OPPOSITION No B 3 046 746

Apple Inc., One Apple Park Way, 95014 Cupertino, California, United States of America (opponent), represented by Locke Lord LLP, 201 Bishopsgate, London EC2M 3AB, United Kingdom (professional representative)

a g a i n s t

Shenzhen Senmu Technology Co. Ltd., No 11, Lane 1, Dafapu West Vil, Bulong Rd, Bantian Str, Longgang Dist, Shenzhen, People’s Republic of China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6 - 5ª planta, 28050 Madrid, Spain (professional representative).

On 19/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 746 is upheld for all the contested goods.

2. European Union trade mark application No 17 378 001 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 17 378 001 for the word mark ‘MACXEN’, namely against all the goods in Class 9. The opposition is based on, inter alia, European Union trade mark registration No 11 871 225 for the word mark ‘MAC’. The opponent invoked Article 8(1)(b) and Article (5) EUTMR in relation to that right. The opponent also based the opposition on a number of earlier unregistered rights and the grounds of Article 8(4) EUTMR and Article 8(2)(c) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

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 above mentioned 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 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 20/10/2017. 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: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission and/or reproduction of sound or images or other data; magnetic data carriers; recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; fire-extinguishing apparatus; apparatus, instruments and materials for transmitting and/or receiving and/or recording sound and/or images; downloadable audio and video recordings featuring music, comedy, drama, action, adventure and/or animation; computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; computer networks; facsimile machines, answering machines, telephone-based information retrieval software and hardware; adapters, adapter cards, connectors and drivers; blank computer storage media; fonts, typefaces, type designs and symbols in the form of recorded data; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; telecommunications equipment, apparatus and instruments; computer games; computer software and computer hardware apparatus with multimedia and interactive functions; computer gaming machines; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives; central processing units; circuit boards; integrated circuits; magnetic, optical, and electronic data storage materials and devices; computer memory devices; blank computer storage media; solid-state data storage devices; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; apparatus for data storage; hard drives; miniature hard disk drive storage units; pre-recorded vinyl records, audio tapes, audio-video tapes, audio video cassettes, audio video discs; audio tapes for sale with booklets; sound, video and data recordings; CD-ROMs; digital versatile discs; mouse pads; batteries; rechargeable batteries; chargers; chargers for electric batteries; headphones; stereo headphones; in-ear headphones; stereo speakers; audio speakers; audio speakers for home; monitor speakers; speakers for computers; personal stereo speaker apparatus; radio receivers, amplifiers, sound recording and reproducing apparatus, electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, loudspeakers, multiple speaker units, microphones; digital audio and video players with multimedia and interactive functions; accessories, parts, fittings, and testing apparatus for all the aforementioned goods; digital audio and video devices; audio cassette recorders and players, video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; audio, video, and digital mixers; radio transmitters; car audio apparatus; global positing systems; navigation apparatus for vehicles (on board computers); cameras; video cameras; bags and cases adapted or shaped to contain cameras and/or video cameras; telephones; cordless telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; portable digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; handheld digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; digital music and/or video players; MP3 and other digital format audio players; hand held computers, personal digital assistants, electronic organizers, electronic notepads; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; global positioning system (GPS) devices, telephones; handheld and mobile digital electronic devices for the sending and receiving telephone calls, faxes, electronic mail, and other digital media; bags and cases adapted or shaped to contain digital music and/or video players, hand held computers, personal digital assistants, electronic organizers and electronic notepads; holders, straps, armbands, lanyards and clips for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; computer software; computer programs; pre-recorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software; database synchronization software, computer programs for accessing, browsing and searching online databases, computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; downloadable electronic publications in the nature of books, plays, pamphlets, brochures, newsletters, journals, magazines, and periodicals on a wide range of topics of general interest; computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; sound effect apparatus and instruments (computer software); electronic tone generators (computer software); computer desktop utility software; screen saver software; software for detecting, eradicating and preventing computer viruses; software for data encryption; software for analysing and recovering data; software for computer system backup, data processing, data storage, file management and database management; software for telecommunication and communication via local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks; software for creating and delivering electronic greeting cards, messages and electronic mail; software for web design, creation, publishing and hosting; software for access to communications networks including the Internet; instructional material relating to the foregoing; computer disk holders; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods, made of leather, imitations of leather, cloth, or textile materials.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; toys; playing cards; electronic hand-held game units; musical toys, games and playthings; toy audio apparatus; toy musical boxes; toy musical instruments; toy record players for playing tunes and cassettes; musical games; battery operated toys; electronic toys; electronic games; electric computer games, other than those adapted for use with television receivers; electrical and electronic amusement apparatus (automatic, coin/counter freed); electronic games being automatic, coin-freed or counter-freed (other than those adapted for use with television receivers); hand-held electronic games and apparatus (other than those adapted for use with television receiver only); video games other than those adapted for use with television receivers only; automatic and coin-operated amusement machines; computer game apparatus other than coin operated or those adapted for use with television receivers; video output toys and games; electronically operated toys; interactive computer toys and games; musical toys and games; standalone video game machines incorporating a means of display; toy handheld electronic devices; toy computers (not working); toy mobile telephones (not working); parts and fittings for all the aforesaid goods.

Class 35: Advertising; business management; business administration; office functions; providing office functions; business consulting services; advertising agency services; advertising and marketing services; promotion services; advertising and marketing consultation; sales promotion services; promoting the goods and services of others; conducting market research; market surveys; analysis of advertising response and market research; creation, preparation, production, and dissemination of advertisements and advertising material for others; media planning services; administration of consumer loyalty programs; arranging and conducting incentive rewards programs to promote the sale of goods and services; arranging and conducting of commercial, trade and business conferences, shows, and exhibitions; creating indexes of online information, sites and other resources available on global computer networks for others; providing business and commercial information over computer networks and global communication networks; business services, namely, providing computer databases regarding the purchase and sale of a wide variety of products and services of others; business services, namely, dissemination of advertising for others via computer networks and global communication networks; compilations of directories for publishing on the Internet and other electronic, computer and communications networks; computerised database and file management; data processing services; retail store featuring computer, electronic and entertainment products; retail store and online store services featuring computer, electronic and entertainment products provided via the Internet and other computer, electronic and communications networks; retail store and online store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phone, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto; retail store services in the field of computers, tablet computers, computer hardware, computer software, computer peripherals, consumer electronics, telecommunications and multimedia goods and accessories, mobile phone, handheld mobile digital electronic devices, and other consumer electronics and accessories, peripherals, and carrying cases for such products, and demonstration of products relating thereto, provided via the Internet and other computer, electronic and communications networks; retail store services in the field of entertainment featuring music, video, film, books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, television, games, sports, movies, television programs, sporting events, musical works, pre-recorded audio and audiovisual works and related merchandise, and music related electronic products; retail store and online store services in the field of entertainment featuring music, video, film, books, magazines, periodicals, newsletters, journals and other publications on a wide range of topics of general interest, television, games, sports, movies, television programs, sporting events, musical works, pre-recorded audio and audiovisual works and related merchandise, and music related electronic products, provided via the Internet and other computer, electronic and communications networks; retail store services featuring telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, accessories, peripherals, and carrying cases for such devices; retail store services featuring computer, electronic and entertainment products, telecommunications apparatus, mobile phones, handheld mobile digital electronic devices, tablet computers, music related electronic products, and other consumer electronics, computer software, and accessories, peripherals, and carrying cases for such products, provided via the Internet and other computer, electronic and communications networks; product demonstrations provided in-store and via communications networks and other electronic and communications networks; the bringing together, for the benefit of others, of a variety of service providers, in the fields of on-line services, communications, information technology, and publishing services, for customers to conveniently view and choose those services; computerised data storage and retrieval services; computerised data storage and retrieval services for digital text, data, image, audio, video and multimedia content; and video works; data storage of electronic music; online music and video subscription services; subscription services, namely, providing subscriptions to text, data, image, audio, video, and multimedia content, provided via the Internet and other electronic and communications networks; subscription services, namely, providing downloadable pre-recorded text, data, image, audio, video, and multimedia content in the fields of entertainment featuring music, video, film, books, periodicals, television, games, sports and computer software for a fee or pre-paid subscription, provided via the Internet and other computer, electronic and communications networks; internet services, namely, creating indexes of information, sites and other resources available on global computer networks and other electronic and communications networks for others; searching, browsing and retrieving information, sites, and other resources available on global computer networks and other electronic and communications networks for others; organizing content of information provided over a global computer network and other electronic and communications networks according to user preferences; online music subscription services; creating indexes of information, sites and other resources available on global computer networks for others; providing information, databases, directories, and podcasts in the fields of advertising; creating indexes of online information, sites and other resources available on global computer networks for others; information, advisory and consultancy services relating to all the aforesaid.

Class 37: Repair and installation services, none being related to building construction; maintenance, installation and repair of computers, tablet computers, computer hardware, computer peripherals and consumer electronic devices; maintenance and repair of digital music and or video players, hand held computers, personal digital assistants, electronic organizers and electronic notepads; maintenance and repair of electronically operated musical apparatus; information, advisory and consultancy services relating to all the aforesaid.

Class 38: Telecommunications; communication and telecommunication services; telecommunication access services; communications by computer; communications by tablet computer; communication between computers; electronic sending of data and documentation via the Internet or other databases; supply of data and news by electronic transmission; providing access to websites and electronic news services online allowing the download of information and data; providing access to web sites on the Internet; serving and transmitting audio, video, multimedia, and advertising content to computers, mobile telephones, media players, and other mobile digital devices; delivery of digital music by telecommunications; providing temporary internet access to use on-line non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs; providing wireless telecommunications via electronic communications networks; wireless digital messaging, paging services, and electronic mail services, including services that enable a user to send and/or receive messages through a wireless data network; one-way and two-way paging services; communication by computer, computer intercommunication; telex, telegram and telephone services; broadcasting or transmission of radio and television programmes; time sharing services for communication apparatus; provision of telecommunications access and links to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; webcasting services (transmission); delivery of messages by electronic transmission; provision of connectivity services and access to electronic communications networks, for transmission or reception of audio, video or multimedia content; provision of telecommunications connections to electronic communication networks, for transmission or reception of audio, video or multimedia content; providing access to digital music web sites on the Internet; providing access to MP3 web sites on the Internet; delivery of digital music by telecommunications; provision of telecommunications connections to the Internet or computer databases; providing user access to the Internet (service providers); electronic mail services; telecommunication of information (including web pages), computer programs and any other data; video broadcasting, broadcasting pre-recorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via a global computer network, computer and other communications networks; streaming of video content via a global computer network; subscription audio broadcasting via a global computer network; audio broadcasting; audio broadcasting of spoken word, music, concerts, and radio programmes; streaming of audio content via a global computer network; electronic transmission of audio and video files via communications networks; communication services, namely, matching users for the transfer of music, video and audio recordings via communication networks; electronic bulletin board services; providing computer bulletin board in the fields of music, video, film, books, television, games and sports; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment, music, concerts, videos, radio, television, film, news, sports, games and cultural events; rental and hire and leasing of communication apparatus and electronic mail-boxes; electronic news services; electronic communications consultancy; facsimile, message collection and transmission services; transmission of data and of information by electronic means, computer, cable, radio, teleprinter, teleletter, electronic mail, telecopier, television, microwave, laser beam, communications satellite or electronic communication means; transmission of data by audio-visual apparatus controlled by data processing apparatus or computers; provision of access time to web-sites featuring multimedia materials; providing access to databases and directories via communications networks for obtaining data in the fields of music, video, film, books, television, games and sports; providing users with access time to electronic communications networks with means of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer users; organizing and conducting video conferences; provision of access time to web-sites featuring multimedia materials; providing users with access time to electronic communications networks with means of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer users; providing computer data bases in the nature of a bulletin board in the fields of music, video, film, books, television, games and sports; providing an online searchable database of text, data, image, audio, video and multimedia content in the fields of telecommunications, mobile phones; providing temporary internet access to use on-line non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs; information, advisory and consultancy services relating to all the aforesaid.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; educational and entertainment services; entertainment and educational services, namely, providing text, video, audio, and multimedia materials; entertainment services, namely, providing computer games; entertainment and educational services, namely, providing electronic books, magazines, newspapers, journals, periodicals, and other publications; entertainment and educational services, namely, providing information, databases, directories, and podcasts in the fields of entertainment, news, current events, history, sports, games, the media, cultural events and activities, hobbies, publications; entertainment and educational services, namely, live performances, sporting events, cultural events, and lectures; provision of electronic publications (not downloadable); providing on-line electronic publications; publication of electronic books and journals on-line; providing publications from a global computer network or the Internet which may be browsed; computer-based and computer-assisted educational, teaching, and training services; computer assisted education services; computer assisted teaching services; computer assisted training services; computer based educational services; tablet computer assisted teaching services; tablet computer assisted training services; tablet computer based educational services; education services, providing of training, instruction and entertainment relating to computers, tablet computers, computer software, multimedia products, interactive products and online services, telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, and distributing course materials therewith; education and training services, namely, conducting classes, workshops, and seminars in the field of computers, tablet computers, computer software, online services, information technology, internet website design, music, photography and video products and consumer electronics; arranging professional workshop and training courses; computer education training services; training in the use and operation of computers, tablet computers, computer software and consumer electronics; education services relating to online exhibitions and displays and interactive exhibits in the fields of computers, computer software, computer peripherals, portable and/or electronic devices, online services, high technology, communications, information technology, information services, music, entertainment and publishing; production of radio, television and Internet broadcasts of exhibitions; editing of audio-tapes; editing of cine-films; editing of video-tapes; editing of written text; film editing (photographic); videotape editing; digital imaging services; providing digital music (not downloadable) from MP3 web sites on the Internet; providing digital music (not downloadable) from the Internet; arranging and conducting of commercial, trade and business conferences; organising and conducting exhibitions, workshops, seminars, training and conferences; publication of printed matter and of instructional and teaching materials; entertainment in relation to contests, competitions, quizzes and lotteries; gaming and gambling services; organisation and presentation of contests, competitions, games, quizzes and lotteries; electronic contests, competitions, games, quizzes and lotteries provided by means of the Internet or on-line from a computer database or network; electronic publishing services; providing downloadable pre-recorded music and video for a fee or pre-paid subscription via the Internet or pre-bundled with computing devices; electronic games services provided by means of the Internet; providing computer databases in the fields of music, video, film, books, television, games and sports; entertainment services in the nature of musical, video, audio-video, and textual materials, namely books, plays, pamphlets, brochures, newsletters, journals, and magazines, on the subjects of sporting and cultural activities and a wide range of topics of general interest offered in-person and distributed over computer networks; providing electronic publications for browsing and downloading over computer networks, namely books, pamphlets, brochures, newsletters, journals, and magazines, on the subjects of computer hardware and software applications, telecommunications apparatus, mobile phones, handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data, and a wide range of topics of general interest; providing databases and directories via communications networks for obtaining data in the fields of music, video, film, books, television, games and sports; providing on-line facilities, via a global computer network, to enable users to program the scheduling of audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs as they will be aired; providing an online searchable database of text, data, image, audio, video, and multimedia content in the field of entertainment featuring music, video, film, books, periodicals, television, games, and sports; providing an online searchable database of text, data, image, audio, video and multimedia content in the fields of consumer electronics; information, advisory and consultancy services relating to all the aforesaid.

Class 42: Scientific and technological services in the fields of computer hardware, computer software, computer peripherals, portable and/or electronic devices, communications and information technology and research and design relating thereto; industrial analysis and research services in the fields of computer hardware, computer software, computer peripherals, portable and/or electronic devices, communications and information technology; design and development of computer hardware and software; computer hardware and software consulting services; technical support services, namely, troubleshooting computer hardware, computer peripheral, computer software and consumer electronic devices; installation, updating, maintenance and repair of computer software; technical consulting in the field of computers, tablet computers and consumer electronics; computer, tablet computer and consumer electronic diagnostic services; consulting services in the field of selection, implementation and use of computer hardware, computer software and consumer electronic systems for others; computer data recovery; consulting services in the field of selection, implementation and use of computer hardware and computer software for the operation of consumer electronic systems for others in the nature of audio, audiovisual and home and portable entertainment systems and devices; technical consulting in the field of consumer electronics, namely, audio, audiovisual and home and portable entertainment systems and devices; consulting services in the field of selection, implementation and use of computer hardware, computer software and consumer electronic systems for others, namely audio, audiovisual and home and portable entertainment systems and devices; rental of computer hardware and software apparatus and equipment; multimedia and audio-visual software consulting services; computer programming; support and consultation services for developing computer systems, databases and applications; graphic design for the compilation of web pages on the Internet; information relating to computer hardware or software provided on-line from a global computer network or the Internet; creating and maintaining web-sites; development of multimedia websites; hosting the web-sites of others; providing search engines for obtaining data via communications networks; application service provider (ASP) services featuring computer software; application service provider (ASP) services featuring software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing search engines for obtaining data on a global computer network; operating search engines; computer consulting and support services for scanning information into computer discs; design of advertisements and advertising material for others; providing an online searchable database of text, data, image, audio, video and multimedia content in the fields of computer hardware, computer software, consumer electronics, telecommunications and multimedia goods; providing information, databases, directories, and podcasts in the fields of technology; information, advisory and consultancy services relating to all the aforesaid.

The opposition is directed against the following goods:

Class 9: Couplers [data processing equipment]; mouse [data processing equipment]; USB flash drives; bags adapted for laptops; sleeves for laptops; tablet computers; protective films adapted for computer screens; tablet computer cases; smart glasses; smart watches; smart card readers; agendas (electronic-); scales; electronic notice boards; navigational instruments; smart phones; wearable activity trackers; mobile phone cases; protective cases for smartphones; liquid crystal protective films for smartphones; routers; cabinets for loudspeakers; portable media players; virtual reality headsets; headsets; camera cases; cameras; USB cables; USB cables for cellphones; connectors [electricity]; sockets, plugs and other contacts [electric connections]; goggles for sports; theft prevention installations, electric; eyeglasses; sunglasses; battery chargers; batteries, electric; USB chargers.

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 21/09/2018 the opponent submitted evidence to support this claim. 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, inter alia, of the following documents.

 Affidavit dated 20/092018 signed by Thomas R. La Perle, Director in Apple’s Legal Department.

 Exhibits 1-15: press review regarding the commercial success of Apple, the opponent. Exhibit 3 notably includes an article published on fortune.com on 19/01/2018, which states that Apple is the most admired company worldwide and is working in the field of computers. This is corroborated by exhibit 10 which consists of a ranking which shows that Apple was the most admired company, for instance in 2016 and 2017. Exhibit 4 is an article extracted from Forbes, which states that Apple sells products in Europe. Exhibit 7 consists of rankings extracted from Interbrand, showing that the opponent was the best Brand from 2013 to 2017. Exhibit 11 states that Apple has been the coolest brand each year since 2012, and amongst the coolest brands since 2009. An article extracted from panealteam on 8/02/2010 (exhibit 13) states Apple is the brand Europeans feel most passionate about.

Exhibit 5: article extracted from The Telegraph, dated 14/08/2017 and entitled ‘Mac at 30 timeline: Apple’s every major product’. It is notably written that ‘As the original Apple Macintosh reaches its 30^th birthday, we look back at the company’s most iconic, popular and quirky – if not always commercially successful – products.’ In relation to Macintosh, the article states that ‘Apple’s revolutionary line of personal computers was first introduced to the market on 24/01/1984. The Mac is still going strong thirty years later’ (emphasis added), as well as the following ‘From the Macintosh Portable to the MacBook Air, Apple’s laptops have become the weapon of choice of many of the world’s design professionals.’ The following products are mentioned: ‘Macintosh 128 5’, ‘Macintosh 512K’, ‘Macintosh Plus’, ‘Macintosh II’, ‘Macintosh SE’, ‘Macintosh Classic’, ‘Macintosh TV’, ‘Power Macintosh G3’, ‘iMac G3’, ‘Power Mac G4’, ‘Power Mac G4 Cube’, ‘iMac G4’, ‘eMac’, ‘Power Mac G5’, ‘iMac G5’, ‘Mac Mini’, ‘Intel iMac’, ‘Mac Pro (first gen)’, ‘Mac Pro (second gen)’.

The conclusion of the article is the following:

Apple is the company that has changed the world of computing and entertainment. That’s through a unique kind of PC, through the iPod, then the iPhone and most recently the iPad. This is not to mention the implausibly slim, trend-setting Macbook Air laptop.

Driven initially by Steve Jobs and now by Tim Cook, Apple possesses a unique ability to combine design and computing expertise. The advert that launched the original Mac – directed by Ridley Scott – emphasised that these were the computers that would set people free from the drudgery of everyday life. It was a bold claim then but now Apple’s products, alongside those that they have spawned from other companies, can make serious claims to have revolutionised the lives of billions.

(…) For all its high profit margins and emphasis on design, Apple played a key role in the democratisation of technology by combining utility with ease of use. The first Mac went on sale 30 years ago today. If that tells us one thing, it should be that this is a revolution which is still very young – and that the iPhone and iPad will be around for a long time yet.

 Exhibit 16: article extracted from www.themost10.com entitled ‘10 Most Popular Apple Products in History’. It is dated 5/01/2013. This ranking lists ‘MAC’ as number nine, ‘iMac’ as number eight, ‘Mac OS X’ as number six and ‘MacBook Air’ as number five.

This exhibit also contains an article extracted from www.steevbishop.com describing the opening of an Apple Store in London and one article extracted from Macworld. The authors describe the queue, the wait, and the store, in which ‘MAC’ products were on sale. The articles are dated in 2004. It is notably stated: ‘the best thing about the Store openings (…) is ‘seeing the enthusiasm of the staff’. When the doors opened at 10 am the energy of the staff was ‘amazing’. Running down the long line of cold Mac fans the UK staff gave high-fives’.

Furthermore, another article entitled ‘Apple is the best brand and design studio of the last 50 years’, extracted from www.idownloadblog.com. It is notably stated that Apple’s design team are the people that made your iPhones, (…), Macs and numerous other products that ooze with style and sexiness’.

 Exhibit 28: articles dated 2013. One of the articles, extracted from www.thenextweb.com is entitled ‘Apple: Mac install base now 72 million, up 100 % in 5 years, 28 million copies of Mountain Lion sold’.

 Exhibits 31, 40 and 43: press releases and articles regarding openings of various apple stores in the European Union.

 Exhibit 38: printouts from the website www.alexa.com showing the visitors on Apple’s websites. European Union consumers account for a sizeable percentage: the United Kingdom accounts for 4.0 %, Germany accounts for 3.0 %, and France, Italy and Spain for 2.7 %, 2.3 % and 2.0 %, respectively. According to the document, in January 2008, 7 078 136 visitors visited Apple’s website in the United Kingdom.

 Exhibit 42: printouts from the opponent’s annual reports as filed with the United States Securities and Exchange Commission, from 2002 to 2016, showing impressive incomes. The documents clearly split the European and the American incomes, as well as the incomes respectively generated by ‘iPhone’, ‘iPad’ and ‘Mac’ products. For instance, in Europe in 2016, the opponent’s group earned almost USD 50 million. As an example, it is indicated that in 2010 in Europe, ‘Mac’ net sales and unit sales increased 32 % and 36 %, respectively to reach almost USD 4 million.

 Exhibits 44-47: press reviews consisting of various articles referring to ‘MAC’ products (including computers) extracted from UK and American newspapers. In exhibit 44, the articles are dated 2013, while in exhibit 45, the articles are dated 2006.

 Exhibits 49-52: copies of advertisements regarding ‘MAC’ computers, some of them being in The United States of America, others being in the European Union. They are undated or cover a large range of dates, mainly in the 1990s and until 2006. In particular, exhibit 51 shows exterior advertising campaigns in several EU countries, including the following:

 Exhibit 59: copy of the Smithsonian Institution’s National Museum of American History website’s front page, as well as specific pages devoted to the display of ‘The Apple Macintosh’ computer.

 Exhibit 62: printouts from the opponent’s annual reports, with advertising figures, as filed with the United States Securities and Exchange Commission.

As far as the affidavit is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such a statement does not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The opponent, in its affidavit, claims an impressive turnover in the European Union in relation to ‘MAC’ products. This claim is partly corroborated by exhibit 42, because in recent years (since 2010), the incomes are only divided between geographical zones and product range, and so the sales of ‘MAC’ products in the European Union are not able to be calculated accurately.

The indications of duration of use are particularly useful for determining the longevity of the mark. The longer the mark has been used in the market, the larger the number of consumers who are likely to have encountered it will be, and the more likely it is that these consumers will have encountered the mark more than once. For example, a market presence of 45, 50 or 100-plus years is considered a strong indication of reputation (29/03/2012, T‑369/10, Beatle, EU:T:2012:177, § 36). In the present case, the first ‘MAC’ computer was introduced to the market in 1984 (see exhibit 5), which shows a long period of use.

The opponent argues that its brand has been the subject of significant promotional activities and investment. Direct evidence in this regard is provided, in particular, exhibits 49 to 52 and exhibit 62 which tends to corroborate the impressive advertising expenditure claimed in the affidavit.

The Opposition Division considers that the abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time. Although the evidence partially refers to the United States of America, the sales figures and marketing efforts demonstrate that the trade mark has a consolidated position in the EU market. In particular, the Opposition Division cannot ignore exhibit 5, which consists of an article from The Telegraph dated in 2017, where it is stated that ‘Apple’s revolutionary line of personal computers was first introduced to the market on 24/011984. The Mac is still going strong thirty years later’.

Furthermore, the evidence indisputably shows that Apple is reputed, as attested by the fact that it has been ranked as the coolest brand, the most powerful brand etc. for several years (see exhibits 1-15). Even if these exhibits on their own may not give the Opposition Division sufficient information regarding the commercial success of the mark ‘MAC’, special attention must be drawn to exhibit 16, which consists of a ranking of the ten most iconic apple products, listing ‘MAC’ as number nine, ‘iMac’ as number eight, ‘Mac OS X’ as number six and ‘MacBook Air’ as number five. Therefore, the Opposition Division has the strong opinion that the earlier mark, in addition to its own reputation, has also taken advantage of the success of Apple’s products to consolidate its own notoriety. In that regard, exhibit 16 relates to the openings of Apple stores in London and describes the feelings of ‘MAC fans’ waiting in the queue. In the same vein, exhibit 13 states that Apple is the brand Europeans feel most passionate about.

Finally, while it is true that in addition to the word mark ‘MAC’, the evidence also shows the signs ‘Macintosh’, ‘iMac’, ‘MacBook Air’, etc., it is clear from the evidence that these products are sold under the umbrella mark ‘MAC’.

Under these circumstances, the Opposition Division finds that, taken as a whole, the evidence indicates that the earlier trade mark enjoys a degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys an important degree of reputation. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR such as, for example, the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods and services in question, the relevant consumers, etc.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to computers; data processing equipment in Class 9, whereas there is no or little reference to the remaining goods and services.

b) The signs

MAC	MACXEN
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).

Both marks are word marks, the earlier mark being ‘MAC’ and the contested sign being ‘MACXEN’.

A part of the public in the relevant territory (in particular United Kingdom, Ireland) will perceive the element ‘MAC’ as a prefix to a number of surnames, in particular of Scottish origin (e.g. Macallister, Macdonald), whereas this element is meaningless for other parts of the public (e.g. the Lithuanian and Hungarian publics). In all the scenarios, this element has no meaning in relation to the goods and has an average inherent degree of distinctive character.

‘MACXEN’ as a whole is meaningless. As the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25), the Opposition Division considers that the relevant public will not split the trade mark, even if the component ‘MAC’ would be meaningful in the consumer’s language.

Visually and aurally, the signs share the letter sequence ‘MAC’ which forms the entirety of the earlier mark and the beginning of the contested sign. They differ in the additional letters ‘XEN’ at the end of the contested sign and therefore, in their length. As consumers usually focus their attention on the beginning of the signs, the signs are visually and aurally similar to an average degree (see similar reasoning 04/10/2017, T‑411/15, ITM, EU:T:2017:689, § 71, 83).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As ‘MACXEN’ does not convey any concept, the signs are conceptually not similar, or the conceptual aspect does not influence the assessment of the similarity of the signs, in case the relevant public perceives ‘MAC’ in the earlier mark as meaningless.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

c) 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.

As abovementioned, the earlier mark is reputed in the European Union due to the long standing and extensive use that has been made in that territory in relation to computers; data processing equipment. In that regard, it is worth recalling that it is one of the main brands of one of the most iconic brands, namely Apple.

Due to such extensive use, the earlier mark, which is inherently distinctive to an average degree, has acquired recognition among the relevant public and, as a result, an enhanced distinctive character.

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

Some of the contested goods are identical (e.g. tablet computers) to the computers for which the earlier mark is known, some are similar or at least concern related or neighbouring market sectors, having the same relevant public, distribution channels, commercial origin, or commonly depend on each other for a correct use or functioning (couplers [data processing equipment]; mouse [data processing equipment]; USB flash drives; bags adapted for laptops; sleeves for laptops).

In addition, although some of the contested goods are optical devices (goggles for sports; eyeglasses; sunglasses), which are different to the opponent’s computer, the image of the earlier brand, particularly in terms of its acclaimed design and high quality, is related to a certain lifestyle (the opponent has been ranked as the coolest brand and ‘MAC’ is one of the most iconic brands of the company). These abovementioned optical goods are also sophisticated and intended for the same general public. This image may therefore be easily transferred to other products having a different purpose.

Moreover, it is undisputable that virtual reality possibilities are becoming widely available to the general public, and it is a growing trend that the giants of the IT sector are developing virtual-reality headsets. Therefore, the Opposition Division considers that due to the reputation of the earlier mark and the degree of similarity between the signs, there exists also a link in relation to these dissimilar 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 the following.

 There is a risk that the image of the ‘MAC’ mark, or the characteristics which the ‘MAC’ mark projects, are transferred to the goods covered by the contested mark, with the result that the marketing of the applicant’s goods is made easier by that association with the ‘MAC’ mark.

 Any connection drawn between the opponent and the applicant will result in the contested mark taking unfair advantage of the distinctive character and/or repute of the opponent’s ‘MAC’ mark by causing consumers to attribute the desirable characteristics of the opponent’s goods and services to the goods of the applicant.

 In that regard, where the applicant attempts, through the use of a sign similar to the MAC mark to ride on the coat-tails of the ‘MAC’ mark in order to benefit from its power of attraction, reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the Opponent in order to create and maintain the image of the MAC mark.

 The opponent submits that the applicant’s use of the contested sign would take advantage of the substantial reputation of the ‘MAC’ mark. Consumers who draw a connection between the contested sign and the earlier mark will be predisposed to assume that the contested goods bear similar attributes including inter alia in terms of innovation, quality, functionality and design.

 A perception by the public that the contested sign is connected with or associated with the opponent, even as an allusion which falls short of a suggestion of commercial affiliation, would consequently damage the capacity of the ‘MAC’ mark to immediately distinguish goods originating from the opponent.

 The opponent has invested considerable time and expense in creating and maintaining its reputation as a famous brand that enjoys worldwide acclaim. Through extensive use and promotion, the ‘MAC’ mark enjoys a substantial reputation and goodwill, both in the European Union and worldwide. Furthermore, the opponent’s ground-breaking and marketleading products bearing the MAC mark hold a strong reputation as some of the most desirable, high-quality products that are highly-functional, user-friendly and extremely well-designed. Therefore, consumers who see the contested sign will expect the extremely high standard of quality, innovation and design of the opponent’s products. However, in finding that goods provided under the contested sign originate not from the opponent, but from the applicant, consumers are likely to be deceived as to the quality of those goods.

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

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).

Consumers attribute positive features to trade marks with reputation. In particular, in the present case, as stated in section a) of this decision, over the years, with a huge investment in promotion, and taking advantage of the positive values of the opponent’s company, the opponent has created an image of luxury and a ‘cool brand’ with respect to the earlier trade mark.

Furthermore, the signs are similar to some extent, as stated in section b) of this decision.

Consequently, in the present case, it is highly conceivable that consumers will make a direct association between the conflicting signs, since the earlier mark is identically incorporated into the contested sign and constitutes its initial part. Moreover, the earlier mark has a reputation.

Regarding the connection between the relevant goods, as stated in section c) of this decision, most of the contested goods belong to the same sector as the opponent’s computers. As regards the other goods, they belong to the optical sector amongst which, the goods can be luxury goods or IT goods and convey the same values as trendy and cool products. Furthermore, a possible link between the signs might facilitate the introduction into the market of the contested goods bearing the contested sign, diminishing the need for investment in advertising and allowing the applicant to benefit from the opponent’s efforts and reputation in the market.

In other words, in view of the special connections of the contested goods with the opponent’s goods bearing the reputed earlier mark, a substantial part of consumers may decide to turn to the contested goods in the belief that the contested sign is somehow linked to the opponent’s reputed mark, thus misappropriating its attractive power and advertising value. This may stimulate the sales of the applicant’s goods to an extent which may be disproportionately high in comparison with the size of its own promotional investment and lead to the unacceptable 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 marks.

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.

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.

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

Nicole CLARKE

Birgit FILTENBORG

Marine DARTEYRE

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.