videos for streaming, DVDs, Blu-ray discs and combined packs of such with the ‘The Fast and the Furious’ / ‘Fast & Furious’ films offered for sale, ‘The Fast and the Furious’ video games, as well as some other items, namely collectible toy cars, collectable figures, key holders, t-shirts, wall calendars, books, board games. These extracts contain also extracts from the websites of Universal Pictures in Germany (http://uphe.universalpictures.de) and Italy (https://www.universalpictures.it), showing ‘The Fast and the Furious’ / ‘Fast and Furious’ films. Finally, there is an extract from https://www.tip-berlin.de dated 09/05/2011, containing a publication in German reporting on the reception of the ‘Fast & Furious Five’ film in Germany with 400 000 visitors in the cinemas and a total of 1.5 million visitors.

The opponent has provided full or partial translations of the documents which originals are not in English.

The evidence submitted demonstrates that the sign ‘THE FAST AND THE FURIOUS’ is the name of highly successful series of action films, as can be concluded by the number of films in the series (currently eight full-length films) and from the huge success of each of those films with the public in, inter alia, the European Union, evident from the total gross figures for different countries, referring to millions of USD for each film, the numerous charts positioning the opponent’s films among the first most successful films of all times, the significant number of followers and fans on social media and the very high number of visitors of the premieres of some of the films.

It must be noted that the title of a film does not automatically enjoy the protection afforded to indicators of commercial origin since only signs which develop characteristic trade mark functions may enjoy that protection. This does not exclude that the sign could also function as a trade mark in order to identify the commercial origin of films.

In the present case, the evidence shows that the series and the media franchise around the films are referred to by the name ‘The Fast and the Furious’ / ‘Fast & Furious’. For example, most of the film’s official titles include the words ‘Fast & Furious’ and those of them which do not include these expressions, such as the fifth film ‘Fast Five’, the seventh film ‘Furious 7’ or the eighth film ‘The Fate of the Furious’, are marketed and referred to also as ‘Fast & Furious Five’, ‘Fast & Furious 7’, ‘Fast & Furious 8’ ( , , , ) in internet charts, online social media and various websites. This shows that the earlier sign ‘THE FAST AND THE FURIOUS’ (or a variation of it) is used to refer to the whole series and not only as a title of the individual films and it helps consumers to distinguish the particular films as originating from or being related to the company producing ‘THE FAST AND THE FURIOUS’ films.

This leads the Opposition Division to conclude that the sign ‘THE FAST AND THE FURIOUS’ is indeed perceived as an indicator of commercial origin by the public and that this sign may enjoy reputation resulting from the huge commercial success of all films belonging to ‘THE FAST AND THE FURIOUS’ series.

However, the evidence does not succeed in establishing that the trade marks on which the opposition is based have a reputation for the goods and services on which the opposition is based and for which reputation has been claimed.

The evidence shows that the sign ‘THE FAST AND THE FURIOUS’ is known for films/motion pictures and possibly for the production and distribution of films/motion pictures. The evidence shows that the opponent’s films were offered for online streaming or recorded on DVDs and Blu Rays.

The earlier marks are not registered for any of these goods or services.

Indeed, contrary to the opponent’s arguments, the Opposition Division notes that consumer electronics in Class 9 (EUTM No 3 077 021) do not include recorded content or recorded data media, and publishing services in Class 41 (EUTM No 3 077 021) do not include the production or distribution of films.

There is no evidence for use of pre-recorded video tapes/cassettes (Class 9, EUTM No 3 077 021) either, since the little evidence that shows the form in which the opponent’s films were distributed to consumers refers either to online streaming or to recorded optical discs, namely DVDs and Blu-ray discs, but there is no evidence whatsoever showing any use and knowledge for recorded video tapes (which are magnetic data carriers). The opponent’s cd rom programs featuring motion pictures and television programs in Class 9 refer to recorded programs (software) that feature motion pictures, but not to motion pictures as such or to recorded carriers. The evidence does not refer to software, hence it does not show reputation for such goods. The opponent’s musical sound recordings in Class 9 do not cover motion pictures either.

As for the remaining goods and services, such as interactive computer game programs in Class 9, printed matter; calendars in Class 16, board games in Class 28 (EUTM No 2 848 398), although such goods appear in some of the documents submitted (i.e. Annexes 6.1-6.4 showing goods offered for sale online), the evidence only shows the existence of such goods but does not contain any indications as regards the extent of use of those goods. The evidence does not provide any indications of the degree of recognition of the trade mark by the relevant public in relation to those goods and does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted in relation to those goods. Consequently, the evidence does not show that the trade mark is known by a significant part of the relevant public in relation to any of the abovementioned goods.

The evidence submitted does not contain any indications of use and trade mark knowledge for any of the remaining goods and services covered by the earlier marks.

Consequently, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that earlier EUTM No 3 077 021 and EUTM No 2 848 398 have acquired a reputation for any of the goods or services for which they are registered. 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 marks have a reputation for any of the goods and services, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on the ground of Article 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some 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

Begoña URIARTE VALIENTE

Boyana NAYDENOVA

Martina GALLE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.