OPPOSITION No B 3 055 597

Feria de Zaragoza, Autovía A-2, Km. 311, 50012 Zaragoza, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Worldwide Business Research Limited, Hanover House 14, Hanover Square, W1S 1HP London, United Kingdom (applicant), represented by Brookes IP, Windsor House, 6-10 Mount Ephraim Road, TN1 1EE Tunbridge Wells, United Kingdom (professional representative).

On 05/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 055 597 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 867 720 for the word mark ‘FIMA’. The opposition is based on the following earlier trade marks:

1. Spanish trade mark registration No 839 792 for the figurative mark ,

2. Spanish trade mark registration No 1 025 569 for the figurative mark ,

3. Spanish trade mark registration No 1 325 370 for the figurative mark ,

4. Spanish trade mark registration No 2 011 325 for the figurative mark ,

5. Spanish trade mark registration No 2 617 377 for the word mark ‘FIMA’.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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 requested that the opponent submit proof of use of all the trade marks on which the opposition is based.

The date of priority of the contested application is 23/10/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 23/10/2012 to 22/10/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Earlier mark 1

Class 42: The services of exhibition of the mentioned fair.

Earlier mark 2

Class 42: The services of an official trade fair.

Earlier mark 3

Class 12: Vehicles, apparatus for locomotion by land, air or water, and engines for land vehicles.

Earlier mark 4

Class 35: Services relating to the organization of exhibitions for commercial or advertising purposes; dissemination of advertising samples and material; business management support, assistance, advice and consultancy; market research and marketing studies; computerized file management; business management; business administration and office functions.

Earlier mark 5

Class 16: Paper and goods made from paper, not included in other classes; cardboard and cardboard articles, not included in other classes; printed matter; leaflets, catalogues and publications (newspapers, magazines or books); bookbinding material; photographs (printed); stationery; adhesives for stationery or household purposes; artists’ materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching materials (except apparatus); printers’ type and printing blocks; plastic materials for packaging purposes (not included in other classes).

Class 35: Import and export services; market research; management of computer files and sales promotion for others; retail sale in shops and/or via worldwide computer networks.

Class 41: Organization of exhibitions for cultural or educational purposes; arranging and conducting of congresses, colloquiums, conferences, seminars and simposiums; publication of texts and books; online electronic publication of books and periodicals; entertainment services and organization of sport competitions.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 21/12/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 26/02/2019 to submit evidence of use of the earlier trade marks. On 20/02/2019, within the time limit, the opponent submitted evidence of use. The opponent also referred to the evidence of reputation submitted previously on 16/11/2018.

The evidence to be taken into account is the following:

Evidence submitted on 16/11/2018

• Annex 1: presentation and website printouts with information about the more than fifty-year-old history of the ‘FIMA’ trade fair of agricultural machinery, referring inter alia to the fairs of 2012, 2014 and 2016.

• Annex 2: articles from the Spanish press, dated in February 2018, concerning the 2018 ‘FIMA’ trade fair.

• Annex 3: another set of articles from the Spanish and international press and websites, dated mostly in 2018 but also in 2017 and 2015, concerning the 2018 ‘FIMA’ trade fair.

• Annex 4: another set of articles from the Spanish press, dated in 2018 and 2017, concerning the 2018 ‘FIMA’ trade fair. The 2016 ‘FIMA’ trade fair is also mentioned once.

• Annex 5: copies of promotional leaflets for the ‘FIMA’ trade fair, dated 1964-2012, 2014 and 2016.

• Annex 6: advertising brochure with information about the 2018 ‘FIMA’ trade fair, mentioning also the figures of the 2016 fair (a large exhibition area, in square meters, and a large number of exhibitors).

• Annex 7: articles from the Spanish press, dated 2017 and 2018, regarding awards given by the opponent (some of them in the context of the ‘FIMA’ trade fair) and one award obtained by the opponent, relating, inter alia, to the ‘FIMA’ trade fair.

• Annex 8: results of an internet search for the word ‘FIMA’ on www.google.es from May 2018, showing that all the hits on the first page of the results refer to the ‘FIMA’ trade fair. Printout from the ‘FIMA’ Facebook page showing around 20 000 followers/‘likes’. Documents concerning the app for the 2018 ‘FIMA’ trade fair.

• Annex 9: internal document concerning the plan for the promotional campaign of the 2018 ‘FIMA’ trade fair, dated in July 2017. Internal document with an overview of the advertising expenditures relating the 2016 and 2018 ‘FIMA’ trade fairs ( tens of thousands of euros).

• Annex 10: decision of the Spanish Patent and Trade Mark Office from August 2018 confirming the reputation of ‘FIMA’ (earlier mark 5).

Evidence submitted on 20/02/2019

• Annex 1: dozens of invoices, dated 2013-2018, concerning the participation of many different Spanish firms at the 2014, 2016 and 2018 ‘FIMA’ trade fairs.

• Annex 2: dozens of invoices and documents concerning the promotion of the 2014, 2016 and 2018 ‘FIMA’ trade fairs, dated 2013-2018.

• Annex 3: visitor’s guides for the 2014 and 2016 ‘FIMA’ trade fairs, including a long exhibitors’ list.

Earlier marks 1 and 2

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the marks as registered are as follows:

Earlier mark 1

,

Earlier mark 2

.

The evidence shows that the mark was essentially used as the word mark ‘FIMA’.

It follows that the mark as used alters the distinctive character of the earlier marks 1 and 2 as registered. This is because earlier marks 1 and 2 are complex marks which contain, apart from the element ‘FIMA’, other distinctive figurative elements, other verbal elements and, in the case of earlier mark 1, also colours. The overall structure of the marks as used and as registered is also quite different. Consequently, the omitted elements in the marks as used alter the distinctive character of the earlier marks concerned.

In view of the above, the Opposition Division considers that the evidence does not show use of the signs as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that earlier marks 1 and 2 were genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) insofar as it is based on earlier marks 1 and 2.

Earlier marks 3 and 5

The evidence of use shows that the mark ‘FIMA’ has been used exclusively for organization of trade fairs of agricultural machinery in Class 35. There is no clear evidence concerning the use of the mark for other services or goods.

However, earlier mark 3 has been registered for various vehicles and their engines in Class 12. Earlier mark 5 has been registered for an array of goods and services encompassing essentially various paper and stationery articles in Class 16, various business-related services in Class 35 (but not including organisation of trade fairs) and educational, cultural and entertainment services in Class 41.

It is evident that the services for which use has been shown do not fall within any of the categories for which earlier marks 3 and 5 are registered. In particular, they do not fall under organization of exhibitions for cultural or educational purposes in Class 41 of earlier mark 5, because the mark was used for trade fairs for commercial or advertising purposes (within Class 35) and not for cultural or educational exhibitions (within Class 41). Therefore, the opponent has not shown use for the goods and services for which the marks are registered, but for other services for which these marks have no protection.

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that earlier marks 3 and 5 were genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) insofar as it is based on earlier marks 3 and 5.

Earlier mark 4

All the documents show that the place of use is Spain. This can be inferred from the name of the city where the ‘FIMA’ trade fair is organised (Zaragoza), the addresses of the participants from all over Spain and the language of most of the documents (Spanish). Therefore, the evidence relates to the relevant territory.

Although many of the documents are dated before or after the relevant period, there is still sufficient evidence dated within, or referring to, the relevant period.

The documents submitted, especially the articles from the press and the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

Regarding the form of use of the mark, reference is made to the above citations of Article 10(3) EUTMDR and Article 18(1), second subparagraph, point (a) EUTMR.

In the present case, the mark as registered is as follows:

.

The Spanish phrase in the lower part of the mark means ‘International Trade Fair of Agricultural Machinery’.

As already mentioned above, the mark was essentially used as the word mark ‘FIMA’.

The omission of the phrase ‘Feria Internacional de la Maquinaria Agrícola’ does not alter the distinctive character of the mark as registered, because it is a descriptive indication of the kind, geographical extent and subject matter of the services.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of earlier mark 4 during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for organization of trade fairs of agricultural machinery in Class 35. These services can be considered to form an objective subcategory of the registered services relating to the organization of exhibitions for commercial or advertising purposes. Therefore, the Opposition Division considers that the evidence shows genuine use of earlier mark 4 only for organization of trade fairs of agricultural machinery in Class 35.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

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

Class 35: Organization of trade fairs of agricultural machinery.

The contested goods and services are the following:

Class 16: Computer software; computer application software; computer application software for mobile telephones and mobile devices; downloadable computer software; electronic publications (downloadable); podcasts; software for conducting general meetings.

Class 35: Advertising; marketing; publicity and promotional services; public relations services; business networking services; business information services; providing business information; business consultancy; business management; business administration services; business research services; business enquiries; market research services; rental of advertising space; business promotional services; business investigations; conducting exhibitions for business purposes; organisation, arranging and conducting of exhibitions; organisation of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; consultancy, advisory and information services relating to the aforesaid services; all of the above services exclusively in relation to financial matters.

Class 41: Organisation, arranging and conducting of conferences, events, exhibitions, seminars, fairs and shows; arranging and conducting commercial, trade and business conferences; conferences, exhibitions and seminars; organisation, arranging and conducting of business conferences and business seminars; organisation of seminars for commercial, promotional and advertising purposes; education, training and instruction services; providing of training; entertainment services; sporting and cultural activities; congresses; arranging and conducting colloquiums; seminars; arranging and conducting of symposiums; publishing services; presentation, production and performance of video and/or sound recordings; presentation, production and performance of shows, musical shows, concerts, videos, radio programmes, and television programmes; consultancy, advisory and information services relating to the aforesaid services; all of the above services exclusively in relation to financial matters.

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

Contested goods in Class 9

The contested goods in this class are various types of software, electronic publications and podcasts. These goods are dissimilar to the opponent’s organization of trade fairs of agricultural machinery in Class 35, since they have nothing relevant in common that could justify finding a level of similarity between them.

Contested services in Class 35

The contested conducting exhibitions for business purposes; organisation, arranging and conducting of exhibitions; organisation of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; all of the above services exclusively in relation to financial matters are similar to a low degree to the opponent’s organization of trade fairs of agricultural machinery in Class 35. Although both sets of services consist in organizing trade fairs or commercial exhibitions and, consequently, in principle coincide in their nature, purpose and method of use, they concern totally different fields, namely financial matters versus agricultural machinery. Therefore, the relevant public, providers and distribution channels will be different.

The remaining contested services in this class, which encompass a variety of business-related and promotional activities, all exclusively in relation to financial matters, are dissimilar to the opponent’s services, since they have nothing relevant in common that could justify finding a level of similarity between them.

Contested services in Class 41

The contested services in this class essentially consist of education, training, entertainment, sports and cultural activities, all relating exclusively to financial matters. They are dissimilar to the opponent’s organization of trade fairs of agricultural machinery in Class 35, since they have nothing relevant in common that could justify finding a level of similarity between them.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the services found to be similar to a low degree are directed at business customers with specific professional knowledge or expertise in different fields, namely agricultural machinery in the case of the opponent’s services and financial matters in the case of the contested services. The degree of attention will be high, because participation at the relevant trade fairs or exhibitions is quite costly and has an important impact on the running of the consumer’s business. Moreover, the relevant trade fairs or exhibitions are not held very often.

3. The signs

	FIMA
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 already mentioned above, the phrase ‘Feria Internacional de la Maquinaria Agrícola’ of the earlier mark means ‘International Trade Fair of Agricultural Machinery’ and is, therefore, non-distinctive for the relevant services.

Regarding the element ‘FIMA’ in the earlier mark, when a sign consists of an independently non-descriptive acronym that precedes or follows a descriptive word combination, the acronym is descriptive as well if the whole sign is perceived by the relevant public merely as a descriptive word combination together with an abbreviation of that word combination. This is because the acronym and word combination together are intended to clarify each other and draw attention to the fact that they are linked (15/03/2012, C‑90/11 & C‑91/11, Natur-Aktien-Index / Multi Markets Fund, EU:C:2012:147, § 32, 34, 40). This will be the case even where the acronym does not account for the mere ‘accessories’ in the word combination, such as articles, prepositions or punctuation marks.

This would, in principle, be the case here, because the element ‘FIMA’ of the earlier mark will be perceived by the relevant public as the acronym of the descriptive phrase ‘Feria Internacional de la Maquinaria Agrícola’ located in the lower part of the mark. Nevertheless, since the earlier mark is validly registered, the element ‘FIMA’ enjoys a minimum degree of distinctiveness per se (in view of the fact that the other element, ‘Feria Internacional de la Maquinaria Agrícola’, is clearly non-distinctive). Consequently, the element ‘FIMA’ is the most distinctive element of the earlier trade mark.

The earlier mark has no element that could be considered clearly more dominant (eye-catching) than other elements.

Regarding the contested sign, in the absence of any additional verbal elements, the word ‘FIMA’ will have no meaning for the relevant public and is, therefore, distinctive to an average degree.

Visually and aurally, the signs coincide in the element ‘FIMA’. However, they differ in the additional non-distinctive phrase ‘Feria Internacional de la Maquinaria Agrícola’ of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, although the public in the relevant territory will perceive the meaning(s) of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark has a reputation in connection with all the services for which it is registered. Following the assessment of proof of use, this claim now concerns only organization of trade fairs of agricultural machinery in Class 35. The claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove reputation is the same as the evidence of genuine use listed above.

The abovementioned evidence indicates that the earlier trade mark has been used for a substantial period of time, that it is among the top five trade fairs in Spain (see the article titled ‘FIMA, la feria grande entre las grandes’ (‘FIMA, the big fair among the big ones’) from the Heraldo newspaper in annex 3 (submitted on 16/11/2018)) and that it is ‘the major showcase for the agricultural world in Southern Europe’ (see the printout from the website of ‘The European Federation of Agricultural Exhibition and Show Organizers’ in annex 3 (submitted on 16/11/2018)).

Although the evidence is not particularly exhaustive, the Opposition Division finds that, taken as a whole, the evidence indicates that earlier mark 4 enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the earlier trade mark enjoys some degree of reputation. Therefore, in the context of Article 8(1)(b) EUTMR, earlier mark 4 enjoys a high degree of distinctiveness acquired through use.

5. Global assessment, other arguments and conclusion

The signs are highly similar. The goods and services are partly similar to a low degree and partly dissimilar. The earlier trade mark’s degree of distinctiveness is high.

However, the services found to be similar to a low degree are directed at business customers in different fields, namely agricultural machinery in the case of the opponent’s services and financial matters in the case of the contested services. The degree of attention of the relevant public will be high.

All in all, although the signs are highly similar, some of the services are similar to a low degree and the earlier mark is highly distinctive, there is no likelihood of confusion on the part of the relevant public. This is because the opponent’s services and the contested services are directed at a different specialised public (that is, moreover, highly attentive).

As stated by the Court, the relevant public for the assessment of the likelihood of confusion is composed of users likely to use both the goods and services covered by the earlier mark and the goods and services covered by the mark applied for that were found to be identical or similar (01/07/2008, T‑328/05, Quartz, EU:T:2008:238, § 23; 10/07/2009, C‑416/08 P, Quartz, EU:C:2009:450).

Since the average consumers of the opponent’s services and the contested services are two different groups of specialised consumers, there is no overlap between them and no confusion can occur in respect of the services that are similar only to a low degree.

The rest of the contested goods and services are dissimilar. As identity/similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition on the ground of Article 8(1)(b) EUTMR and on the basis of earlier mark 4 must be rejected.

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).

1. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of earlier mark 4 has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

Consequently, it is considered that the earlier mark 4 enjoys a certain degree of reputation for organization of trade fairs of agricultural machinery in Class 35.

2. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. The signs have been found highly similar.

3. 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.

The earlier mark is reputed for organization of trade fairs of agricultural machinery in Class 35. It is reputed among the professional public specialised in the field of agricultural machinery.

The contested services in Classes 35 and 41, which comprise services that are similar to a low degree and dissimilar, all relate only to financial matters. The relevant public for these services are professionals in financial matters. The dissimilar contested goods in Class 9 target the public at large. The goods are various types of software, electronic publications and podcasts, whose nature is very different from the nature of organization of trade fairs of agricultural machinery in Class 35.

In view of the above findings, and despite the high degree of similarity of the signs and a certain degree of reputation of the earlier mark, it is unlikely that the public will establish a mental link between the signs. This is because, for the services in Classes 35 and 41, the relevant public is different (i.e. does not overlap). The goods in Class 9 are, first, by their nature very dissimilar from the opponent’s reputed services. Second, the average consumer of those goods, namely software, electronic publications and podcasts, is not likely to be acquainted with the opponent’s trade mark, which is reputed only among the professional public specialised in the field of agricultural machinery.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marzena MACIAK

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.