OPPOSITION No B 2 915 034

Ladbible Group Limited, 20 Dale Street, Manchester M1 1EZ, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, Cambridge CB25 9PD, United Kingdom (professional representative)

a g a i n s t

nyheter365 AB, Birger Jarlsgatan 43, 111 45 Stockholm, Sweden (applicant), represented by Advokatfirma DLA Piper Sweden KB, Kungsgatan 9, 103 90 Stockholm, Sweden (professional representative).

On 23/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 915 034 is upheld for all the contested services.

2. European Union trade mark application No 16 430 407 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 16 430 407 for the word mark ‘LAUGH BIBLE’, namely against all the services in Classes 35, 41 and 42. The opposition is based on, inter alia:

(1) European Union trade mark registration No 12 158 713 for the word mark ‘The LAD Bible’;

(2) European Union trade mark registration No 13 065 024 for the word mark ‘The SPORT Bible’;

(3) European Union trade mark registration No 14 266 531 for the word mark ‘The GAMING Bible’;

(4) European Union trade mark registration No 15 216 047 for the word mark ‘The FOOD Bible’.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to the above listed registered trade marks, Article 8(1)(a) and/or (b) and Article 8(5) EUTMR in relation to further invoked registered trade marks and Article 8(4) EUTMR in relation to non-registered marks invoked.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant contested in its observations that the opponent had shown sufficient proof of use of its registered and unregistered trade marks on which the opposition is based.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use.

For the sake of completeness, the Opposition Division points out that even if the applicant´s statement was to be treated as a proof of use request (quod non, as explained above), it would have been inadmissible because it was not submitted by way of a separate document as required by Article 10(1) EUTMDR and, moreover, the opponent´s earlier registered trade marks were still in the 5-years grace period.

Finally, as regards the opponent´s non-registered marks, it is to be clarified that it results from the wording of Article 47(2) and (3) EUTMR that proof of use can only be requested if the earlier right is an EUTM or other trade mark having effect in the EU or an EU Member State, as defined in Article 8(2)(a) EUTMR. Since oppositions brought under Article 8(4) EUTMR cannot be based on either EUTMs or other trade marks referred to in Article 8(2)(a) EUTMR, the EUTM applicant is not entitled to request proof of use for earlier rights relied upon in oppositions brought under this provision. To the extent that the applicant was referring to proof of use of more than mere local significance in the framework of Article 8(4) EUTMR, these arguments will be addressed at a later point, if necessary.

REPUTATION — ARTICLE 8(5) EUTMR

The Opposition Division deems it appropriate to first examine the opposition in relation to earlier EUTM No 12 158 713, ‘The LAD Bible’, for which the opponent claimed repute in the EU.

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 mark

According to the opponent, the aforementioned earlier trade mark ‘The LAD Bible’ has a reputation in the European Union.

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 03/03/2017 (with no priority claimed). Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9: Publications in electronic format; downloadable publications; downloadable electronic publications; online electronic publications downloadable from the Internet; publications in electronic form supplied online from databases or from facilities provided on the Internet (including web sites); electronic magazines; multi-media recordings and publications; printed publications in electronically readable form; computer software and programs; computer games; downloadable software; computer software downloadable from the Internet; application software; application software for mobile communication devices; data recorded in electronic, optical or magnetic form; data carriers; data storage media; memory cards; audio and/or video recordings; downloadable and streamable audio and/or video recordings; pre-recorded videos, CDs, CDIs, CD-ROMs, discs, cassettes and other data carriers containing information recorded in magazine form; eyewear; glasses; spectacles; sunglasses; lenses; frames for spectacles and sunglasses; cases and boxes for spectacles and sunglasses; cords, straps and chains for spectacles and sunglasses; magnets; digital photograph frames; covers and cases for mobile phones, computers and personal electronic devices.

Class 16: Printed matter; printed publications; magazines; journals; periodical publications; newspapers; books; newsletters; leaflets; pages downloaded from the Internet (in paper format); printed programmes; guides; charts; maps; tickets; printed forms; certificates; gift vouchers; catalogues; photographs; prints and pictures; posters; trading cards; collectors' cards; stickers; transfers; decalcomanias; stencils; diaries; calendars; address books; albums; envelopes; labels; folders; binders; note books; paper; cardboard; paper articles; cardboard articles not included in other classes; stationery; writing implements; pens; pencils; cases, boxes and holders for pens and pencils; bookmarks; bookends; paperweights; cards; greeting cards; wrapping and packaging materials; gift wrap and packaging paper; gift bags and bags for packaging; gift tags; paper table linen; beer mats; paper flags and pennants; paper banners.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising services; advertising via the Internet; provision of advertising space; provision of space on web sites for advertising goods and services; promotional and marketing services; operation and supervision of membership schemes; electronic data storage; data processing; retail services and online retail services connected with the sale of toiletries, cosmetics, hair care products, fragrances, badges, signs, plaques, ornaments, works of art, money boxes, key chains, penknives, publications in electronic format, downloadable publications, downloadable electronic publications, online electronic publications downloadable from the Internet, publications in electronic form supplied online from databases or from facilities provided on the Internet (including web sites), electronic magazines, multi-media recordings and publications, printed publications in electronically readable form, computer software and programs, computer games, downloadable software, computer software downloadable from the Internet, application software, application software for mobile communication devices, data recorded in electronic, optical or magnetic form, data carriers, data storage media, memory cards, audio and/or video recordings, downloadable and streamable audio and/or video recordings, pre-recorded videos, CDs, CDIs, CD-ROMs, discs, cassettes and other data carriers containing information recorded in magazine form, eyewear, glasses, spectacles, sunglasses, lenses, frames for spectacles and sunglasses, cases and boxes for spectacles and sunglasses, cords, straps and chains for spectacles and sunglasses, magnets, digital photograph frames, covers and cases for mobile phones, computers and personal electronic devices, jewellery, clocks, watches, watch straps, key rings, trinkets and fobs, ornamental pins, cufflinks, tie pins and tie clips, printed matter, printed publications, magazines, journals, periodical publications, newspapers, books, newsletters, leaflets, pages downloaded from the Internet (in paper format), printed programmes, guides, charts, maps, tickets, printed forms, certificates, gift vouchers, catalogues, photographs, prints and pictures, posters, trading cards, collectors' cards, stickers, transfers, decalcomanias, stencils, diaries, calendars, address books, albums, envelopes, labels, folders, binders, note books, paper, cardboard, paper articles, cardboard articles not included in other classes, stationery, writing implements, pens, pencils, cases, boxes and holders for pens and pencils, bookmarks, bookends, paperweights, cards, greeting cards, wrapping and packaging materials, gift wrap and packaging paper, gift bags and bags for packaging, gift tags, paper table linen, beer mats, paper flags and pennants, paper banners, bags, cases, articles of luggage, wallets, purses, credit card cases and holders, keycases, umbrellas, tableware, glassware, drinking vessels, cups, mugs, bottle openers, corkscrews, flasks, models, photograph frames, textiles, household textile articles, textiles for making articles of clothing, table linen, bed linen, towels, clothing, footwear, headgear, fashion accessories, buckles, lanyards for wear, games and playthings, toys, gymnastic and sporting articles, whistles, playing cards, confetti, balloons, party novelties, food products, confectionery, snack foods, drinks, matches and lighters; information, advisory and consultancy services relating to all of the aforesaid services.

Class 38: Telecommunications; communications services; broadcasting services; webcasting services; podcasting services; broadcasting via the Internet and other computer and communication networks; electronic communications services; broadcasting, transmission, reception and other dissemination of text, messages, information, data, sound and images; providing a multimedia content and video sharing portal; electronic transmission of data, messages and information; receiving and exchanging of information, text, sounds, images, data and messages; communications by and/or between computers and computer terminals and computer networks; retrieval, provision and display of information from a computer stored databank; provision of access to computer databases in the fields of social networking and online communities; electronic display of information, text, images, messages and data; online communication services; chat room services; provision of online forums for communication on topics of general interest; online forums relating to education and entertainment, music, fashion, films, food, careers, women, travel, sports, adventure and lifestyle; provision of online community forums for uploading, posting, storing, displaying, sharing, watching, viewing, playing, editing, downloading, receiving, electronically transmitting or otherwise providing electronic media, multimedia content, audio and video content, movies, music, games, photos, images, pictures, graphics, text, messages, information, data, news and user-generated content via the Internet and other computer and communication networks; information, advisory and consultancy services relating to all of the aforesaid services.

Class 41: Entertainment services; education services; sporting and cultural activities; online education entertainment services; entertainment services provided via the Internet and other computer and communications networks; entertainment services featuring electronic media, multimedia content, audio and video content, movies, music, games, photos, images, pictures, graphics, text, messages, information, data, news and user-generated content provided via the Internet and other computer and communication networks; presentation of data, messages and documents for entertainment purposes; interactive information provided online via the Internet and other computer and communication networks, relating to education and entertainment, music, fashion, films, food, careers, women, travel, sports, adventure and lifestyle; provision of entertainment information for accessing via communication and computer networks; providing non-downloadable electronic publications; providing online publications (not downloadable); providing online non-downloadable magazines; production of video recordings and sound recordings; production of webcasts; production of podcasts; publishing services; publication of magazines, books, texts and printed matter; publishing by electronic means; digital video, audio and multimedia entertainment publishing services; provision of audio and/or visual material and games online (not downloadable); arranging, organising and conducting of games, contests, competitions, quizzes, awards, conferences, exhibitions, courses, seminars and events; organising, conducting and production of shows, displays and parties; arranging, organising, presentation and provision of concerts, live entertainment, musical performances; arranging and conducting award ceremonies; presentation of awards for achievement; arranging, organising and conducting of events for cultural and sporting purposes; organisation of sporting competitions and sports events; gaming services; information, advisory and consultancy services relating to all of the aforesaid services.

Class 42: Providing online non-downloadable software; providing non-downloadable software to enable uploading, posting, storing, displaying, sharing, watching, viewing, playing, editing, downloading, receiving, publishing, distributing, streaming, reproducing, electronically transmitting or otherwise providing electronic media, multimedia content, audio and video content, movies, music, games, photos, images, pictures, graphics, text, messages, information, data, news and user-generated content via the Internet and other computer and communication networks; providing non-downloadable software to enable sharing of online content among users; providing temporary use of non-downloadable software applications for social and community networking; hosting online web facilities for others; hosting multimedia content for others; hosting electronic facilities for others for organising online groups and events, participating in online meetings and discussions, and enabling online community and social networking; website hosting and design services; maintenance of websites; information, advisory and consultancy services relating to all of the aforesaid services.

The opposition is directed against the following services:

Class 35: Advertising, marketing and promotional services; Commercial trading and consumer information services; Business assistance, management and administrative services; Business analysis, research and information services; Office functions; Advertising; Publicity services; Advertising agencies; Direct marketing; Graphic advertising services; Rental of advertisement space and advertising material; Advertising research; Consultations relating to business advertising; Advertising and marketing; Consultations relating to business advertising; Compilation of advertisements; Advertising, including on-line advertising on a computer network; Consultancy relating to advertising; Consultancy relating to advertising; Writing of publicity texts; Publication of publicity texts; Investigations of marketing strategy; Market research and business analyses; Business inquiries; Marketing studies; Market research and marketing studies; Marketing forecasting; Market campaigns; News clipping services; On-line promotion of computer networks and websites; Sales promotion, advertising and marketing via on-line websites; Search engine optimisation; Providing marketing consulting in the field of social media; Dissemination of advertising for others; Compilation, production and dissemination of advertising matter; Commercial information research studies; Providing advertising space in periodicals, newspapers and magazines.

Class 41: Tuition; Entertainment; Entertainment information; Sporting activities; Cultural activities; News report services; News reporters services; Production of documentaries, live entertainment, training films, radio programmes, television programmes and other audiovisual recordings; Education for radio and television; Tuition; Education; Sporting and cultural activities; Publishing services; Providing electronic publications; Publishing of electronic publications; Electronic text publishing services; Publication of texts; Writing of texts, other than publicity texts; Comedy club services; Live comedy shows; Production of comedy shows.

Class 42: Science and technology services; Research services; Design services; Graphic arts design; Illustration services (design); Commercial design services; Industrial analysis services; Software design and development; Design and development of computer hardware and software; Web site design and creation services; Hosting of websites; Creating, designing and maintaining web sites; Creation, design, development and maintenance of websites for others; Design, creation, hosting and maintenance of Internet sites for others; Managing the web sites of others.

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.

The opponent submitted evidence to support its claim on 12/02/2018. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists of, inter alia, the following documents:

Witness Statement of the opponent’s Head of Finance dated 12/02/2018 providing information on the opponent´s background and company structure (including companies within the group). It is explained that the opponent is a publisher of online news and entertainment consisting of diverse range of original and user-created content (viral content, editorial content, documentaries, videos and live streaming all of which are published across online and social media platforms). According to the Witness Statement, the opponent is the owner of a significant portfolio of trade marks all containing the common sequence and formulation of the elements of a noun plus the word BIBLE. The portfolio first commenced with the launch and use of LAD BIBLE and now includes a family of more than 13 marks (including LAD BIBLE, SPORT BIBLE, GAMING BIBLE, etc.). Prior to March 2017 the family of marks were prefixed with the word ´THE´ (i.e., THE LAD BIBLE, THE SPORT BIBLE, etc.) but the opponent undertook a rebranding exercise to remove the word ‘THE’ in recognition of the daily interactions demonstrating that the opponent´s followers were in the habit of dropping it when referring to the opponent´s portfolio of brands. The Witness Statement contains data in relation to the presence of the family of marks on the internet and, in particular, in social media. Furthermore, the opponent provides information as to content and brand campaigns (featuring, inter alia, celebrities) and to its sponsorship of a local football club. According to the Witness Statement, the opponent´s activities and campaigns are regularly featured in the press and receive a great exposure by way of external media coverage. Moreover, the opponent and its founders have received a number of awards and members of the opponent´s team have attended and have been invited to a number of media events and conferences in the UK and Europe. The Witness Statement provides information on the opponent´s annual turnover in the UK in the five years preceding the filing date of the contested application and indicates figures as to numbers of followers and market share (including data with respect to its largest competitors in the UK) across the three biggest social media platforms (Facebook, Instagram and Twitter). It is maintained that on the basis of the significant creative and financial investment made the opponent has developed a huge reputation in relation to the provision and publication of online news and entertainment media content throughout the EU and that the family of marks have been consistently advertised and promoted by the opponent in a number of ways (a breakdown of the opponent´s expenditure on advertising in the years preceding the filing date of the contested application is included in the Witness Statement). The Witness Statement further provides information on the content of each of the exhibits (marked from CD-1 to CD-52) that are attached thereto, in particular:

• Exhibit CD-1: Extracts from the online Register of Companies House with regard to nine limited companies within the opponent´s group in the United Kingdom.

• Exhibit CD-2: Extracts of media articles published on the internet (www.itsnicethat.com, www.thedrumcreativeawards.com, www.profilicnorth.co.uk, www.designweek.co.uk and www.thedrum.com) publicising the opponent’s rebrand campaign of March 2017 and mentioning, inter alia, that Lad Bible is ‘one of the largest media outlets in the UK’, that ‘[t]he rebrand has been rolled out across all LadBible’s digital touchpoints, including its website and social media channels. LadBible was founded in 2011 and now has 50 million social media followers’, making references to The Lad Bible as ‘one of the UK’s fastest growing news and entertainment publishers’ and reporting that ‘[t]he new identity is ‘lad’ to the core, focusing on the aspirational side of what ‘lad’ means today – having a laugh, drinking, gaming and sports for sure – but also being politically aware and socially conscious’. The articles include following signs: , LadBible, The Lad Bible and .

• Exhibits CD-3 to CD-11: evidence in relation to the use of LAD BIBLE, namely Facebook screenshots evidencing the creation of the LADbible social media account in 2011, that in 2017 THE LAD BIBLE Facebook page had more than 21 million followers; printout dated 24/11/2017 with Facebook statistics showing the number of followers of the page in the UK; Twitter and Instagram extracts as well as statistics showing the numbers of followers (including historical graphs as from 2016 resp. 2014); WHOIS extracts evidencing the registration of the domains www.theladbible.com and www.ladbible.com in 2011; Google Analytics screenshot showing the visits for the period 01/02/2012 – 03/03/2017 of the website www.theladbible.com from UK audience (the visits from the UK between 01/02/2016 and 29/02/2016 and between 01/11/2016 and 30/11/2016 are also provided); Extract from Alexa UK Rankings (an independent agency which lists the most popular websites worldwide) showing that as at 18/11/2016 the site theladbible.com was the 13th most visited site in the UK.

• Exhibits CD-12 to CD-17: evidence in relation to the use of SPORT BIBLE, namely Facebook and Tweeter screenshots evidencing the creation of the SPORTbible social media accounts in 2011 (Twitter) and in 2013 (Facebook); printout dated 24/11/2017 with Facebook statistics showing the number of followers of the page from the UK; Google Analytics showing the visits for the period 01/02/2012 – 03/03/2017 of the website www.thesportbible.com from the UK (the visits from the UK between 01/02/2016 and 29/02/2016 are also provided); WHOIS extracts evidencing the registration of the domains sportbible.com (in 2000) and thesportbible.com (in 2012). According to the Witness Statement, the site was launched specifically to form a sister site to LAD BIBLE, in order to exclusively provide sports related entertainment content and this was the first step taken by the opponent in expanding LAD BIBLE into a family of marks. Extract from Alexa UK Rankings showing that as at 19/11/2016 the site Thesportbible.com was the 40^th most visited site in the UK. The evidence includes following signs: , SPORTBible, , .

• Exhibits CD-22 to CD-24: evidence in relation to the use of FOOD BIBLE, namely WHOIS extracts evidencing the registration of the domain thefoodbible.co.uk (in 2014); Facebook and Instagram screenshots evidencing the creation of the FOODbible social media accounts in 2015; printout dated 24/11/2017 with Facebook statistics and further Facebook statistics as at 08/02/2018, both printouts showing the number of followers of the Facebook page from the UK. According to the Witness Statement, the Facebook channel was launched to exclusively provide food related entertainment content. The evidence includes following signs: , , FOODBible.

• Exhibits CD-31 to CD-32: evidence in relation to use of LENS BIBLE, namely WHOIS extracts evidencing the registration of the domains lensbible.com (in January 2017) and thelensbible.com (in January 2016); Facebook and Instagram screenshots evidencing the creation of the LENSbible social media accounts (in 2016) as well as statistics showing the number of followers of the Facebook page from the UK as at 08/02/2018 and the number of followers of the Instagram account in total as at 26/02/2017 and as at 06/02/2018 (with historical data from 2016 as well). According to the Witness Statement, THE LENS BIBLE Instagram channel was launched by the opponent to exclusively provide photography related content. The evidence includes following signs: , , LENSbible.

• Exhibits CD-33 to CD-34: evidence in relation to the use of CONTENT BIBLE, namely WHOIS extracts evidencing the registration of the domain contentbible.com (in 2015); Facebook screenshots evidencing the creation of the CONTENTbible social media account (in January 2016) as well as statistics showing the number of followers of the Facebook page from the UK as at 08/02/2018 (in the Witness Statement it is explained that the intention of this channel was to promote the services B2B rather than to build audience). According to the Witness Statement, the opponent launched THE CONTENT BIBLE to exclusively provide content licencing services. The evidence includes following signs: , , CONTENTbible.

• Exhibits CD-35 to CD-36: evidence in relation to the use of STUDENT BIBLE, namely WHOIS extracts evidencing the registration of the domain thestudentbible.co.uk (in 2012); Facebook screenshots evidencing the creation of the STUDENTbible social media account (in 2015) as well as statistics showing the number of followers of the Facebook page from the UK as at 08/02/2018. According to the Witness Statement, the opponent launched THE STUDENT BIBLE as a Facebook channel to exclusively provide university related entertainment content. The evidence includes following signs: , , STUDENTbible.

• Exhibits CD-37 to CD-38: evidence in relation to the use of SCIENCE BIBLE, namely WHOIS extracts evidencing the registration of the domains thesciencebible.co.uk and thesciencebible.com (in 2015); Facebook screenshots evidencing the creation of the SCIENCEbible social media account (in March 2016) as well as statistics showing the number of followers of the Facebook page from the UK as at 08/02/2018. According to the Witness Statement, the opponent launched THE SCIENCE BIBLE as a Facebook channel to exclusively provide science related entertainment content. The evidence includes following signs: , , etc.

• The opponent has provided also further evidence (similar in structure and content as the above described evidence) in relation to further earlier marks, namely THE GAMING BIBLE, THE ODDS BIBLE, THE LASS BIBLE (rebranded to PRETTY52), THE FACTS BIBLE and FOOTBALL BIBLE.

• Exhibits CD-42: Extract from www.indexmundi.com showing that the population of the UK as at July 2016 was 64,430,428 and providing information on the UK demographics profile as at July 2016.

• Exhibit CD-43: evidence with regard to campaigns undertaken by the opponent with third parties, namely:

• Facebook screenshots from July 2016 from the campaign in partnership with RNLI on their ‘Respect the Water’ campaign which aimed to create awareness of the dangers of the UK coastline;

• An article posted on www.RT.com published on 20/07/2016 referring to original live content commissioned by the opponent and entitled ‘Last Lolly Standing’. In the article it is reported that 4.1 million people tuned in to watch ‘the epic battle of the ice lollies’ to the video and states: ‘At one point, the feed had over 80,000 live viewers who held on for 36(!) minutes to see which ice-cream would emerge victorious.’

• Facebook screenshots showing two videos (commissioned by the opponent) published in June 2016 starring Dwayne ‘The Rock’ Johnson and Kevin Hart. The videos were viewed 45 million times on Facebook.

• An article posted on www.omdukblog.com on 11/08/2015 entitled ‘Doritos and TheLADbible set to inspire a bold summer’ and reporting on a collaboration between the opponent with Doritos to launch a campaign called THE SUMMER BIBLE which began with a 12-hour holiday challenge to Ibiza.

• Exhibit CD-44: Screenshots from the opponent’s website and an article dated 13/09/2016 published on www.thirdsector.co.uk reporting on the mental health campaign launched by the opponent and called ‘U OK M8?’ to raise awareness of male mental health issues. It was supported by the Movember Foundation, the Samaritans, the Mental Health Foundation and the Campaign Against Living Miserably (CALM). The campaign featured Louis Smith, Olympic gymnast, talking about his experiences with depression, a film about Andy’s Man Club (a Halifax based men’s group), as well as editorial content.

• Exhibit CD-45: An article dated 06/07/2015 published on www.thedrum.com and evidencing the sponsorship by the opponent of a UK local non-league football club (Manchester's Hyde United) in 2015.

• Exhibit CD-46: Samples of press articles, as follows:

• An article dated 22/09/2016 published on www.thedrum.com, entitled, ‘The Lad Bible hires 16-year-olds in its newsroom to understand the next phase of digital media’. In the article reference is made to ‘a company which now claims to generate more eyeballs across its multiple digital platforms and brands than any other publisher in Europe’ and ‘with 15.9 million Facebook followers and an Alexa ranking of 14th biggest website in the UK, recently overhauling Mail Online to become the nation’s biggest content site behind the BBC.’ It is also mentioned that the ‘community of readers that the Lad Bible is trying to create – across a portfolio of powerful and growing brands that also includes the Sport Bible, the Food Bible, the Gaming Bible and female-orientated Pretty 52 – has a different sensibility’. Furthermore, it is reported that ‘the Lad Bible’s brands are strong across a range of social media platforms. It has launched the photography-focused the Lens Bible as its first Instagram-only brand. The combined strength of the portfolio is extraordinary, with the Sport Bible having 8.6 million followers on Facebook (and matching Trip Advisor for UK audience), while Pretty 52 attracts comparable traffic levels to the Sun (according to Alexa statistics) and is more popular on Facebook than Cosmopolitan.’ Moreover, the article quotes opponent’s representatives who was emphasising ‘the group’s expertise in data science and analytics, allowing it to offer commercial clients unique insight into the attitudes of a huge swathe of the youth audience. The ‘UOKM8?’ work, and a Brexit-related campaign called Knowing Me, Knowing EU (which was responsible for tens of thousands of young people registering to vote), have involved considerable polling and data gathering.’ In relation to the opponent’s revenues it is explained that the Lad Bible Group has a range of revenue streams, from programmatic advertising to branded content (clients range from the RNLI to film studios and snack brands such as Doritos and Domino’s) and that it licenses some of its own content and makes money from syndicating material from third parties on its sites; furthermore, it uses data capture to serve clients with insights into the youth audience.

• An article dated 30/03/2016 and published by The Guardian, entitled ‘Cosmo and Lad Bible reach new audiences through social’ reports on the 2016 Guardian Changing Media Summit (wherein The Washington Post, Cosmopolitan, the Guardian and The Lad Bible shared their experiences of using social channels to widen distribution and find new audiences). It is mentioned that ‘The Lad Bible has just launched an Instagram-only community aimed at budding photographers. Less than a month after launch the Lens Bible has more than 139,000 followers, nearly half the number of the Getty Images Instagram account.’

  • An article published on 01/09/2016 on CNBC and titled, ‘With 3.1 billion views, this site is going after BuzzFeed, Vice’. Reference is made to TheLADbible as to ‘ “the number one most watched media property in Europe” according to Press Gazette, and a credible rival to the “big boys” ’. Within the article, the opponent’s chief operating officer is quoted in claiming, ‘we’re actually the biggest video provider in Europe right now’.

• An article dated 17/08/2016 and published on www.pressgazette.co.uk, titled: ‘Lad Bible ranks as Europe’s ‘most watched’ for video content’. In the article it is mentioned that ‘Tubular Labs’ July rankings of top online video creators and brands put the UK-based company, which publishes irreverent news and entertainment stories, ahead of BBC Worldwide, Daily Mail, Sky and the RTL Group’ and that the site is ‘followed by half of all UK men aged 18 to 24 and almost a quarter of UK women aged 18 to 24’. Moreover, it is indicated that, globally, the Lad Bible was the third most watched media property behind Buzzfeed and Time Warner. Reference is made also to The Lad Bible Group’s nine content brands including the Lad Bible, Sport Bible, Gaming Bible, and Food Bible. According to the article, all of these brands together recorded nearly four times more views than BBC Worldwide’s 322 publisher channels.

• An article dated 21/12/2016 and published on www.somersetlive.co.uk is titled ‘The Grand Tour: LAD Bible’s Cheddar video is watched by 750,000 people, and they love Roger Wilkins’ and refers to LAD Bible’s Hidden Britain Tour in which it visited Cheddar in Somerset.

• An article dated 01/02/2016 published on www.business-reporter.co.uk, titled ‘#DCS2016: How The LAD Bible became one of the UK’s most-visited websites’. The article confirms that ‘[t]hrough producing content which is engaging and shareable, The LAD Bible, established in May 2012, has come out of nowhere to be the eleventh most-visited website in the UK, according to data analytics website Alexa.’

• An excerpt from the Wall Street Journal blog dated 29/04/2015 providing a list of the top publishers for Facebook videos with the Lad Bible listed as number one with 1.6 billion views per month and with ‘second-place finisher’ being its ‘sister site’: The Sport Bible, with 921 million views per month.

• An article published on www.virgin.com in 2016, titled ‘Inside The LADbible guide to disruption’ and referring to The LADbible as to a ‘publishing phenomenon’. According to the article, the site ‘targeted at 16-30-year-olds, has a Facebook and Twitter following of more than 18 million, nearly triple that of other major newspaper brands’ and it was also ranked top for Europe’s most watched video content, ahead of the BBC and Sky.

• An article published on www.fasttrack.co.uk and titled ‘The Sunday Times Tech Track Ones to Watch’. It is described as a showcase of companies that do not meet the criteria of the Tech Track 100 league table but have either raised significant venture capital investment or are forecasting for strong sales growth. The LAD Bible is on the 2016 and 2017 list, with impressive annual sales numbers and growth figures indicated.

• An article dated 17/08/2016 and published on www.wired.com, titled, ‘How TheLADbible became the online voice of a generation’, mentions that ‘TheLADbible is the world’s fastest-growing news site for young men’. The article refers to a meeting between David Cameron and 40 people from technology startups, at which they were encouraged to persuade young people to register to vote in the EU referendum and reads: ‘Civil servants considered TheLADbible influential, as its 13.5 million Facebook followers included more than half of the UK’s 18-24-year-old men.’ The article also mentions TheLADbible and its spin-off sites - TheSPORTbible, TheODDSbible, TheLENSbible, TheGAMINGbible, TheFOODbible, TheLADbible OZ and women's site Pretty52. It is also explained that each platform has its own editorial team, including technologists and data scientists and reference is also made to an astrophysics graduate who established TheLADbible's data science department.

• Exhibit CD-47: An article dated 05/02/2015, published by BBC, titled ‘How did The Lad Bible become so successful?’. The article mentions that the site is the 12^th most popular website in the UK, ‘above more established resources such as LinkedIn, PayPal and the Guardian’ and also makes reference to a ‘sister site’, the Sport Bible. It is also commented that the ‘ability to attract clicks has made the Lad Bible highly sought after by advertisers. BuzzFeed reported it made more than £1m a year from advertising.’

• Exhibit CD-48: An article from The Independent dated 20/11/2015, titled: ‘The Lad Bible: How a media success story has harnessed social media to fill the void left by lads’ mags.’ It reports on the ‘media success story that has captured the attention of half of all British males aged 18 to 24’ and explains that staff at The LadBible’s office specialise in social media platforms; Facebook, Twitter, Snapchat, Instagram, Vine, YouTube. The article also reports on the release of apps on Apple TV and for iOS platforms. It is also mentioned that the brand has expanded to include TheSportBible which has more than seven million followers on Facebook.

• Exhibit CD-49: evidence in relation to awards won by the opponent, namely Digital Entrepreneur Awards in November 2015 for Social Media Campaign of the Year (medium/large) (as reported on www.manchestereveningnews.co.uk where The LAD Bible was referred to as ´content curation and social media phenomenon….. having grown from a single Facebook page to a multi-brand publishing group reaching over 150 million people a week´); Young Digital Entrepreneur of the Year and awarded Technology and Media award to the LADbible founder in 2016 (as reported, inter alia, on www.thebusinessdesk.com where it is further mentioned that ´Judges highlighted the company’s cutting-edge approach, and use of technology and called The LADbible the “ultimate disruptor”´); 2016 Prolific North Awards (Video of the Year Award, the launch of the Ladbible App is also mentioned). A further article of www.mediaweekawards.co.uk provides information on the partnership between The LADbible and Doritos and that Doritos ‘tapped into the LADbible’s significant social and digital presence’ that resulted into a serious increase in sales of Doritos.

• Exhibit CD-50: An article from www.campaignlive.co.uk dated 21/06/2016 reported that The Lad Bible had been shortlisted for its ‘SummerBible’ campaign, at the Cannes Media Lions event (according to the Witness Statement, the Cannes Lions International Festival of Creativity is the world's biggest festival and awards ceremony for the creative and marketing communications, entertainment, design and technology industries).

• Exhibit CD-51: provides screenshots with comparable follower figures for the opponent’s competitors showing an impressive market share of the opponent.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation at least for some of the goods and services for which the opponent has claimed reputation.

It is clear from the evidence that, although the earlier mark was created in 2011, it has been subject to intensive use and it has rapidly become one of the major actors in the field of publication of news, information and entertainment (which includes original and user generated content). The shortcoming in terms of lack of a longstanding use must be viewed in the context of the extremely fast-developing IT market, especially in the online social media sector. It is beyond doubt that despite the relatively short period of use, The LAD Bible is generally known at least in the UK market, where it enjoys a consolidated position among the leading brands. It is attested by diverse independent sources that The LAD Bible is frequently mentioned along with major global players such as BBC and Sky.

The various references to The LAD Bible in press articles, the awards and the evidence in relation to social media followers and website traffic data clearly show the success of the said earlier mark and of the opponent, of its market presence, of its constant expansion and development as well as that The LAD Bible enjoys a high degree of recognition among the relevant public.

The submitted Witness Statements is backed up by the annexed evidence, such as the social media extracts, the statistics and traffic data and, most importantly, press article and awards.

Some of the evidence relates to stylised or slightly altered versions of the earlier mark but all of the social media pages include use in plain text, as do the press articles, the website, published rankings and campaign and sponsorship publicity.

On the basis of the above the Opposition Division concludes that the earlier trade mark ‘The LAD Bible’ has a reputation at least in the United Kingdom. According to Article 8(5) EUTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for EUTM the relevant territory is the European Union. However, the Court has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice. The Court indicated that a EUTM must be known in a substantial part of the EU by a significant part of the public concerned by the goods and services concerned by that trade mark. When evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory (06/10/2009, C-301/07, Pago, EU:C:2009/611, § 29-30). In the present case, it is considered that the reputation of the earlier mark is demonstrated at least throughout the UK which constitutes a substantial part of the EU population. Therefore, reputation is proven in the European Union.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The whole body of evidence relates mainly to publications in electronic format; publications in electronic form supplied online from databases or from facilities provided on the Internet (including web sites) in Class 9 and publication of news, information and entertainment (which includes original and user generated content) covered by the opponent´s specification in Class 41, whereas there is no or little reference, for example, to goods in Classes 16 and 25.

2. The signs

The LAD Bible	LAUGH BIBLE
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).

As reputation was established mainly in the UK, the Opposition Division finds it appropriate to focus the analysis below on the public in the UK.

The conflicting signs are word marks and by definition do not have a dominant (more visually outstanding) element. Furthermore, 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.

The first element of the earlier mark, ‘The’, is an English definite article and will be perceived as fulfilling the purpose of introducing the following word(s) rather than as an indicator of origin. This element will, therefore, not be given much importance in the overall impression of the earlier mark.

The second element of the earlier mark, ‘LAD’, means a young man or boy (see Collins English dictionary online) and the first element of the contested sign, ‘LAUGH’, refers to an instance of laughing; a burst of laughter.

The opponent argues that the element preceding the common component ‘Bible’ of each of the signs (i.e., ‘LAD’ and ‘LAUGH’) is descriptive while the applicant holds that the word ‘Bible’ is descriptive and generic.

As pointed out by the applicant, per se, the word ‘Bible’ may be seen as referring to the holy book on which the Jewish and Christian religions are based (see Collins English dictionary online). If encountered on its own in relation to publications and to education services and similar services, this word will be perceived as referring to the subject matter of the goods and services and will not be seen as particularly distinctive.

Moreover, with a view to the relevant goods and services as well as with a view to the marks as a whole, the Opposition Division concurs with the applicant that this element of the conflicting signs will be indeed rather associated with a book or magazine as being the best and most useful book about a subject (see Collins English dictionary online). However, and contrary to the applicant’s view, in the context of the relevant goods and services and considering the overall impression of the conflicting marks, it cannot be held that the element ‘Bible’ is completely devoid of distinctive character because it is not exclusively descriptive of the relevant goods and services. In this respect, the applicant’s claim that the word would be often used in the media world is not corroborated by any arguments or evidence. Furthermore, along the line of the opponent’s arguments, the word ‘Bible’ was considered distinctive enough to be granted registration as a trade mark for the relevant services in the relevant territory (UK national mark No 3 195 897, also invoked as one of the earlier rights in the present proceedings, that matured to a registered trade mark on 22/03/2019 as verified by the Opposition Division in the online source referred to by the opponent in accordance with Article 7(3) EUTMDR).

Furthermore, when assessed against the relevant goods and services, on their own, also the elements ‘LAD’ (as referring to the content or target audience of publications) and ‘LAUGH’ may be deemed to be of rather limited distinctiveness (e.g. ‘LAUGH’ with regard to some of the services in Class 41 - entertainment and comedy-related services).

In relation to some of the contested services, the distinctiveness of both elements of the mark applied for is normal, since they neither describe nor are related otherwise to any feature of those services (e.g. sporting activities in Class 41).

Nonetheless, account is to be taken of the fact that in the present case the elements lad/laugh and bible are juxtaposed and thus build a semantic unit.

Consequently, conceptually, the combination of the above analysed elements in the earlier mark will be perceived by the relevant public as referring to the best and most useful book (providing you with all you need to know about lads, or providing the lads with everything they need to know). The contested sign, as a whole, will be seen by the relevant public as referring to the best and most entertaining book/the best book that makes you laugh. Since the relevant public will associate both signs with the concept of (a certain kind of) ‘bible’, there is a certain, but lower than average, conceptual similarity.

Visually and aurally, the signs coincide in the element ‘BIBLE’. Furthermore, the elements ‘LAD’ (pronounced /lad/) and ‘LAUGH’ (pronounced /lɑːf/ or /laf/) display further similarities (as they both begin with the letter ‘LA’ and are, moreover, pronounced in one very similar syllable). The differences between the signs are mainly in the first element ‘The’ of the earlier mark (which, as explained above, barely has any impact) and the endings of the elements ‘LAD’ and ‘LAUGH’. Therefore, irrespective of the distinctiveness of the different elements in the signs, they are considered to be similar to at least an average degree.

The signs under comparison are similar in all three aspects of the comparison. Consequently, the examination of the existence of a risk of injury will proceed.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 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.

First, the signs bear certain similarities in all three aspects of the comparison on account of the common element ‘BIBLE’. Even though the Opposition Division has established that the distinctiveness of this element is limited (at least in the earlier mark) and although the inherent distinctiveness of the earlier mark as a whole is considered to be lower than average as it alludes to the likely content or target audience of such goods or services, these issues are largely counterbalanced by the reputation possessed by the opponent for the relevant goods and services.

Moreover, the Opposition Division notes that, in addition to ‘The LAD Bible’, the opponent invoked multiple earlier registered and non-registered trade marks, for example ‘(The) SPORT Bible’, ‘(The) ODDS Bible’, ‘(The) GAMING Bible’, ‘(The) FOOD Bible’, ‘SCIENCE BIBLE’, ‘CONTENT BIBLE’, ‘LENS BIBLE’, ‘STUDENT BIBLE’, etc. which, according to the opponent, form a family of marks with a common structure, namely a common denominator (i.e. ‘Bible’) preceded by a noun which is descriptive of the type of content of the relevant goods/services.

Indeed, the existence of a family of trade marks may be regarded, for the purpose of the application of Article 8(5) EUTMR, as one of the factors to be taken into account in establishing whether there is connection between the contested EUTM and the common element of the family of marks.

The Courts have given clear indications on the two cumulative conditions that have to be satisfied in order to determine whether a family of trade marks exists (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 123-127, confirmed by judgment of 13/09/2007, C-234/06 P, Bainbridge, EU:C:2007:514, § 63).

Firstly, it is required that the proprietor of such a family is able to furnish proof of use of all the marks belonging to the family or, at the very least, of a number of marks capable of constituting a family (i.e. at least three). That test is sufficient to rule out any assessment in the abstract of the existence of a link between the signs, based solely on the existence of several registrations covering marks reproducing the same element, in the absence of any actual use of the marks. Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but must also display characteristics capable of associating it with the series. Association must lead the public to believe that the contested trade mark is also part of the series, that is to say, that the goods and services could originate from the same or connected undertakings.

Normally, the trade marks constituting a ‘family’ and used as such are registered marks. However, and contrary to the applicant’s view, the Opposition Division is of the view that the ‘family of marks’ may include non-registered trade marks as well, since the use of non-registered signs would be one of the factors relevant for the assessment of the consumer perception in the context of the situation on the relevant market.

In the present case, the Opposition Division notes that the evidence submitted by the opponent shows use of a number of trade marks with a common structure – (The) NOUN Bible – for example, (The) SPORT Bible, (The) FOOD Bible, LENS Bible, SCIENCE Bible, etc., which, together with the earlier reputed mark form a family of marks.

The applicant contests the existence of a family of marks and maintains that the element ‘Bible’ cannot be claimed as the common denominator as it would lack distinctiveness. Indeed, an assumption of a family of marks on the part of the public requires that the common denominator of the contested application and the earlier family of marks must have a distinctive character, either per se or acquired through use, to allow a direct association between all of these signs. However, as already set out in the preceding section, the element ‘Bible’ cannot be considered to be non-distinctive and, moreover, account is to be taken of the repute of the earlier mark ‘The Lad Bible’ and the awareness on the market of the opponent’s family of marks.

While the other marks owned by the opponent are obviously less well known than ‘The Lad Bible’ mark, it is clear from the evidence filed by the opponent that it has used many other trade marks with a common structure and the common element ‘Bible’, some of which have also reached a certain degree of recognition amongst the relevant public (see, e.g., the Alexa ranking of the SPORT Bible or references in press articles to the SPORT Bible and the LENS BIBLE, Exhibits CD-12 to CD-17 and CD 46). The material submitted by the opponent – consisting in particular of extracts from the opponent’s websites and social media accounts and press articles – contains numerous indications of the use accrued by the opponent in the ‘Bible’ family of marks, at least in a part of the European Union (the UK) as well as references to ‘sister sites’, ‘spin-off sites’ or ‘a portfolio of powerful and growing brands’.

These common elements (the structure NOUN + Bible) are used in the contested EUTM in an identical position and with the same semantic content. Consequently, the second requirement established in the ‘Bainbridge’ judgment is also fulfilled, since the mark applied for, reproducing the common element of the family of marks, displays such similarities to the marks forming the family, which are likely to lead the consumer to associate the mark applied for with the earlier family of marks.

In the light of the above findings it is likely that consumers who encounter the trade mark ‘LAUGH BIBLE’ in the context of services closely connected to the opponent’s reputed goods and services (i.e. the contested entertainment; entertainment information; news report services; news reporters services; production of documentaries, live entertainment, training films, radio programmes, television programmes and other audiovisual recordings; publishing services; providing electronic publications; publishing of electronic publications; electronic text publishing services; publication of texts; writing of texts, other than publicity texts in Class 41) will be immediately prompted to assume that it is another member of the opponent’s family of trade marks. Furthermore, such a link is also likely in relation to the remaining contested services in Class 41 (relating to sporting and cultural activities, comedy and education/tuition), considering their connections to the opponent’s reputed goods and services (in terms of similar purpose, target public and, to a certain extent, distribution channels). It is to be further taken into account that the opponent uses some of its marks to provide news and content in the same fields and targeting the same public as the above contested services (e.g. the SPORT Bible with sports related content and the opponent’s STUDENT Bible with university related content, see Exhibits 35 and 36). In relation to the contested sporting activities, this conclusion is also supported by the evidence in relation to the opponent’s campaigns and sponsorship of a local football club.

In relation to the contested services in Class 35, it is to be noted that the applicant’s specification in this Class covers services related, generally speaking, to business support and advertising. The Opposition Division is of the view that a certain connection cannot be denied also between these contested services and the opponent’s reputed services. Indeed, advertising on social media is a rapidly growing trend and social media are being extensively used as an advertising medium for businesses. As illustrated by the evidence (for example, in relation to the successful Doritos campaign, see Exhibit CD-49), the online presence of the companies and their products on social networks is already a vital part of their business model. Advertising one's products is increasingly shifting from traditional formats (magazines, TV) to the world of online platforms, databases, social networks. In this respect, it is worth noting that the opponent’s CONTENT BIBLE aims at promoting the services B2B and at exclusively providing content licencing services. Bearing in mind the foregoing, the Opposition Division considers the contested services in Class 35 to be sufficiently close to the opponent’s reputed goods and services, so that consumers make a connection with the earlier reputed mark of the opponent.

The contested services in Class 42 cover a broad range of technology, science, research, information technology (software- and hardware-) and design-related services. In the Opposition Division’s view, an obvious link with the opponent’s reputed goods and services exists also with regard to the contested technology services; software design and development and the services with regard to creation, hosting, managing etc. of websites, the latter servings as means for disseminating the opponent’s publications and content. This conclusion is supported by the evidence provided by the opponent in relation to launching several apps (see Exhibits CD-48 and CD-49).

As regards the remaining contested services in Class 42, even if it is not possible to establish a direct connection with the opponent’s goods and services for which reputation was established, the Opposition Division is of the view that they are not so dissimilar that consumers would be unlikely to establish a mental link between the marks.

The fact that the goods and services designated by the marks at issue belong to distant sectors of trade is not, in itself, sufficient to exclude the possibility of the existence of a link. The specific reputation of the earlier mark and the degree of similarity between the marks could make it possible for the image of the reputed mark to be transferred to the contested mark notwithstanding the distance between the relevant market sectors.

In this respect, account is to be taken of the fact that the image of the opponent’s brand is built up, inter alia, through partnerships and campaigns with third parties and various publications emphasise that the opponent’s success is a result of the expertise in data science and analytics as well as the team of technologists and data scientists, reference is even made to an astrophysics graduate who established TheLADbible's data science department (see Exhibit CD-46). Furthermore, this image and the fact that the opponent belongs to the ‘tech and digital sector’ is also recognised by the Technology and Media award and Digital Entrepreneur award and in different publications the opponent’s ‘use of technology’ is emphasised (see Exhibit CD-49). Moreover, it is clear from the evidence submitted, that the opponent´s reputation extends to the publication of own, original content (for social media, including by means of commissioning of campaigns, etc. by third parties) which necessarily implies research or various types of design services. It is to be further taken into account that the opponent uses some of its marks to provide news and content in the same fields and targeting the same public as the above contested services (e.g. the SCIENCE Bible). Based on the above, the Opposition Division comes to the conclusion that a connection to the remaining contested services in Class 42 cannot be safely denied, a conclusion which is corroborated by the fact that the contested mark fits into the opponent’s family of marks.

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

4. Risk of injury

Use of the contested mark 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’ (06/07/2012, 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.

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

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 (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 Founded in 2012, the opponent is the market-leading publisher of online news and entertainment media content for the social generation. The opponent’s global community engages billions of times every month with original and user-generated content. Consequently, the opponent has built up, and now owns, very substantial goodwill and reputation in relation to the earlier rights and the family of marks.

 The evidence submitted serves to unquestionably substantiate the extensive use, enhanced distinctive character and repute of the earlier rights and the family of marks. It proves that the opponent’s earlier rights have been used to such an extent that the relevant public has become familiar with the family of marks collectively (all of which share the common denominator) as uniquely designating the goods and services of the opponent.

 On the contrary, the applicant is a new entrant to the market. The use of the applicant’s mark for the contested services will take unfair advantage of, and unduly free-ride upon, the fame and reputation of the earlier rights by transferring the reputation and goodwill associated with the opponent to the applicant without due cause.

 This link would undoubtedly lead to an unacceptable situation of commercial parasitism where the applicant would be able to take a ‘free-ride’ on the investment made by the opponent in promoting and building-up reputation in relation to the family of marks, as it may stimulate sales of the applicant’s goods and services to an extent that is disproportionately high in comparison with the size of its promotional investment and duration in the marketplace.

 Even if the consumers are not confused, despite assuming an economic link/connection between the opponent and the applicant, the applicant will still undoubtedly benefit from the link that is made to the opponent. The link itself, which brings to mind the market leader in the field, will assist the applicant, as consumers will be reassured by the reputation and comparison, and assume a similar quality or type of service. This will enable the applicant to gain significantly from the mere association with the opponent, which amounts to the applicant taking unfair advantage of the opponent’s reputation.

Pursuant to Article 95(1) EUTMR the burden lies with the opponent to establish the condition of unfair advantage. However, it follows from the conditional wording of Article 8(5) EUTMR (‘would take unfair advantage of’) that the opponent is not required to demonstrate actual and present injury to its mark. The proprietor of the earlier mark must, however, prove that there is a serious risk that such an injury will occur in the future (judgment of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 38).

In this respect, it must be recalled that the concept of unfair advantage taken of the distinctive character or the repute of the earlier mark by the use without due cause of the mark applied for encompasses instances where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous trade mark or an attempt to trade upon its reputation. In its judgment of 18/06/2009, C-487/07, L’Oréal, EU:C:2009:378, the Court indicated that unfair advantage exists where there is a transfer of the image of the mark or of the characteristics that it projects to the goods identified by the identical or similar sign. By riding on the coat-tails of the reputed mark, the applicant benefits from its power of attraction, its reputation and its prestige. It also exploits, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the image of that mark (§ 41, 49).

Therefore, given the fact that the marks are similar, that the earlier mark enjoys a reputation, that the opponent is proprietor of a family of marks, and given the link in the consumer’s mind as regards the contested mark, the Opposition Division comes to the conclusion that the relevant public may be attracted by the contested sign which displays common features with the marks belonging to the opponent’s family of marks.

The relevant public, when seeing the contested mark applied to the contested services, will be attracted by the fact that the contested sign has common characteristics with the earlier reputed mark and might believe that the former belongs to the same family of marks under the umbrella of the earlier EUTM.

Bearing in mind the foregoing, it is considered that a substantial part of the consumers may decide to turn to the applicant's contested services due to the mental association to the opponent's reputed mark and family of marks, thus misappropriating its attractive powers and advertising value. This may stimulate the sales of the applicant's services to an extent which may be disproportionately high in comparison with the size of its own promotional investment and thus lead to the situation where the applicant is allowed to take a 'free-ride' on the investment of the opponent in promoting and building-up goodwill for its mark.

As a result it is highly plausible that the contested EUTM will ‘ride on the coat-tails’ of the earlier mark in order to benefit from the power of attraction, the reputation and the prestige of that mark.

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, as seen above, 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.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested services.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Renata COTTRELL

Denitza STOYANOVA-VALCHANOVA

Martin EBERL

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.