OPPOSITION No B 2 920 232

Polski Koncern Naftowy Orlen S.A., ul. Chemików 7, 09-411 Płock, Poland (opponent), represented by Monika Kaczmarska, ul. Chemików 7, 09-411 Płock, Poland (professional representative)

a g a i n s t

Cranp - Kovo spol. s r.o., Míru 371, 79070 Javorník, Czech Republic (applicant).

On 13/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 920 232 is upheld for all the contested goods.

2. European Union trade mark application No 16 497 117 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 497 117 ‘ORLAN’ (word mark). The opposition is based on, inter alia, European Union trade mark registration No 3 795 218 ‘ORLEN’ (word mark). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 3 795 218, for which the opponent claimed repute in Poland.

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.

a) Reputation of the earlier trade mark

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

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 22/03/2017. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Poland 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 4: Fuels, liquefied petroleum gases, gasoline, diesel oils, fuel oils, industrial oils, motor oils, paraffin, motor fuel, aviation fuel, coke, xylenes, greases, lubricants, non-chemical additives for fuels and oils.

Class 37: Running fuel stations services (refuelling and maintenance); maintenance refinery and petrochemical plants services; refuelling of land vehicles.

The opposition is directed against the following goods:

Class 11: Boilers; water heaters; heating apparatus for solid, liquid or gaseous fuels; boilers being parts of central heating installations; incinerators; heating apparatus for furnaces; boiler pipes [tubes] for heating installations; flat heating elements; dampers [heating]; thermal incineration installations; heat pumps; taps [cocks, spigots] [faucets (Am)] for pipes; feeding apparatus for heating boilers; fuel economisers.

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 16/09/2019 the opponent submitted the following evidence:

 Exhibit 1: a ranking of the 500 largest Polish companies in 2011; a ranking of the 500 largest Polish companies in 2012; a press release ‘CE TOP 500’ in 2014 with the ranking of Central European companies; a press article concerning the Forbes ranking of 100 richest and largest Polish companies, all mentioning the opponent’s company in first position.

 Exhibit 2: examples of awards granted to PKN ORLEN S.A., inter alia, the award for the biggest company in Poland for 2002, 2004, 2006, 2010 and 2011; confirmation of the award ‘the Star of the New Europe’ granted in 2006.

 Exhibit 3: excerpts from the Integrated Report 2017 of Orlen Group.

 Exhibit 4: printouts from the opponent’s website www.orlen.pl with information about the company, its strategy and its activities in various European countries, including Poland.

 Exhibit 5: a press article, ‘Orlen among world’s giants’ (Bankier.pl), 2014; a press article, ‘Not only a petrol station’ (Puls biznesu), 2011; a press article, ‘Orlen extends its shares in the retail market in the Czech Republic’ (‘Petrol Station’ magazine), 2016; a press release, ‘The PKN ORLEN refinery is the best in the Central and Eastern Europe’ (www.orlen.pl), 2005; a press article, ‘Orlen as the winner of the Central Europe Giants ranking’ (Puls Biznesu), 2006; a press article, ‘The most successful companies’ (zlotefirmy.pl), 2014; a press release, ‘Orlen on the 1^st place of the List 1000’ (www.orlen.pl), 2005; a press article, ‘500 biggest companies in Central and Eastern Europe’ (Dziennik Gazeta Prawna), 2013; Superbrands catalogue and an article about the Superbrands organisation (www.superbrands.pl).

 Exhibit 6: S&P Global Platts TOP 250 Global Energy Rankings for 2010‐2014 and 2016, mentioning the opponent’s company in various positions in the oil and gas refining and marketing segment.

 Exhibit 7: sample photos of petrol stations run within the ORLEN petrol station network.

 Exhibit 8: a ‘Brand Barometer’ survey conducted in October 2011 by GfK Polonia; ‘U&A’ research conducted by GfK Polonia in June 2010; ‘U&A’ research conducted by GfK Polonia in February 2009; an accompanying affidavit attached.

 Exhibit 9: a summary of brand awareness reports including: Pentor RI ‘Corporate Image’ report 2008‐2011, Pentor RI ‘Corporate Image’ report 2007‐2011, GfK Polonia ‘U&A’ 2007‐2011, GfK Polonia ‘Brand Barometer’ 2009‐2011, GfK Polonia ‘Fuel quality’ 2007‐2011, GfK Polonia ‘Fuel quality’ 2003‐2011, GfK Polonia ‘U&A’ 2008‐2011, GfK Polonia ‘U&A’ 2006‐2011, GfK Polonia ‘U&A’ 2011, ‘ORLEN Brand Barometer 2011’.

 Exhibit 10: a document named ‘ORLEN Brand Barometer’ dated 2013.

 Exhibit 11: a document named ‘Condition of the [group’s] brands’ dated October 2015, with survey results on the awareness of the ‘ORLEN’ brand among the public.

 Exhibit 12: a document named ‘ORLEN Brand Barometer’ dated 2017. The survey, dated in February 2017, mentions 88% spontaneous awareness and 99% prompted awareness of ‘ORLEN’ petrol stations in Poland. It also shows that ‘ORLEN’ is the leading brand on the market.

 Exhibit 13: a report conducted by OnBoard PR Ecco Network in 2008 concerning petrol stations in Poland, mentioning ‘ORLEN’ as the leading brand.

 Exhibit 14: Reader’s Digest Trusted Brand awards for 2004, 2006, 2007, 2009, 2010 and 2012.

 Exhibit 15: photos of awards granted by Rzeczpospolita to PKN ORLEN for the most valuable Polish brand in 2008‐2014; a press article, ‘Report of the most valuable Polish brands. Orlen as a leader, castling in further positions’ (Rzeczpospolita), 2015; a press article, ‘Rzeczpospolita: ORLEN as a most valuable Polish brand’ (Energetyka24), February 2017.

 Exhibit 16: a photo of the award for ‘Petrol Station of the Year’ granted to PKN ORLEN S.A. in 2012; a press article concerning the award granted to PKN ORLEN S.A. in the ‘Petrol Station of the Year’ competition in 2014.

 Exhibit 17: examples of awards granted to PKN ORLEN S.A.: Brand of High Reputation in Business 2008, Ambassador of Polish Economy 2010, Leader of Responsible Business 2011, Stevie award 2011, Service Quality Star 2013 and Fleet Awards 2013.

 Exhibit 18: a press article entitled ‘Consumer Laurel and Fleet Market Builder statuette’ (www.paliwa.pl), 2009.

 Exhibit 19: a press article about ‘ORLEN’ as the most valuable Polish brand (Rzeczpospolita), 2011.

 Exhibit 20: a press article entitled ‘Award for the quality of service’ (Stacja Benzynowa), 2012.

 Exhibit 21: a ranking of Polish Brands (Rzeczpospolita) 2013.

 Exhibit 22: a judgment of the Supreme Administrative Court of February 2008, II GSK 359/07, confirming reputation of the opponent’s earlier mark.

 Exhibit 23: a document named ‘ORLEN Fact Book 2013’.

 Exhibit 24: a document named ‘Consolidated Report 2014’.

 Exhibit 25: a document named ‘Consolidated Report 2015’.

 Exhibit 26: a document named ‘Consolidated Report 2016’.

 Exhibit 27: numerous screenshots from the opponent’s website using web archive, dated 2011 - 2017.

 Exhibit 28: a printout from the opponent’s website concerning the ORLEN Group structure; printouts from the websites of the ORLEN Group companies, namely ORLEN Asfalt, ORLEN Aviation, ORLEN Eko, ORLEN Oil and ORLEN Upstream; all dated 2019.

 Exhibit 29: a report of advertising expenses incurred by the opponent between January 2007 and December 2010, prepared by Kantar Media (previously Expert Monitor); an accompanying affidavit attached.

 Exhibit 30: a report of advertising expenses incurred by the opponent between January 2012 and December 2017, prepared by Kantar Media.

 Exhibit 31: copies of numerous promotional materials and advertisements, dated 2011-2019 or undated.

 Exhibit 32: further copies of other promotional materials and advertisements, mostly undated.

 Exhibit 33: a printout from the opponent’s website concerning the ORLEN Team; several sample newspaper clippings confirming the participation of the ORLEN Team in the Dakar Rally in 2009‐2013.

 Exhibit 34: a printout from the official Verva Street Racing website; several sample photos of the event, advertising banners and promotional materials, either referring to the period 2010-2017 or undated.

 Exhibit 35: a printout from Wikipedia concerning the ORLEN Warsaw Marathon; several sample photos of the event and advertising banners; three scans of ORLEN Warsaw Marathon promotional pamphlets; either referring to the period 2013-2017 or undated.

 Exhibit 36: sample photos of awards and acknowledgments for sponsoring sports activities in Poland, referring to the period 2009-2012.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position as the leading brand, as has been attested by diverse independent sources. The brand awareness surveys and reports, the rankings, the numerous awards received by the opponent or the various references in the press to its success all unequivocally show that the mark enjoys a very high degree of recognition among the public in Poland.

The evidence demonstrates that the earlier trade mark enjoys a reputation at least for fuels in Class 4 and running fuel stations services (refuelling and maintenance) in Class 37. For reasons of procedural economy, it is not necessary to examine whether the earlier trade mark enjoys a reputation also for the other goods and services invoked in these proceedings.

b) The signs

ORLEN	ORLAN
Earlier trade mark	Contested sign

The relevant territory is Poland.

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).

Neither ‘ORLEN’ nor ‘ORLAN’ has any meaning for the relevant public and are, therefore, distinctive.

Visually, the signs coincide in ‘ORL*N’ and differ only in the penultimate letter, ‘E’ v ‘A’. The marks also have the same structure, namely one word, and have the same length (five letters).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘ORL*N’, present identically in both signs. The pronunciation differs in the sound of the penultimate letter (vowel) ‘E’/’A’. The marks also have a very similar rhythm and intonation.

Therefore, the signs are aurally highly similar.

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

In view of the above findings, the marks are highly similar overall.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are highly 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.

In the present case, the marks are similar to a high degree and the earlier trade mark enjoys a very high reputation for fuels in Class 4 and running fuel stations services (refuelling and maintenance) in Class 37.

The contested goods in Class 11 are various heating or thermal apparatus and their parts and accessories. These goods are linked by their nature to the opponent’s reputed goods and services, because they all relate to energy or fuels. Some of the contested goods have a stronger link than others, but there is at least some link for all the contested goods.

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).

d) 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.

The opponent claims, among other things, that the contested sign would benefit from the reputation of the earlier trade mark. The image of the earlier mark with a reputation would be transferred to the contested sign and the marketing of the goods sold under this sign would thus be made easier.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark in the form of free-riding.

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).

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 average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

In the circumstances of the present case, it is considered that the contested sign would benefit from the reputation of the earlier trade mark. The goods sold under the contested sign would be made more attractive for the consumers through the association with the earlier reputed trade mark. The contested sign would thus unfairly exploit the reputation of the earlier mark built through the efforts of the opponent.

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.

e) 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 goods.

It should be noted that the applicant did not submit any arguments to defend its application and did not in any way question the reputation of the earlier mark, the similarity between the marks or the existence of a link or injury.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining ground and earlier right on which the opposition was based. Likewise, it is not necessary to assess the other types of injury claimed by the opponent.

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

Michal KRUK

Vít MAHELKA

Chantal VAN RIEL

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.