OPPOSITION No B 3 065 636

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OPPOSITION DIVISION

OPPOSITION No B 3 065 636

Varamiespalvelu-Group Oy, Maariankatu 6, 20100, Turku, Finland (opponent), represented by Heinonen & Co, Fabianinkatu 29 B, 00100, Helsinki, Finland (professional representative)

a g a i n s t

Sound Good Mobile Srl, Sector 1, Str. Năvodari Nr. 20 Vila A, Parter, Apartament 1, Camera 4, Mun. Bucuresti, Romania (applicant)

On 07/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 636 is partially upheld, namely for the following contested goods and services:

Class 5: All the goods applied for in this Class.

Class 9: All the goods applied for in this Class.

Class 10: All the goods applied for in this Class.

Class 25: All the goods applied for in this Class.

Class 38: All the services applied for in this Class.

Class 41: All the services applied for in this Class.

Class 42: All the services applied for in this Class.

2. European Union trade mark application No 17 890 100 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely:

Class 18: All the goods applied for in this Class.

Class 35: Online retail store services connected with the sale of: mobile telephone cases; leather and imitations leather, articles made of these materials, skins and hides, leather goods, all not included in other classes; leather and imitations of leather, and goods made of these materials, goods made of leather or imitations leather, articles made from leather or imitation leather, all not included in other classes; saddlers' and bagmakers' goods of leather and imitation leather; animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, leather articles, leather accessories, suitcases, handbags, belts, leather letter cases, brief cases, key cases, billfolds, leather purses, leather key chains, paper cases, sport bags, brief cases, drivers license card cases, license card cases, purses, card cases, wallets, purses, handbags, money folds, portfolios, zippered portfolios, bags, cases; whips, harness and saddlery; bags (as far as included in class 18), bags made of leather, bags made of imitations leather, bags made of plastic materials, luggage bags, make-up bags, overnight bags, pouches, shopping bags made of skin, shoulder bags, souvenir bags, sport bags, suit bags, textile shopping bags, tool bags sold empty, toweling bags, travel bags, umbrella bags, weekend bags; clothing; footwear; headgear.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 890 100 ‘YMP’ (word mark). The opposition is based on:

- European Union trade mark registration No 12 563 681 Shape1 (figurative mark);

- European Union trade mark registration No 12 563 656 Shape2 (figurative mark);

- international trade mark registration registration No 1 024 912 designating the European Union Shape3 (figurative mark);

- international trade mark registration registration No 1 024 461 designating the European Union Shape4 (figurative mark);

- Finnish trade mark registration No 249 060 Shape5 (figurative mark);

- Finnish trade mark registration No 236 794 ‘VMP-GROUP’ (word mark), and;

- international trade mark registration registration No 881 857 designating the European Union ‘VMP-GROUP’ (word mark).

The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier marks and Article 8(5) EUTMR in relation to earlier Finnish trade mark registration No 249 060.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 563 656.

a) The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Computer software; software for billing, book keeping, business financial administration, payroll administration and personnel management; software for document management; mobile applications; electronic publications, downloadable; Protective and safety clothing and equipment.

Class 35: Advertising; Business management; Business administration; Office functions; Payroll preparation; Payroll processing services [for others]; Preparation of payrolls [for others]; Personnel management; Personnel services; Personnel recruitment; Personnel placement; Personnel selection [for others]; Serving as a human resources department for others; Maintenance of personnel records [for others]; Advertising services relating to the recruitment of personnel; Interviewing services [for personnel recruitment]; Collection of personnel information; Psychological testing for the selection of personnel; Employment agencies; organization of trade fairs for commercial or advertising purposes; outsourcing services [business assistance]; procurement services for others [purchasing goods and services for other businesses]; consultation relating to the afore mentioned services.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Personnel training; organizing events for educational purposes; Conferences, exhibitions and competitions; conferences, exhibitions and competitions relating to personnel management and recruitment; consultation relating to the afore mentioned services.

The contested goods and services are the following:

Class 5: Gels for use as personal lubricants; sexual stimulant gels; topical preparations, namely, gels for enhancing sexual arousal, enjoyment and response; antiperspirants [toiletries]; feminine hygiene products.

Class 9: Media content; digital media, namely pre-recorded video cassettes, digital video discs, compact discs, DVDs, downloadable audio and video recordings, DVDs and high definition digital disks featuring adult entertainment; prerecorded magnetic and optical data carriers featuring content in the field of adult entertainment and adult subject matter; electronic publications, namely, books and magazines featuring adult entertainment recorded on computer media; downloadable video, magazines, books and television programs featuring adult entertainment.

Class 10: Sex toys; sex aids; anal plugs; artificial penises, being adult sexual aids; artificial vaginas, being adult sexual aids; benwa balls, being adult sexual aids; penis enlargers, being adult sexual aids; love dolls [sex dolls]; vibrators, being adult sexual aids.

Class 18: Leather and imitations leather, articles made of these materials, skins and hides, leather goods, all not included in other classes; leather and imitations of leather, and goods made of these materials, goods made of leather or imitations leather, articles made from leather or imitation leather, all not included in other classes; saddlers' and bagmakers' goods of leather and imitation leather; animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, leather articles, leather accessories, suitcases, handbags, belts, leather letter cases, brief cases, key cases, billfolds, leather purses, leather key chains, paper cases, sport bags, brief cases, drivers license card cases, license card cases, purses, card cases, wallets, purses, handbags, money folds, portfolios, zippered portfolios, bags, cases; whips, harness and saddlery; bags (as far as included in class 18), bags made of leather, bags made of imitations leather, bags made of plastic materials, luggage bags, make-up bags, overnight bags, pouches, shopping bags made of skin, shoulder bags, souvenir bags, sport bags, suit bags, textile shopping bags, tool bags sold empty, toweling bags, travel bags, umbrella bags, weekend bags.

Class 25: Clothing; footwear; headgear.

Class 35: Online retail store services connected with the sale of: gels for use as personal lubricants, sexual stimulant gels; topical preparations, namely, gels for enhancing sexual arousal, enjoyment and response; antiperspirants [toiletries]; feminine hygiene products; mobile telephone cases; compact discs, DVDs, DVDs and high definition digital disks featuring adult entertainment; prerecorded magnetic and optical data carriers featuring content in the field of adult entertainment and adult subject matter; electronic publications; sex toys; sex aids; anal plugs; artificial penises, being adult sexual aids; artificial vaginas, being adult sexual aids; benwa balls, being adult sexual aids; penis enlargers, being adult sexual aids; love dolls [sex dolls]; vibrators, being adult sexual aids; erotic games; erotic online games; accessories for erotic games for couples; leather and imitations leather, articles made of these materials, skins and hides, leather goods, all not included in other classes; leather and imitations of leather, and goods made of these materials, goods made of leather or imitations leather, articles made from leather or imitation leather, all not included in other classes; saddlers' and bagmakers' goods of leather and imitation leather; animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, leather articles, leather accessories, suitcases, handbags, belts, leather letter cases, brief cases, key cases, billfolds, leather purses, leather key chains, paper cases, sport bags, brief cases, drivers license card cases, license card cases, purses, card cases, wallets, purses, handbags, money folds, portfolios, zippered portfolios, bags, cases; whips, harness and saddlery; bags (as far as included in class 18), bags made of leather, bags made of imitations leather, bags made of plastic materials, luggage bags, make-up bags, overnight bags, pouches, shopping bags made of skin, shoulder bags, souvenir bags, sport bags, suit bags, textile shopping bags, tool bags sold empty, toweling bags, travel bags, umbrella bags, weekend bags; clothing; footwear; headgear; the bringing together for the benefit of others of online adult entertainment services enabling customers to conveniently compare and purchase those services.

Class 38: Telecommunication services; broadcasting services; computer communication and Internet access; telephone and mobile telephone services; transmission of vision via interactive multimedia networks; digital communications services; wireless communications services; digital transmission services; electronic transmission of images (Services for the -); electronic transmission of voices (Services for the -); electronic and telecommunication transmission services; electronic transmission of messages and data; secured data, sound and image transmission services; Information and advisory services relating to telecommunication services; interactive telecommunications services; cable transmission of sounds, images, signals and data; communication services provided electronically; on-line information services relating to telecommunications; network transmission of sounds, images, signals and data; message sending services; message services; message sending, receiving and forwarding; sending [transmission] of news; secure transmission of data, sound or images; voice and data transmission services; message sending and receiving services; telecommunications services for the distribution of data; telecommunications services using cellular radio networks; delivery of digital audio and/or video by telecommunications; communication of data by means of telecommunications; transmission of short messages; delivery of messages by audiovisual media; transmission of coded messages and images; delivery of messages by electronic media; telecommunications access services; video transmission services; video communication services.

Class 41: Entertainment services, namely, providing a website featuring videos, film clips, photographs, multimedia materials, magazines, books and television programs in the field of adult entertainment; production of videos and photographs in the field of adult entertainment; electronic publishing services, namely, publication of text and graphic works, video and photographs of others featuring adult entertainment; entertainment services, namely, providing a website for on-line gambling.

Class 42: Design services; science and technology services; data duplication and conversion services, data coding services; software development, programming and implementation; hosting services and software as a service and rental of software; updating of memory banks of computer systems; updating websites for others; operating search engines; computer graphics services; database design and development; computer system design; computer design and programming services; computer network services; development of systems for the storage of data; development of systems for the processing of data; development of systems for the transmission of data; development of computer based networks; design and development of computer hardware and software; design and development of networks; computer network design for others; computer specification design; design of communication systems; design services relating to data transmission test tools; designing, managing and monitoring online forums for discussion; digital watermarking; preparation of computer programs for data processing.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Furthermore, in its observations, the applicant makes several considerations as regards the goods and services which are actually produced/rendered by the opponent and by the applicant and the alleged dissimilarity of the commercial fields in which the applicant and the opponent actually operate in the marketplace.

In this regard, it should be noted that the goods/services that are actually produced/provided by the opponent are not relevant for the comparison of the goods and services in the context of the present decision. The comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services, as the opponent’s mark is not subject to a proof of use obligation.

Any actual or intended use not stipulated in these lists is not relevant for the comparison, since this comparison is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T 487/08, Kremezin, EU:T:2010:237, § 71).

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 Classes 5, 10

The contested goods in Classes 5 (various gels, antiperspirants and feminine hygiene products) and 10 (various sex toys and related aids) are dissimilar to all the opponent’s goods and services in Classes 9, 35 and 41. These goods and services have no relevant commonalities. They differ in nature, purpose, method of use and their specific intended use is different. They are normally produced/provided by different companies, follow different distribution channels and also target different consumers. They are not complementary or in competition either.

Contested goods in Class 9

The contested Media content is included in the category of, or overlaps with, the opponent’s Computer software. Therefore, they are identical.

The contested electronic publications, namely, books and magazines featuring adult entertainment recorded on computer media; downloadable magazines, books featuring adult entertainment are included, or overlap with, the broad category of the opponent’s electronic publications, downloadable. Therefore, they are identical.

The contested digital media, namely digital video discs, compact discs, DVDs are identical to the opponent’s Compact discs, DVDs and other digital recording media, either because they are identically contained or because the opponent’s goods include the contested goods, as a broader category.

The contested downloadable video and television programs featuring adult entertainment are similar to the opponent’s Computer software, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested digital media, namely pre-recorded video cassettes, downloadable audio and video recordings, DVDs and high definition digital disks featuring adult entertainment include digital media with recorded content. Likewise, the contested prerecorded magnetic and optical data carriers featuring content in the field of adult entertainment and adult subject matter are carriers with recorded content on them. These contested goods are at least similar to the opponent’s Apparatus for recording, transmission or reproduction of sound or images. These goods usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 18

The contested goods in this class are not similar to the opponent’s goods and services in Classes 9, 35 and 41. These sets of goods and services have no relevant point of contact. They differ in nature, purpose and method of use. They are normally produced/provided by different companies, follow different distribution channels and also target different consumers. They are not complementary or in competition either. Therefore, they are dissimilar.

Contested goods in Class 25

The contested Clothing; footwear; headgear are similar to a low degree to the opponent’s Protective and safety equipment in Class 9. These sets of goods usually coincide in producer, relevant public and distribution channels.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as retail store services, wholesale services, internet shopping, catalogue or mail order services in Class 35.

Therefore, the contested Online retail store services connected with the sale of: compact discs, DVDs; electronic publications are similar to a low degree to the opponent’s Compact discs, DVDs; electronic publications, downloadable. Likewise, for the same reasons outlined above, the contested the bringing together for the benefit of others of online adult entertainment services enabling customers to conveniently compare and purchase those services are considered at least similar to a low degree to the opponent’s Entertainment services in Class 41, as entertainment is a broad term that encompasses and is, therefore, identical to online adult entertainment services. Although online adult entertainment services is a service, it can also be subject to retail/internet shopping, etc. and largely the same principles apply as those relating to retail/internet shopping of goods. As to the contested Online retail store services connected with the sale of: erotic games; erotic online games, these services are similar to a low degree to the opponent’s Computer software. This is because the goods subject to retail and the opponent’s software overlap and are identical.

However, all the remaining contested services in Class 35 are dissimilar to the opponent’s goods in Class 9. This is because according to the practice of the Opposition Division, similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical (as in the above paragraph). This condition is not fulfilled in the present case in relation to the remaining contested online retail store services, since the goods at issue are only similar or are dissimilar to the opponent’s goods. Therefore, all the remaining contested online retail store services of various goods (listed above) are dissimilar to all the opponent’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

The remaining contested services in Class 35 are not similar either to the opponent’s services in Class 35 and 41. The contested services concern activities in the field of retail of the specific goods listed, whereas the opponent’s services in Class 35 cover specialised services in the field of advertising, business management and administration, office functions, personnel management, procurement services (Class 35) and services in the field of entertainment, sports, education and training (Class 41). These sets of services differ in nature, purpose, and method of use. They usually differ in providers, distribution channels and targeted public. Furthermore, they are neither complementary to each other nor in competition.

Contested services in Class 38

The contested services in Class 38 consist of a variety of telecommunication or information services thereof.

Telecommunication services allow people to communicate with one another by remote means. The opponent’s apparatus for recording, transmission or reproduction of sound or images is used to communicate audio or video information over a distance via radio waves, optical signals, etc. or along a transmission line.

Consumers use apparatus for recording, transmission or reproduction of sound or images, computers and telephones when they want to communicate with others.

There is a link between these goods in Class 9 (telecommunication apparatus) and the services in Class 38 (telecommunication services). They are similar because they are complementary and, even though their nature is different, their purposes and distribution channels are the same.

The remaining contested services, namely the contested Information and advisory services relating to telecommunication services; on-line information services relating to telecommunications are similar to a low degree to the opponent’s Apparatus for recording, transmission or reproduction of sound or images, as they have the same purpose. They usually coincide in relevant public and distribution channels.

Contested services in Class 41

The contested Entertainment services, namely, providing a website featuring videos, film clips, photographs, multimedia materials, magazines, books and television programs in the field of adult entertainment; production of videos and photographs in the field of adult entertainment; entertainment services, namely, providing a website for on-line gambling are included in the broader category of the opponent’s Entertainment. Therefore, they are identical.

The contested electronic publishing services, namely, publication of text and graphic works, video and photographs of others featuring adult entertainment are similar to the opponent’s electronic publications, downloadable in Class 9, as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested services in Class 42

The contested services in this class are related to technological and design services, as well as design, development, hosting, updating etc. of computer systems, databases, networks, software and hardware as well as to design. These services are similar to the opponent’s Computer software. Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered similar.

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to various degrees are directed both at the public at large and at professional customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

c) The signs

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YMP

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).

The earlier mark is figurative and consists of the verbal element ‘vmp’ written in relatively standard lowercase letters followed by a device element consisting of three stylised human silhouettes in black and red colour. The contested sign is a word mark and consists of the verbal element ‘YMP’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the contested sign is represented in upper or lowercase characters.

The three-letter sequences ‘vmp’ and ‘ymp’ of the signs have such a structure that they will be probably be perceived as some kind of an abbreviation/acronym. However, they have no known meaning in the relevant territory. As they have no specific, descriptive, non-distinctive or otherwise weak meaning in relation to the relevant goods and services, their inherent distinctive character is normal.

The earlier sign contains figurative elements, such as slight stylisation of the letters, colours and human silhouettes. These elements will be seen either as ornamental and hardly distinctive, if at all (the colours and the slightly stylised letter font) or as less important trade identifiers (the human silhouettes). When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the word element in the sign is, in principle, more important than the figurative elements.

The marks have no element(s) that could be considered more dominant (visually eye-catching) than other element(s).

Visually, the signs coincide in the sequence of letters ‘*mp’, and differ in the first letters ‘V’ versus ‘Y’. Indeed, the signs differ in their beginning and, as pointed out by the applicant, such difference in the beginning is normally an important factor. However, in the present case, this difference is somehow mitigated by the undeniable visual similarity between these two initial letters: they have very similar shape and form, differing only in the lower-part prolongation of the letter ‘Y’. As mentioned above, the signs differ in the additional figurative elements of the earlier mark. These nevertheless are hardly distinctive or are less important than the verbal element, which will be perceived as the main trade identifier.

The length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. Therefore, in short words, small differences may frequently lead to a different overall impression. In contrast, the public is less aware of differences between long signs.

In the present case the main coincidence in the signs is in their only and normally distinctive verbal elements, each consisting of three letters, ‘vmp’ vs. ‘YMP’; these elements are, consequently, short. However, as pointed out above the only different letter is a visually similar letter.

Consequently, bearing in mind all the foregoing, the mentioned similarities and difference and their particular weight, as well as the fact that the signs coincide in two letters and that the differing one is visually similar, it is considered that the signs are visually similar to a lower than average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘-MP’, which will be pronounced identically, by spelling them out. The punctuation of the marks differs in the sound of their initial letters ‘V’ versus ‘Y’. Consequently, in view of the shortness of the signs and taking into account the mentioned differences and coincidences, it is considered that the signs are aurally similar to a low degree.

The concepts of the signs have been defined above. As mentioned, the contested sign will not be associated with a concept and the earlier mark will be associated with the concept of human silhouettes. To that extent, the signs are not conceptually similar. Nevertheless, the human silhouettes in the earlier mark will be seen as less distinctive/less important trade identifiers, or even ornamental and thus they have a restricted conceptual impact. Therefore, it is likely that the attention of the relevant public will be attracted by the additional fanciful distinctive verbal element in the sign, which has no meaning.

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

d) 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present stage of the proceedings (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

In the present case, the contested goods and services are partly identical and similar to various degrees and partly dissimilar to the opponent’s goods and services. The relevant goods and services are directed both at the public at large and at professional consumers, but since the general public is more prone to confusion, the analysis is focused on the general public. The the level of attention varies from average to high. The inherent distinctive character of the earlier mark is normal.

The signs are visually similar to a lower than average degree and they are aurally similar to a low degree. The signs are not conceptually similar but this is due to less important figurative elements the relevance of which is not particularly strong, as explained above and the attention of the public will be drawn by the fanciful elements ‘vpm’ vs. ‘ymp’.

The similarities between the signs are on account of the normally distinctive element ‘VMP’, which constitutes the only verbal and most distinctive element of the earlier mark and the only verbal element ‘YMP’ of the contested sign. While it is indeed true that the signs differ in certain aspects, the differences are not of decisive importance. As explained above, the coincidences in the signs are found in rather short verbal elements. However, the only different letter is a visually similar letter and it does not constitute a significant difference. Consequently, the fact that the signs coincide in two letters in the same order and the differing one is visually similar, leads a finding of likelihood of confusion.

In the present case, account is taken of the fact that consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Considering all the above, including the imperfect recollection and interdependence principle between the relevant factors, the Opposition Division finds that there is a likelihood of confusion on the part of the relevant public.

In its observations, the applicant argues that its area of activities is completely different from the opponent’s activities. The applicant filed some documents in relation to its activities. It argues, in the main, that its website is not readily accessible, that it is active in a strictly regulated area of adult entertainment which is different from the area of human resources of the opponent and that confusion of the two marks is totally excluded. As regards these arguments of the applicant in relation to the actual use in the market of the trade marks in conflict for different goods and services, it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58).

Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, it is the opponent’s rights and their scope of protection as registered (save where proof of use has been validly requested) and the contested sign’s as applied for, that are relevant. Therefore, the applicant’s claims as regards the alleged lack of real conflict between the signs on the marketplace is dismissed, as it has no impact for the purposes of the present assessment.

Taking into account all the relevant circumstances of the case, the Opposition Division finds that there is a likelihood of confusion on the part of the general public, even if displaying a high level of attention. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

Consequently, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 12 563 656. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar to various degrees to those of the earlier trade mark.

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

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

- European Union trade mark registration No 12 563 681 Shape7 (figurative mark) for goods and services in Classes 9, 35 and 41;

- international trade mark registration registration No 1 024 912 designating the European Union Shape8 (figurative mark) for services in Classes 35 and 41;

- international trade mark registration registration No 1 024 461 designating the European Union Shape9 (figurative mark) for goods and services in Classes 35 and 41;

- Finnish trade mark registration No 249 060 Shape10 (figurative mark) for goods and services in Classes 35 and 41;

- Finnish trade mark registration No 236 794 ‘VMP-GROUP’ (word mark) for goods and services in Classes 35 and 41, and;

- international trade mark registration registration No 881 857 designating the European Union ‘VMP-GROUP’ (word mark) for goods and services in Classes 35 and 41.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness/reputation of the earlier trade marks in relation to dissimilar services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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 abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

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

a) Reputation of the earlier trade mark

According to the opponent, the earlier Finnish trade mark registration No 249 060 Shape11 has a reputation in Finland in relation to all the services for which it is registered.

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 19/04/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Finland prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 35: Advertising; business management; business administration; office functions; all related to employment services.

Class 41: Education; providing of training; all related to employment services.

The opposition remains directed against all the contested goods in Classes 5, 10 and 18 (will not be listed here for economy), as well as against the remaining contested services in Class 35, namely:

Class 35: Online retail store services connected with the sale of: gels for use as personal lubricants, sexual stimulant gels; topical preparations, namely, gels for enhancing sexual arousal, enjoyment and response; antiperspirants [toiletries]; feminine hygiene products; mobile telephone cases; DVDs and high definition digital disks featuring adult entertainment; prerecorded magnetic and optical data carriers featuring content in the field of adult entertainment and adult subject matter; sex toys; sex aids; anal plugs; artificial penises, being adult sexual aids; artificial vaginas, being adult sexual aids; benwa balls, being adult sexual aids; penis enlargers, being adult sexual aids; love dolls [sex dolls]; vibrators, being adult sexual aids; accessories for erotic games for couples; leather and imitations leather, articles made of these materials, skins and hides, leather goods, all not included in other classes; leather and imitations of leather, and goods made of these materials, goods made of leather or imitations leather, articles made from leather or imitation leather, all not included in other classes; saddlers' and bagmakers' goods of leather and imitation leather; animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, leather articles, leather accessories, suitcases, handbags, belts, leather letter cases, brief cases, key cases, billfolds, leather purses, leather key chains, paper cases, sport bags, brief cases, drivers license card cases, license card cases, purses, card cases, wallets, purses, handbags, money folds, portfolios, zippered portfolios, bags, cases; whips, harness and saddlery; bags (as far as included in class 18), bags made of leather, bags made of imitations leather, bags made of plastic materials, luggage bags, make-up bags, overnight bags, pouches, shopping bags made of skin, shoulder bags, souvenir bags, sport bags, suit bags, textile shopping bags, tool bags sold empty, toweling bags, travel bags, umbrella bags, weekend bags; clothing; footwear; headgear.

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 20/02/2019 the opponent submitted the following evidence:

Exhibit 1: An extract from the website of the PRH - Finnish Patent and Registration Office, in particular from the list of trade marks with reputation in Finland. It can be seen from the document that the trade mark ‘VMP’ of the opponent was approved on 15/09/2015 and inscribed to the list of trade marks with reputation in Finland. The reputation of the trade mark ‘VMP’ concerns Staff leasing in class 35 belonging to the group ‘People responsible of staffing and training’, and the validity of the inscription is until 15/09/2020.

Exhibit 2: A document titled ‘Brand renewal launch campaign, spring 2010’ showing the marketing expenses in relation to the brand renewal campaign from the brand ‘Varamiespalvelu’ to the brand ‘VMP’. The opponent explains that its earlier reputed trade mark ‘Varamiespalvelu’ was changed to ‘VMP’ in 2010. It can be seen that the opponent spent nearly 800 000 EUR in the launch campaign of the mark all over Finland. The main message of the campaign is ‘Varamiespalvelu is now VMP’.

Exhibit 3: Samples of press articles and related marketing material dated between 2010 - 2013. The opponent explains that the brand renewal launch campaign consisted of, inter alia, television and radio commercials, printed advertisements, renewal of the company website, internet marketing, advertisements in the company’s locations etc. which all contained the trade mark ‘VMP’. With this evidence, we are demonstrating the high visibility of the opponent’s ‘VMP’ trade mark among the Finnish public.

Exhibit 4: A market research (awareness and image research) conducted by Dagmar Oy in December 2011. The research shows that the opponent is the best-known company in the field of staff leasing in Finland (in total 97% of the people recognized the mark). In December 2011 the spontaneous recognition of the mark ‘VMP’ was 37% and assisted recognition 49%.

Exhibit 5: A market research conducted by Taloustutkimus Oy in 2014. The research shows that 41% of the Finnish know the mark ‘VMP’ as the opponent’s trade mark (assisted recognition).

Exhibit 6: Printouts from the Finnish Patent and Registration Office’s website with information and details concerning the ‘List of Trademarks with a Reputation’, such as effects, conditions for entry, validity and renewal, removal, etc. It is written, for example, inter alia, that,

Shape12

And also, inter alia, that …

Shape13

Exhibit 7: A copy of the original certificate of acceptance on the ‘List of Trademarks with a Reputation’ of the trade mark ‘VMP’ issued by the Finnish Patent and Registration Office.

Exhibit 8: Printouts concerning the public IPO (initial public offering) of ‘VMP’ and company fact sheet/ Nasdaq report of being a publicly listed company. The opponent explains that with this evidence, they are demonstrating the reputation and high visibility of the opponent’s ‘VMP’ trade mark among the Finnish public.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Finland in relation to staff leasing services in class 35.

It is clear from the evidence that the earlier trade mark has been subject to long-standing use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by several independent sources. The marketing expenditure and market share shown by the evidence and the various references in the press to its success all show that the mark enjoys a sufficiently high degree of recognition among the relevant public. This finding is not contested by the applicant either who noted the following:

Shape14

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to staff leasing services in Class 35, whereas there is no reference to the remaining services. This is clear, for example, from the market share reports and the certificate for inscription of the mark to the list of trade marks with reputation, where only the former are mentioned.

b) The signs

Shape15

YMP

Earlier trade mark

Contested sign

The relevant territory is Finland.

The earlier mark is figurative and consists of the verbal element ‘vmp’ written in relatively standard lowercase letters. The contested sign is a word mark and consists of the verbal element ‘YMP’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the contested sign is represented in upper or lowercase characters.

As to the slight stylisation of the letters of the earlier mark, the font of the letters is quite commonplace and banal and presents no memorable features. Therefore, the slightly stylised letter font will be seen as ornamental and is non-distinctive.

The marks have no element(s) that could be considered more dominant (visually eye-catching) than other element(s).

Visually, the signs coincide in the sequence of letters ‘*mp’, and differ in the first letters ‘V’ versus ‘Y’. Indeed, the signs differ in their beginning and, as pointed out by the applicant, such difference in the beginning is normally an important factor. However, in the present case, this difference is somehow mitigated by the undeniable visual similarity between these two initial letters: they have very similar shape and form, differing only in the lower-part prolongation of the letter ‘Y’. As mentioned above, the signs differ in the font of the letters of the earlier mark but this difference is of limited, if any, impact as it is non-distinctive.

In the present case, the main coincidence in the signs is in their only and normally distinctive verbal elements, each consisting of three letters, ‘vmp’ vs. ‘ymp’; these elements are, consequently, short. However, as pointed out above the only different letter is a visually similar letter.

Consequently, bearing in mind all the foregoing, the mentioned similarities and differences and their particular weight, as well as the fact that the signs coincide in two letters and that the differing one is visually similar, it is considered that the signs are visually similar to an average degree.

The concepts of the signs have been defined above. Since neither of the signs has a meaning for the public in the relevant territory, a conceptual comparison is not possible and, hence, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

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

As indicated above in section b) of this part of the decision, the signs are visually similar to an average degree, aurally similar to a low degree and the conceptual aspect is neutral. The inherent degree of distinctiveness of the earlier mark is normal. This similarity is sufficiently strong to lead to a likelihood of confusion when the signs are featured on identical or similar products or services. Furthermore, the earlier trade mark has a reputation in relation to staff leasing services and this reputation is sufficiently high. At the same time, the reputation belongs to a fairly specialised field. The contested sign seeks protection for a number of goods and services in Classes 5, 10, 18 and 35 that are dissimilar to the reputed services of the opponent.

In the present case, the services of the earlier trade mark target both the professional public (employers) as well as the public at large (actual and potential employees, people searching for a job). The majority of the contested goods and services are targeted at the public at large and to a lesser extent to professionals (e.g. some of the goods in Class 18, such as leather, animal skins, hides, etc. that are raw materials directed to professionals in the respective field). Therefore, there is a certain overlap between the relevant public, as the relevant public for the contested trade mark can be the same as the relevant public for the earlier trade mark, namely the public at large.

When an association between the marks needs to be established, the Court has observed that it is sufficient that a part of the public that is already familiar with the earlier mark be exposed to the later mark. A link between the signs will be easier to establish where the earlier mark is known to the public at large, or where the consumers of the conflicting goods/services largely overlap.

As to the nature of the goods and services in question, apart from being not similar, they do not belong to the same or closely related markets. Nevertheless, as pointed out above though, the opponent’s mark is not only featured on services directed to professionals but also target the public in general. The contested goods and services do not target a particular category of consumers but instead are distributed through channels available to the general public. Since both signs target the general public, it would be unfeasible and artificial, in the Opposition Division’s opinion, to consider that the consumers of the goods/services under the conflicting signs belong to a definite group of consumers. Therefore, it is more than conceivable that there exists an overlap between the consumers familiar with the prior mark and those encountering the contested sign; this, as discussed above, is reinforced by the similarity between the signs and by the sufficient degree of reputation of the earlier mark amongst the public. Therefore, although no direct connection can be established between the goods/services covered by the marks in dispute since they are not similar, an association with the earlier mark remains possible, taking into account the degree of similarity between the signs, the degree of the earlier mark’s inherent distinctive character and the degree of reputation acquired by the earlier mark.

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.

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

Detriment to repute (tarnishing)

Detriment to repute occurs where the goods or services covered by the contested trade mark appeal to the public’s senses in such a way that the earlier mark’s power of attraction is diminished. There is a risk of such detriment occurring, inter alia, where the contested goods or services have a characteristic or a quality that may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the contested trade mark (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 39).

In this respect the opponent argues the following.

 The opponent’s earlier trade mark VMP is a very distinctive trade mark. The reputation of the VMP trade mark in Finland is such that there is a sufficient degree of knowledge of the mark that the public, when confronted with the opposed mark YMP word mark, makes an association between the marks, and the earlier VMP marks is consequently damaged;

 Detriment involves proving the existence of a link whereby the opposed mark YMP brings the opponent’s earlier VMP trade mark into mind and that the use of the contested mark is likely to tarnish the reputation of the opposing mark.

 Detriment to repute occurs where the goods or services for which the mark applied for is used appeal to the public's senses in such a way that the earlier mark's power of attraction is diminished. The risk of that detriment can, inter alia, occur where those goods or services have a characteristic or a quality which may have a negative influence on the image of an earlier mark with a reputation on account of it being identical or similar to the mark applied for.

 Tarnishment may be due to: inherently unsavoury junior goods, an incompatibility of senior and junior goods, or a conflict or incompatibility between the image of the earlier trade mark and the junior goods or the later trade mark.

 The goods and services of the opposed mark are mostly related to adult entertainment and pornography. The goods and services are themselves unsavoury which would lead to detriment to the repute of the opponent’s earlier trade mark due to the high similarity of the marks.

 Most of the goods and services covered by the opponent’s earlier trade mark are related to personnel services, recruitment and management, whereas the goods and services of the opposed mark are mostly related to adult entertainment. The goods and services are clearly incompatible with each other. The fact that the opposed mark is to be used for adult entertainment and related products and services strengthens the likelihood that the relevant public will make a negative connection with the opponent’s earlier trade mark, which has a reputation in personnel services. Thus, the goods and services of the opposed mark convey a negative image which will negatively affect the services of the opponent’s earlier trade mark.

 The image possessed by the opponent’s earlier trade mark is that of premium personnel services. Therefore, the nature of the goods and services of the opposed mark, being adult entertainment and related goods and services, is directly conflicting with the image of the opponent’s earlier trade mark.

 Based on the above, the opposed mark YMP would clearly and in all likelihood cause detriment to the repute of the opponent’s trade mark with a reputation in Finland.

As noted above, the existence of a link in the minds of consumers when encountering the contested sign is not, on its own, sufficient to establish or determinative of establishing an adverse effect on the earlier mark’s repute. For such an effect to occur, either the contested mark or the goods covered by the contested mark must have a negative or detrimental impact when associated with the reputed mark. In principle, tarnishment may occur when the reputation of the earlier trade mark is tainted or debased when it is reproduced either in an obscene, degrading or inappropriate context, or in a context that is not inherently unpleasant but that proves to be incompatible with a particular image the earlier trade mark has acquired in the eyes of the public, due to the promotional efforts of its owner.

As the opponent claims, its trade mark represents a brand associated with particular business values such as reliability, certainty, seriousness. The company has established itself as a reliable partner caring for the interests of employers and employees. As may be inferred, the brand has created a positive image in the respective field.

In the present case, the Opposition Division considers that part of the applicant’s goods and services (listed below) could potentially provoke a negative mental link in consumer’s mind. The contested goods in Classes 5, 10 and 35 cover lubricants, sexual stimulant gels, hygienic products, sex toys and sex aids or related online retail store services thereof, including of adult entertainment content. Indeed, it is likely that these goods and services may provoke associations that do not correspond with the values and image that the earlier trade mark embodies. The opponent’s services are related to management of personnel and human resources, whereas the contested goods and services might be considered obscene, incompatible, inappropriate and degrading among the mainstream public; furthermore, it could damage the idea of reliability and business certainty that the brand conveys to its public and thus could have an unfavorable impact on the repute of the earlier mark.

According to the Court of Justice of the European Union, ‘… the existence of injury consisting of detriment to the distinctive character or the repute of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect’ (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 35).

In this regard, the Opposition Division points out that, nowadays, in addition to visiting physical premises (e.g. sex shops), consumers are often given the alternative

option of making purchases online. In this case, it cannot be ruled out that some of the public that is already familiar with the earlier mark and is aware of its values may be involuntarily exposed to the contested mark, for example in the internet.

Therefore, taking into account all the above circumstances and the opponent’s line of argumentation, the Opposition Division concludes that the contested trade mark is likely to be detrimental to the repute of the earlier trade mark in relation to all the contested goods in Classes 5 and 10 and the following contested services in Class 35: Online retail store services connected with the sale of: gels for use as personal lubricants, sexual stimulant gels; topical preparations, namely, gels for enhancing sexual arousal, enjoyment and response; antiperspirants [toiletries]; feminine hygiene products; DVDs and high definition digital disks featuring adult entertainment; prerecorded magnetic and optical data carriers featuring content in the field of adult entertainment and adult subject matter; sex toys; sex aids; anal plugs; artificial penises, being adult sexual aids; artificial vaginas, being adult sexual aids; benwa balls, being adult sexual aids; penis enlargers, being adult sexual aids; love dolls [sex dolls]; vibrators, being adult sexual aids; accessories for erotic games for couples.

However, as far as the remaining contested goods and services in Classes 18 and 35 are concerned, the Opposition Division finds that such a damage would not occur, as they would not have the same undesirable connotation and they would not be incompatible with the image and values portrayed by the reputation of the earlier mark. It follows that the use of the contested sign on these remaining goods and services could not be considered detrimental to the repute of the earlier sign.

The Opposition Division will, therefore, continue the analysis of the Article 8(5) EUTMR by assessing the risk of the contested sign to take unfair advantage of the distinctive character or repute of the earlier mark and be detrimental to its distinctive character, as far as the remaining contested goods and services are concerned.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36).

The opponent bases its claim on the following.

 From the evidence submitted it is clear that the applicant is likely to benefit from the well-established reputation of the opponent’s trade mark.

 The applicant is in all likelihood going to unjustly benefit from the goodwill and reputation of the opponent’s trade mark by registering and using a highly similar name for identical, highly similar and similar goods and services. The applicant would without doubt automatically capitalize on the famous earlier mark by engaging in commercial parasitism.

 The applicant would clearly benefit from the ready market held by the opponent thereby causing considerable detriment to the reputation of the VMP mark.

 The opposed application is very similar to the opponent’s earlier trade mark due to their dominant parts being near identical, and involves identical, highly similar and similar goods and services.

 The opponent enjoys an extremely strong reputation in Finland, of which the applicant would benefit from. It is therefore clear that there is a high likelihood of a link in the mind of relevant consumers when confronted with the contested mark.

 If registered, the opposed mark is very likely to ride on the coat-tails and trade on the reputation of the opponent’s earlier trade mark, resulting in a ready launching pad for the applicant to put its products on the market and render its services on the same; substantial savings in advertising and promotional costs due to the possibility to exploit the opponent’s marketing efforts as well as an increase in sales figures because the applicant will be able to benefit from the power of attraction, reputation and prestige of the opponent’s earlier trade mark.

However, the Opposition Division is not persuaded by these arguments. While the relevant sections of the public for the goods or services covered by the conflicting marks is the same or at least overlaps to some extent, those goods or services belong to completely different fields and it is not very plausible that the public would be reminded of the earlier mark in such a way as to take unfair advantage of the earlier mark’s reputation or distinctive character. It is not likely that the contested trade mark, applied to the goods/services in Classes 18 and 35 would take a ‘free-ride’ or exploit the investment of the opponent or that the characteristics projected by the earlier mark reputed for staff leasing would be transferred to the contested goods and services. In the present case, there is no special connection between the goods/services, which would allows for some of the qualities of the opponent’s services to be attributed to the goods/services of the applicant. The markets of the conflicting goods/services are totally divergent and a ‘brand extension’ does not seem natural or likely. The Opposition Division also observes that the opponent did not submit any relevant arguments in relation to how the mark applied for would take unfair advantage of the distinctive character or the repute of the earlier mark in relation to the specific contested goods and services in Classes 18 and 35. Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is insufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual 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).

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Detriment to the distinctive character (dilution)

Detriment to the distinctive character of the earlier mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to ‘dispersion’ of the identity of the earlier mark (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 29).

The opponent bases its claim on the following.

 By being highly similar to the opponent’s earlier trade mark and said trade mark enjoying substantial reputation in Finland, the opposed mark would greatly weaken its distinctive character. As a result, the relevant public would not associate it to the opponent and its products and services as currently, but would disassociate at least part of them to clearly think the opposed mark and its adult entertainment goods and services. Similarly, if confronted with the opposed mark the relevant public would associate it to the opponent’s earlier trade mark with a result that its distinctive character is damaged.

 Based on the above, the contested mark would clearly and in all likelihood affect negatively the behaviour of the relevant public and, thus, cause detriment to the distinctive character of the opponent’s trade mark with a reputation in Finland.

The Opposition Division is not persuaded by these arguments. The circumstances in the present case do not suggest that use of the contested trade mark will result in dilution of the earlier trade mark.

Detriment to the distinctiveness of the earlier reputed mark occurs where use of a later similar mark reduces the distinctive quality of the earlier reputed mark. However, this cannot be found to occur merely because the earlier mark has a reputation and is identical with or similar to the mark applied for — such an approach would apply an automatic and indiscriminate finding of likelihood of dilution against all marks that are similar to reputed trade marks and would negate the requirement of proving detriment.

The Court held in ‘Intel’ that Article 4(4)(a) TMD (the equivalent to Article 8(5) EUTMR) must be interpreted as meaning that proof that the use of the later mark would be detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour’ of the average consumer of the goods/services for which the earlier mark was registered, or a serious likelihood that such a change will occur in the future.

Whilst the opponent does not need to submit evidence of actual detriment, it must convince the Office by adducing evidence of a serious future risk — which is not merely hypothetical — of detriment. In the present case, as seen above, the opponent merely claims that its mark is reputed and that the contested mark would cause detriment to the distinctive character of the earlier mark. The opponent did not mention at all or provide a coherent line of argumentation in relation to the specific contested goods and services in Classes 18 and 35 and how use of the contested mark in relation to those would lead to detriment. The opponent may prove detriment by submitting, for example, evidence that proves a likelihood of detriment on the basis of logical deductions made from an analysis of the probabilities (and not mere suppositions) and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case (16/04/2008, T-181/05, Citi, EU:T:2008:112, § 78, as cited in 22/05/2012, T-570/10, Répresentation d’une tête de loup, EU:T:2012:250, § 52 and confirmed in the appeal by judgment of 14/11/2013, C-383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43).

Under these circumstances, the Opposition Division finds that the opponent failed to put forward any evidence to support the conclusion that there is a risk of detriment to the distinctive character of the mark.

On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.

e) Conclusion

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

Classes 5 and 10: All the goods covered.

The opposition is not successful insofar as the remaining goods and services in Classes 18 and 35 are concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

Shape16

The Opposition Division

Reiner SARAPOGLU

Liliya YORDANOVA

Jakub MROZOWSKI

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.

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