OPPOSITION No B 2 554 585

Omega SA (Omega AG) (Omega Ltd.), Jakob-Stämpfli-Strasse 96, 2502 Biel/Bienne, Switzerland (opponent), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Beijing UniFly Culture Innovation Co., Ltd., Xinyu Plaza, 90 Guang Qu Men Nei Road, Dongcheng District, Beijing 100026, People’s Republic of China (applicant), represented by Yue Zhuang, Avenida Eduardo Bosca 13, A, 19, 46023 Valencia, Spain (professional representative).

On 07/11/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 554 585 is partially upheld, namely for the following contested goods and services:

Class 9: Animated cartoons; computer programs [downloadable software]; navigational instruments; computer game software; computer software applications, downloadable; radios; protective helmets for sports.

Class 28: Body-building apparatus; games; mah-jong; parlor games; toys; playing balls; chess games; playing cards; machines for physical exercises; apparatus for games.

Class 41: Toy rental; providing recreation facilities; television entertainment; organization of competitions [education or entertainment]; publication of texts, other than publicity texts; tuition; providing sports facilities; amusements; game services provided on-line from a computer network; games equipment rental.

2. European Union trade mark application No 13 953 906 is rejected for all the above goods and services. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 953 906. The opposition is based on international trade mark registrations designating the European Union No 997 036, No 966 589, No 865 357 and No 771 474. The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier rights and, in relation to international trade mark registration No 771 474, also 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.

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 international trade mark registrations designating the European Union No 997 036, No 966 589 and No 865 357.

1. The goods and services

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

International trade mark registration No 997 036

Class 9: Electronic devices incorporating a display, starting counters, all the aforesaid goods intended for the field of sports.

International trade mark registration No 966 589

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

International trade mark registration No 865 357

Class 41: Timekeeping of sports events; organization of sports and cultural events.

The contested goods and services are the following:

Class 9: Downloadable image files; animated cartoons; computer programs [downloadable software]; navigational instruments; computer game software; computer software applications, downloadable; radios; printed circuit boards; batteries, electric; protective helmets for sports.

Class 28: Body-building apparatus; games; mah-jong; parlor games; toys; playing balls; chess games; playing cards; machines for physical exercises; apparatus for games.

Class 41: Toy rental; providing recreation facilities; television entertainment; organization of competitions [education or entertainment]; publication of texts, other than publicity texts; tuition; providing sports facilities; amusements; game services provided on-line from a computer network; games equipment rental.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested computer programs [downloadable software]; computer game software; computer software applications, downloadable are similar to the opponent’s games in Class 28. The contested goods are or can include games software and the opponent’s goods include video or computer game machines. These goods have the same purpose, they can be complementary (inasmuch as software in Class 9 is essential for the functioning of the devices in Class 28), their natures are similar, and they can have the same distribution channels and producers.

The contested protective helmets for sports are similar to the opponent’s gymnastic and sporting articles not included in other classes in Class 28. These goods are complementary and are usually sold in the same shops to the same public.

The contested animated cartoons are similar to a low degree to the opponent’s games and playthings in Class 28. Although their natures, methods of use and usual commercial origins are different, they have the same purpose, namely that of amusing or entertaining the user. Moreover, they can be in competition with each other and can be found in the same sections of stores.

Although the contested batteries, electric could be considered complementary to the opponent’s goods, for example the goods in Class 9 and certain toys or electronic game devices in Class 28, this does not result in a significant degree of similarity, as it is common knowledge that batteries for use with goods and the goods themselves are not manufactured by the same companies but are rather standardised items for use with all kinds of devices and are manufactured by specialised companies. Furthermore, these goods have different natures, purposes and methods of use and are not in competition. The contested batteries, electric have even less in common with the opponent’s remaining goods, such as gymnastic articles, which are not run by power, and its services in Class 41. These goods and services are not even complementary and do not target the same end consumers. Therefore, the contested batteries, electric are dissimilar to all of the opponent’s goods and services.

The contested printed circuit boards can be an integral part of some of the opponent’s goods, are installed by the manufacturers of the final goods and obviously would not be purchased by the same end consumers. These goods have different natures, purposes, methods of use and distribution channels, and they are neither complementary nor in competition. The contested printed circuit boards have even less in common with the opponent’s remaining goods, such as gymnastic articles, which have no circuit boards, and its services in Class 41. These goods and services have different natures, purposes, methods of use, distribution channels, publics and origins. Therefore, the contested printed circuit boards are dissimilar to all of the opponent’s goods and services.

The contested navigational instruments and radios, although they have some commonalities with the opponent’s electronic devices incorporating a display, starting counters, all the aforesaid goods intended for the field of sports in Class 9, in the sense that they are or include electronic devices and apparatuses, have essentially different purposes, namely direction finding or sound transmission (the contested goods) and timekeeping in sports (the opponent’s goods). These opponent’s goods as well as the remaining opponent’s goods and services have different methods of use, are not complementary (in the sense that one is indispensable for the use of the other) and are not in competition, as they satisfy entirely different needs.

The contested downloadable image files have no notable points of contact with the opponent’s goods and services. Downloadable image files are data files containing images available online for the end consumer to download. It cannot be said that these goods and the opponent’s goods and services could coincide in their nature, purpose, method of use, users or producers/providers, or that they are complementary or in competition with each other. The contested goods are, therefore, dissimilar to the opponent’s goods and services.

Contested goods in Class 28

Games are identically contained in both lists of goods.

The contested body-building apparatus and machines for physical exercises are included in the broad category of the opponent’s gymnastic and sporting articles not included in other classes. Therefore, they are identical.

The contested mah-jong; parlor games; toys; playing balls; chess games; playing cards; apparatus for games are included in the broad category of the opponent’s games and playthings. Therefore, they are identical.

Contested services in Class 41

The contested organization of competitions [education or entertainment] is at least similar to a high degree to the opponent’s organization of sports and cultural events. They have the same nature and method of use, and they can be complementary and in competition with each other.

The contested providing sports facilities and providing recreation facilities are similar to the opponent’s organization of sports events, as they can be provided by the same companies, have similar natures and purposes, and can be complementary or in competition with each other (e.g. a company might organise a sporting or recreational event or just rent its facilities for the same purpose).

The contested television entertainment; amusements; game services provided on-line from a computer network; games equipment rental; toy rental are all entertainment services and have a certain degree of similarity to the opponent’s organization of sports and cultural events. All these services have a similar purpose, namely providing activities for the public to enjoy in their spare time. In addition, these services can have the same distribution channels, since they may be provided in the same venues, and can target the same public. They can also have the same end users.

The contested publication of texts, other than publicity texts is similar to a low degree to the opponent’s organization of cultural events, as these services can have the same distribution channels and can be complementary to each other.

The contested tuition is similar to a low degree to the opponent’s organization of sports and cultural events. Cultural activities consist of a broad spectrum of activities, including organisation of exhibitions for cultural or educational purposes, which can be provided by the same undertakings that provide education services. The services can target the same public and have the same purpose.

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 identical or similar to various degrees are directed at the public at large. The degree of attention is considered average.

3. The signs

Earlier trade marks	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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Greek-speaking part of the relevant public.

The earlier marks are all identical to one another and are figurative marks consisting of the symbol for the Greek letter omega and the word ‘OMEGA’ written in standard upper case letters below it.

The contested sign is a figurative mark consisting of a figurative element composed of three omega symbols and, underneath the figurative element, the word ‘OMESCAPE’, depicted in slightly stylised upper case letters. The omega symbols will be clearly perceived as such by the public despite being conjoined to form a circle. A part of the public might associate the verbal element’s first part, ‘OME’, with the letter omega as a result of the presence of this symbol in the figurative element. However, a part of the public will not associate the verbal element with any meaning.

Regardless of whether the elements of the marks are associated with a meaning or not, their distinctiveness is normal. The marks have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the depiction of the letter omega, although in the contested sign it appears three times, and in the first three letters of their verbal elements, namely ‘OME’. The signs also have the same structure, namely the omega symbol(s) in the centre and at the top of the mark and the verbal element in upper case letters below it. In addition, the proportions of the figurative element and the verbal elements are similar in the signs. The visual differences between the signs are the number of omega symbols and the second parts of the verbal elements, namely ‘GA’ in the earlier marks and ‘SCAPE’ in the contested sign, as well as the slight difference in the typefaces used for the word elements.

The first parts of the verbal elements of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the first letters of the verbal elements of the signs, namely the letters ‘OME’, and differs in the sounds that follow ‘OME’, namely ‘GA’ in the earlier marks and ‘SCAPE’ in the contested sign. Furthermore, as the letter omega is part of the Greek alphabet, it is likely that at least a part of the public would refer to the contested sign as ‘three omegas’ (in Greek, ‘τρεις ωμέγα’ [‘tris omega’]). In any case, the result is a lower than average degree of aural similarity.

Conceptually, the public in the relevant territory will associate both signs with the concept of the letter omega and to that extent they are highly similar.

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

4. Distinctiveness of the earlier marks

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 marks have been extensively used and enjoy an enhanced scope of protection at least in relation to timepieces and in the field of timing sporting events. 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services are identical, similar to various degrees and dissimilar. The signs are visually similar to an average degree, aurally similar to a lower than average degree and conceptually highly similar. The similarities are due to the inclusion of the omega symbol in all the marks and to the facts that the verbal elements of the marks have the same first letters (with consumers paying more attention to the beginnings of signs) and that the marks have the same visual structure.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Furthermore, likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Bearing in mind the foregoing, the Opposition Division considers that the facts that the marks contain the same distinctive concept of the letter omega, and that at least a part of the public will perceive a reference to this concept also in the word elements of all the marks, it is likely, despite the differences described above, that consumers will believe that the identical and similar goods and services at issue (including those that are similar to a low degree) originate from the same manufacturer or related manufacturers. The concept of Ω and ‘omega’ is distinctive for the goods and services in question, and the average consumer of the relevant goods and services, paying an average degree of attention during the purchase of these goods and services, is likely to at least associate the signs with each other.

In its observations, the applicant argues that the earlier trade marks have a low distinctive character given that there are many trade marks that include the symbol Ω and that it is a symbol used in various contexts. However, the applicant did not explain how the use of the letter omega in, for example, mathematics or physics, would affect the distinctiveness of this letter in the context of the relevant goods and services. Furthermore, the applicant did not submit any evidence of the use of the symbol Ω as a common trade mark element. Under these circumstances, the applicant’s claims must be set aside.

The applicant also argues that its EUTM is used worldwide and is becoming a known phenomenon, and it filed several items of evidence to substantiate this claim. In this respect, it should be noted that the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings. Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts which happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Greek-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s international trade mark registrations designating the European Union. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

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 marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, 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 marks enjoyed an enhanced degree of distinctiveness.

In its observations, the opponent mentioned that it has acquired a solid reputation for its family of ‘OMEGA’ marks. As regards the family of marks argument, a positive finding that the opponent has a family of marks entails the use of at least three marks, which is the minimum threshold for the argument to be taken into due consideration. Furthermore, for the marks to be considered to form a family, they must all be characterised by the presence of the same component. In the present case, the opponent did not indicate which marks form the family of marks. The earlier marks invoked in the present case cannot be considered to form a family of marks, as they appear in only two depictions, namely and . In any case, even if the opponent had successfully demonstrated the use of a family of marks, that would not change the outcome in the present case with respect to the goods deemed dissimilar, as the similarity of the goods and services is a necessary condition for the application of Article 8(1) EUTMR. Therefore, the opposition based on this article and directed at these goods would not have been successful even if the opponent had proved the existence of its family of marks.

The opponent also based its opposition on its earlier international trade mark registration No 771 474 for the figurative mark and invoked Article 8(1)(b) and 8(5) EUTMR. The opposition will therefore proceed with respect to the dissimilar goods, namely downloadable image files; printed circuit boards; navigational instruments; radios; batteries, electric in Class 9.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed that international registration No 771 474 has a reputation in the European Union and invoked Article 8(5) EUTMR. This claim was not made within the opposition period in relation to the opponent’s remaining earlier rights (those compared above). Therefore, examination of the opposition based on Article 8(5) EUTMR will proceed only in relation to international registration No 771 474.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested sign. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

6. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is a figurative mark consisting of the Greek letter omega. This would be understood as such by the majority of the relevant public, as it is encountered in basic school curriculums. The contested sign is a figurative mark consisting of a figurative element composed of three omega symbols and, underneath the figurative element, the word ‘OMESCAPE’, depicted in slightly stylised upper case letters. The omega symbols will be clearly perceived as such by the public despite being conjoined to form a circle. A part of the public (especially the Greek-speaking part) might associate the first part, ‘OME’, of the contested sign’s verbal element with the letter omega, as this symbol will also be perceived in the sign’s figurative element. In addition, it cannot be excluded that in relation to the goods that relate to electrical power, namely the contested batteries, the symbol Ω could be associated with electrical resistance, as this how the symbol is used in physics.

However, it cannot be entirely excluded that a part of the public will not associate the symbol Ω, present in both signs, with any meaning.

Regardless of whether the elements of the marks are associated with a meaning or not, their distinctiveness is normal, except when the symbol Ω in the contested sign is perceived in relation to electrical batteries as related to electrical resistance. The marks have no elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs are similar to the extent that they coincide in the symbol Ω. However, they differ in the number of these symbols, namely one in the earlier mark and three in the contested sign. Furthermore, the contested sign includes the distinctive word ‘OMESCAPE’. Therefore, the signs are visually similar to a low degree.

Aurally, the majority of the EU public, irrespective of the different pronunciation rules in different parts of the relevant territory, will pronounce the earlier mark as /O/ME/GA/ and the contested sign as /O/ME/SCA/PE/ or /O/ME/SCAPE/. Furthermore, at least a part of the public, especially the Greek-speaking part, is likely to refer to the three omega symbols as ‘three omegas’ (in Greek, ‘τρεις ωμέγα’ [‘tris omega’]). In any case, the result is a lower than average degree of aural similarity. However, for the part of the public that does not recognise any meaning in the symbol Ω and therefore will not pronounce it, the signs cannot be compared aurally.

Conceptually, the majority of the public in the relevant territory will associate both signs with the concept of the symbol Ω (omega) and, in relation to the goods for which it is distinctive, they are conceptually highly similar. However, in relation to electrical batteries, the signs are conceptually similar to a low degree due to the low degree of distinctiveness of the symbol Ω for these contested goods. Furthermore, for the part of the public that does not recognise any meaning in the symbol Ω, a conceptual comparison cannot be made.

It follows that the signs are similar insofar as they comprise the omega symbol, Ω.

7. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in 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 16/04/2015. 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 for which the opponent has claimed reputation, namely:

Class 14: Horological and chronometric instruments.

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 04/12/2015, the opponent submitted the following evidence:

• Annex 2: extracts from the website www.swatchgroup.com, explaining the 160 years of history of the trade mark ‘OMEGA’, a brand that belongs to the Swatch Group, describing the role of the opponent’s ‘OMEGA’ brand as a pioneer in the field of watchmaking (both dated 2014), an article presenting one of the watch models (dated 2013) and a press release announcing a collaboration between Omega and the Swiss Federal Institute of Meteorology.

• Annex 3: printouts from www.omegawatches.com, the official website of Omega SA. The printouts contain material relating to the company (e.g. the company’s vision, its participation in environmental and technological projects), promotional material and catalogues of various ‘OMEGA’ watches, items of jewellery, accessories for watches, key holders, perfumes, various leather goods such as belts, bags and wallets. The annex also includes an article about the ‘OMEGA’ museum in Switzerland and some screenshots illustrating the history of ‘OMEGA’ watches, as well as an online map showing the number of ‘OMEGA’ authorised boutiques and retailers in each country of the world, and in particular in Europe.

• Annex 4: invoices and credit notes from 2012-2014 issued to customers in France, Germany, Spain and the United Kingdom. The documents were issued by the Swatch Group and demonstrate numerous sales of ‘OMEGA’ watches for large amounts (several hundreds of thousands to millions of euros or pounds sterling per country and per year).

• Annex 5: an extract from the German magazine Der Spiegel; the opponent claims that it demonstrates German consumers’ knowledge of watch trade marks in 2013 and that it shows that the ‘OMEGA’ mark was known to 71% of German consumers, achieving the fifth highest percentage among 80 brands mentioned. However, the document is not dated and the territory to which it relates is not clearly indicated.

• Annex 6: an extract from the popular online encyclopaedia Wikipedia regarding Omega SA, providing information about the company, its history and its achievements. It states: ‘in 1999 … Omega made history by introducing the first mass-produced watch incorporating the coaxial escapement … Considered by many to be one of the more significant horological advances since the invention of the lever escapement’. It also states that the first watch on the moon was an ‘OMEGA’ watch, lists notable owners, notes that Omega has had a product placement deal with the James Bond movies since 1995 and refers to its frequent presence as the official timekeeper for the Olympics, as well as listing celebrities around the world who have acted as ‘brand ambassadors’ for the ‘OMEGA’ brand.

• Annex 7: a copy of a special 150-page edition of the magazine Chronos, focusing on Omega and stating that the ‘OMEGA’ brand has a leading role in sports timekeeping. The date of this publication is not visible; however; it provides information on the achievements of Omega in fields ranging from seismic and space exploration to timekeeping at sporting events, and refers to various events of global importance where the ‘OMEGA’ brand was represented, for example the Olympic Games and space and underwater expeditions.

• Annex 8: printouts from Omega’s official website, www.omegawatches.com, that relate to the links between Omega and the world of sports, providing detailed information about what events at which locations Omega has been involved in, for example many Olympic Games (from 1932 in Los Angeles to London 2012, Sochi 2014 and Rio 2016). Furthermore, information is submitted about special Olympic editions of watches and chronographs, as is information on sponsored events and the teams participating in those events (e.g. European Golf tournament, various athletic events in Europe, prestigious sailing competitions).

• Annex 9: copies of articles from newspapers published in various countries – The Sun (UK, 2010), El Mundo (Spain, 2012), Independent (Ireland, 2012) – and from websites (e.g. relojeria.org, cristianiculescu.com, revo-online.com, entertainment.howstuffworks.com, CorrieredelloSport.it) about the measurement and recording of time at important sporting events under the mark ‘OMEGA’. Several of these articles show electronic products for the recording of time at important sporting events, such as the Olympic Games, marked with the ‘OMEGA’ trade marks. The articles from websites contain information and images relating to ‘OMEGA’ products, namely chronographs and other timekeeping equipment.

• Annex 10: copies of letters (dated between 1933 and 1938) in which important sporting organisations, such as the Organising Committee of the Olympic Games and the Organising Committee of the European Swimming Championship, thank Omega for its participation; some of them are in English.

• Annex 11: a brochure entitled ‘Omega: 50 Years of Olympic Timing’, referring to the period 1932-1982, during which Omega was the official timekeeper at the Olympic Games.

• Annex 12: printouts from Omega’s official website containing the information that the ‘OMEGA’ brand was used during space expeditions and an image of a special edition chronograph commemorating the Apollo space programme.

• Annex 13: printouts from Omega’s official website containing information about the relationship between the ‘OMEGA’ brand and James Bond; the printouts refer to two decades of cooperation between the makers of the film franchise and Omega and demonstrate the existence of special edition Bond watches. The annex also includes a printout from the website 007.com referring to Omega’s special edition Bond watches, dated 2012.

• Annex 14: screenshots of the ‘OMEGA’ Facebook page (about 800 000 followers), Twitter profile (more than 83 000 followers) and Instagram feed (more than 144 000 followers).

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union for all the goods for which the opponent has claimed reputation.

The vast majority of evidence refers to the figurative mark used in combination with the word ‘OMEGA’. However, the Opposition Division considers that the figurative mark on its own has a reputation. The majority of the EU public would refer to the symbol as ‘omega’, and on several occasions the signs appears on its own, for example, on a watch: .

The evidence listed above indicates that the earlier trade mark has been used for a substantial period of time. The evidence includes evidence from an independent source (Annex 7), namely Chronos magazine, which published a special issue dedicated to the opponent’s ‘OMEGA’ brand. The magazine describes the history of the opponent’s brand, explaining, for example, that in 1936 an ‘OMEGA’ watch was already being used in special underwater research operations, that the ‘OMEGA’ brand was awarded the Olympic Cross of Merit in 1952 at the Helsinki Olympics and that the Omega was the official timekeeper at other Olympic Games (e.g. at the 1968 Olympics in Mexico City).

Annex 11, a brochure entitled ‘Omega: 50 Years of Olympic Timing’ provides further information about the history of the opponent’s ‘OMEGA’ brand in relation to the Olympic Games and lists a substantial number of world-class sporting events, held between 1932 and 1982, at which the opponent’s ‘OMEGA’ brand has been present, including events that took place in the European Union. Furthermore, Annex 8 demonstrates that the opponent’s ‘OMEGA’ brand was present at later Olympic Games, such as the 2012 London Olympic Games., Annex 13, which provides evidence of advertising campaigns in which renowned celebrities have promoted the opponent’s brand, also covers more recent periods. Furthermore, the evidence shows that the opponent has an extensive network of authorised boutiques and retailers in almost every country of the European Union. The evidence also includes invoices and credit notes, which, although they were issued by the opponent’s parent company’s subsidiaries in various EU countries (Spain, Germany, France, the UK), demonstrate sales of substantial quantities of rather expensive goods in terms of number of items and value.

Therefore, based on the evidence as a whole, it can be clearly concluded that the opponent has used its ‘OMEGA’ brand for a substantial period, lasting for almost a century. The use has been global in coverage, and has included participation in substantial numbers of world-class sporting events.

Regarding the actual market recognition of the ‘OMEGA’ brand, the opponent submitted a market survey published in the German magazine Der Spiegel, dating from 2013. In the survey, the ‘OMEGA’ brand is said to have had a 71% level of market recognition among the general public in relation to wristwatches. Furthermore, the ‘OMEGA’ brand had achieved a 17% level of ‘readiness to purchase’ among the public, which, according to the study, clearly indicates a high level of awareness of the trade mark. Among roughly 80 brands, the opponent’s ‘OMEGA’ brand was one of the few brands to achieve such a high level of ‘readiness to purchase’.

Although the opponent did not submit direct sales figures or figures for expenditure on marketing and advertising, the evidence of actual marketing and advertising campaigns on the markets, product placement in movies and presence at world-class events does clearly indicate that the opponent’s marketing operations have been substantial enough to support the conclusion that the mark has a reputation.

Therefore, the Opposition Division concludes, as stated above, that the earlier mark enjoys a reputation in relation to the goods in Class 14 (horological and chronometric instruments), since it is for these goods that the ‘OMEGA’ brand has clearly been promoted. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods in question and the relevant consumers.

8. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. 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) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 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 (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 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.

The establishment of a link between marks, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51 and 52.)

In the present case, as established above there are similarities between the signs. For a substantial part of the EU public, although there is only a low degree of visual similarity and a lower than average degree of aural similarity, conceptually the signs are highly similar. The signs are linked through the distinctive concept of the letter omega. Although the earlier sign consists of only one Ω symbol, while the contested sign contains three of them and a distinctive word element, this does not diminish the strength of the conceptual link between the marks.

The goods for which the earlier mark is reputed are horological and chronometric instruments in Class 14 and the contested goods for which the opposition is unsuccessful under Article 8(1)(b) EUTMR are in Class 9, namely downloadable image files; printed circuit boards; navigational instruments; radios; batteries, electric.

The contested navigational instruments are instruments used by nautical navigators and pilots as tools of their trade. The purpose of navigation is to ascertain one’s present position and to determine the speed, direction, etc., to travel in to arrive at a port or other destination. The same public, for example nautical navigators, uses complex specialised timepiece devices such as marine chronometers (used to determine longitudes) and nocturnals (used to determine the local time based on the relative positions of two or more stars in the night sky). Therefore, a link between the marks could easily be established in relation to these goods. Furthermore, these contested goods, like the opponent’s goods, are goods in which the qualities of reliability and precision are sought after.

As regards the contested radios, the industries of the contested goods and the opponent’s goods overlap to a certain extent. This overlap between watchmaking and radio technology has resulted in the production of multifunctional devices such as clocks that also function as radios or radios with a clock function. This is commonly encountered on the market and therefore consumers are likely to establish a link between the opponent’s reputed brand in watchmaking and the contested radios.

Therefore, the abovementioned goods (radios and navigational instruments) have certain things in common, arising from their qualities and natures, and also from the market on which they are offered, that would allow a link between the signs to be established.

However, the same cannot be said in relation to the contested downloadable image files; printed circuit boards and batteries, electric.

The contested printed circuit boards mechanically support and electrically connect electronic components using conductive tracks, pads and other features etched from copper sheets laminated onto a non-conductive substrate. They are manufactured by companies specialising in manufacturing semiconductors. A printed circuit board can be an integral part of the opponent’s goods, installed by the manufacturer of the final goods (e.g. watches); in no circumstances would the contested goods have the same distribution channels as the opponent’s goods. These goods have different producers, natures, purposes and methods of use, and they are neither complementary nor in competition. There is no overlap between the relevant sections of the public for the trade marks in dispute. Each trade mark targets a different type of public. While the contested goods target manufacturers of various electronic goods, the earlier trade mark was found to have a reputation only among the end consumers of horological and chronometric instruments. Given that the public for the contested trade mark is completely distinct from the relevant section of the public among which the earlier trade mark enjoys a reputation, they are clearly dissimilar and also no association will be made between the signs. The contested trade mark would not bring the earlier trade mark to the mind of the relevant consumer.

The contested batteries, electric are not commonly produced by manufacturers of horological and chronometric instruments. Batteries for the opponent’s goods are standard and not tailor-made for or by watchmakers. The contested goods and the opponent’s goods have different natures, purposes and methods of use; they are not in competition, and have different usual origins. They are therefore dissimilar. Furthermore, although the symbol Ω, in relation to batteries, might not be associated with a specific meaning by all consumers, it is likely to be associated with electrical resistance at least by some, and is therefore weak in relation to these goods. Consumers would in this case pay more attention to the verbal element of the contested sign, which bears very little resemblance to the opponent’s reputed mark Ω. Therefore, although the signs would still have some similarities, this would not necessarily mean that the relevant public would be likely to establish a link between them. In fact, the contested trade mark would be unlikely to bring the earlier trade mark to the mind of the average consumer.

The contested downloadable image files have no notable points of contact with the goods for which the opponent’s sign is reputed. Downloadable image files are computer-generated data files accessible online, while the goods for which the opponent’s mark is reputed are sophisticated technical goods. The goods at issue have different natures, purposes and methods of use; they are not complementary or in competition and they usually have different origins and target different publics. Furthermore, they have completely divergent distribution channels. They are, therefore, dissimilar. While the relevant section of the public for the goods covered by the conflicting marks could overlap to some extent (as it is the general public), the goods are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Therefore, it is not plausible that the public would be reminded of the earlier reputed mark when purchasing the contested goods bearing the contested sign.

Although the earlier trade mark enjoys a reputation for certain goods, the degree of the earlier mark’s reputation, as demonstrated by the opponent, does not imply that it is of such a strength that it would produce effects beyond the relevant market sector and trigger a link between the signs in a completely different area of the economy, such as in the abovementioned industries from which the contested downloadable image files; printed circuit boards and batteries, electric originate. It is unlikely that, when intending to purchase these goods, the relevant public would link these goods with a trade mark that has a reputation for goods in the sector from which horological and chronometric instruments originate.

Although the relevant section of the public for the goods in conflict might overlap to some extent, the goods at issue are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public.

The Opposition Division also notes that the opponent did not submit any specific arguments in relation to the necessary link between the signs in dispute in relation to the contested downloadable image files; printed circuit boards and batteries, electric.

Therefore, taking into account and weighing up all the relevant factors of the present case, 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 contested downloadable image files; printed circuit boards; batteries, electric. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected as far as it concerns these contested goods.

However, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested sign in relation to navigational instruments and radios the relevant consumers will be likely to associate it with the earlier sign, that is to say, 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) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

9. Risk of injury

Use of the contested sign will fall under Article 8(5) EUTMR 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) EUTMR 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’ (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 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.

The opponent claims the following:

• The ‘OMEGA’ trade mark has a very strong reputation and it is tempting to take advantage of it, owing to the great value it incorporates. The attractiveness of the ‘OMEGA’ trade mark cannot be denied, and the applicant will benefit from the attractiveness of the earlier right by affixing on its goods a sign that is widely known on the market, thus misappropriating its attractive power and advertising value.

• The applicant will free-ride on the opponent’s investment in promoting and building up goodwill for its mark.

• The ‘OMEGA’ trade mark possesses a very strong distinctive character. Therefore, it is more tempting for the applicant to try to benefit from its value and easier to associate it with the previous trade mark, as such a mark will be recognised in almost any context, exactly because of its outstanding distinctiveness.

• Unfair advantage must be the consequence of an association between the conflicting marks in the minds of the public, made possible by the similarities between the marks and enhanced by the reputation of the earlier sign.

• ‘OMEGA’ has acquired not only a high degree of recognition amongst consumers, but also an excellent and very special reputation, in the sense that it is foreseeable in the ordinary course of events.

The opponent also claims, regarding the detriment to the distinctiveness and the reputation of the ‘OMEGA’ mark, the following:

• The trade mark ‘OMEGA’ possesses an exclusive character, in the sense that it is associated by the consumers with a single source of origin. The distinctiveness of the ‘OMEGA’ trade mark will be detrimentally affected, since the public will cease to associate it with a given range of high-quality products originating from a single source and start associating it with different goods, having a different origin. Such an association will dilute the ‘OMEGA’ trade mark’s ability to identify a single undertaking and is likely to diminish its capacity to stimulate the desire of the public to buy the products for which it is registered.

• The contested EUTMA is a parasitic mark, which may deprive the ‘OMEGA’ trade mark of its distinctive character and therefore of its attractiveness.

• The use of the contested EUTMA is likely to devalue the image and the prestige that ‘OMEGA’ has acquired among the public, since any use for goods other than the exclusive and high-quality ‘OMEGA’ products is incompatible with the special image ‘OMEGA’ has gained due to the promotional and sponsorship efforts of its owner. The EUTMA could be used for goods of lesser quality, or that are incompatible with the special quality or image associated with the earlier trade mark ‘OMEGA’.

In other words, the opponent claims that the 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 and repute of the earlier trade mark.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods, for which a link between the signs would be established:

Class 9: Navigational instruments; radios.

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

Class 14: Horological and chronometric instruments.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR 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 (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following. The applicant will benefit from the attractiveness of the earlier right by affixing on its goods a sign that is widely known on the market, thus misappropriating its attractive power and advertising value; furthermore, the applicant will free-ride on the opponent’s investment in promoting and building up goodwill for its mark. Unfair advantage must be the consequence of an association between the conflicting marks in the minds of the public, made possible by the similarities between the marks and enhanced by the reputation of the earlier sign.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(Judgment of 27/11/2008, C‑252/07, ‘Intel Corporation’, § 36.)

The Opposition Division points out, that although the goods were dissimilar in the sense that there would be no likelihood of confusion under Article 8(1)(b) EUTMR, there is still an overlap between the publics targeted by these goods. The opponent’s goods in Class 14 target the general public, as do the contested goods in Class 9. The contested goods are precision instruments (navigation instruments) that can be used by the same public targeted by the opponent’s goods (e.g. nautical navigators) or devices (radios) that, in the marketplace, frequently have the same function as the opponent’s goods (e.g. radio clocks). These contested goods have a technical nature and the expectations of the public towards these goods may include reliability, durability and other technical aspects of the goods. These aspects are the same as those required of the opponent’s goods in Class 14.

Furthermore, the opponent has demonstrated that its ‘OMEGA’ brand has in particular been promoted in relation to sporting events and has established its image as a brand offering high-quality products for the purposes of timekeeping. Therefore, there is an additional connection between the goods in conflict, since timekeeping is an important aspect of sports, in which navigation can play an important role (e.g. in sailing).

If the opponent’s Ω mark were connected with these goods, it might be that, due to the link between the signs, the image of high-quality timekeeping products would be transferred to these goods and the applicant would gain an unfair advantage. The applicant could benefit from the attractiveness of the earlier right by affixing on its goods a sign that is similar to the opponent’s mark, which is widely known in the market, thus misappropriating its attractive powers and advertising value or exploiting its reputation, image and prestige.

Therefore, the Opposition Division considers that the contested trade mark might indeed have an unfair advantage as a result of the positive image of high quality conveyed by the earlier mark, which arises from the substantial use of the earlier mark during almost a century, as well as from the opponent’s promotional efforts.

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.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

10. Conclusion

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

Class 9: Navigational instruments; radios.

In relation to its earlier international trade mark registration No 771 474 for the figurative mark , the opponent also invoked Article 8(1)(b) EUTMR. However, as stated above in section h), the rest of the contested goods, namely downloadable image files; printed circuit boards; batteries, electric, are dissimilar to the goods of the opponent. 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.

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Ric WASLEY

Vita VORONECKAITE

Solveiga BIEZA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.