OPPOSITION No B 3 062 033

Deen Supermarkten, Kernweg 4, 1627 LC, Hoorn, Netherlands (opponent), represented by Novagraaf Nederland B.V., Hoogoorddreef 5, 1101 BA, Amsterdam, Netherlands (professional representative)

a g a i n s t

K&T s.r.o., Magurská 37, 974 11 Banská Bystrica, Slovakia (applicant), represented by Matus Navrat, Tomasikova 5/B, 82101 Bratislava, Slovakia (professional representative).

On 24/02/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 033 is upheld for all the contested goods.

2. European Union trade mark application No 17 895 305 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods (Class 25) of European Union trade mark application No 17 895 305 for the figurative mark . The opposition is based on Benelux trade mark registrations No 712 322 for the word mark ‘DEEN’ (‘Earlier Right 1’), No 835 443 for the figurative mark (‘Earlier Right 2’) and No 921 484 for the figurative mark (‘Earlier Right 3’). In relation to these earlier marks the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

Furthermore, the opposition is based on the non-registered trade name ‘DEEN’ (‘Earlier Right 4’) used in the course of trade in the Netherlands, for which Article 8(4) EUTMR is invoked.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to Earlier Right 3, for which, for which the opponent claimed repute in Benelux.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

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

1. Reputation of the earlier trade mark

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

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 04/05/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the Benelux prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, which after a limitation requested by the opponent in its observations dated 27/03/2019, is the following:

Class 3: Bleaching preparations and other laundry preparations; cleaning, polishing, degreasing and abrasives; soap; perfumery; essential oils; cosmetic preparations; hair lotions; dentifrices.

Class 35: Advertising; business management; business administrations; office functions; retailing services provided by a super market; administrative and secretarial services in connection with ordering and delivering of products; publicity for promotion of goods; organisation and design for advertising events and composition and provision for advertisement transmission, organisation and design for promotional actions and activities (sales promotions); publicity for promotion for goods; the demonstration of products for commercial or advertising purposes, also relating to teleshopping and home shopping; administrative services with regards to, as well as promotion with assistance of, savings programs that have the purpose of promoting customer relations; aforegoing services also with assistance of electronic media, on-line and via Internet.

The opposition is directed against the following goods:

Class 25: Clothing; Footwear; Hats; Millinery; Shoes; Evening wear; Shorts; Snow boarding suits; Jerseys [clothing]; Slipovers [clothing]; Running Suits; Mufflers [clothing]; Casualwear; Boas [necklets]; Clothing of leather; Furs [clothing]; Cowls [clothing]; Combinations [clothing]; Headbands [clothing]; Mittens; Shoulder wraps [clothing]; Linen clothing; Skating outfits; Leisurewear; Beach clothes; Aprons [clothing]; Jogging sets [clothing]; Bridesmaids wear; Motorists' clothing; Leather dresses; Nappy pants [clothing]; Rainwear; Infant wear; Waterproof suits for motorcyclists; Sports clothing [other than golf gloves]; Arm warmers [clothing].

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 27/03/2019 the opponent submitted the following evidence:

Annex 1:	Retail overview of made by Distrifood Dynamics, an online database of more than 5000 supermarkets in the Netherlands, showing the location and dispersion of the opponent’s 82 establishments, which cover the Dutch provinces Noord-Holland, Flevoland, Zwolle, Utrecht and Gelderland. Furthermore, the annex shows charts of the development of the amount of DEEN stores, of the turnover numbers for the last twenty years, steadily rising from approx EUR 180 million in 1996 to 800 million in 2016 and of their market share, steadily rising from 1% in 1996 to over 2% in 2016.
Annex 2:	Pictures of some of the facades of several DEEN stores, where the earlier mark can be seen:
Annex 3:	Undated extract from the website of Distrifood.nl relating to the profile of DEEN for 2018. The marked share is informed to be 2.1 % and its turnover was estimated to be 790 million euro. The opponent informs that Distrifood is an independent news platform for and about supermarkets. Distrifood brings news, analysis and background information about supermarkets in the Netherlands.
Annexes 4A- 4D, 5 and 6:	Copies showing advertisement of DEEN in various newspapers, such as Nord-Hollands Dagblad in January 1967, Spring 1967, April 1985, and March 1994, for the retailing of foodstuffs and clothing. Copies of the opponent’s media plans for 2017 and 2018, referring to the opponent’s earlier mark being advertised in various media, such as Noordhollands Dagblad, Rondje Regionale Dagbladen, Almere vandaag, Amstelveen Dichtbij, Stadsblad De Echo, Witte Weekblad Hoofddorp, Zaanstreek, Flevopost Lelystad, De Castricnummer, De Beverwijker, Alkmaar op Zondag, Kompas, Regio Zaanstreek, Swollenaer, Weekblad Zondag and Telegraaf/Metro Amsterdam. In these media plans are also the numbers for copies of the specific newspaper and the advertisement costs.
Annex 7:	Copy of a screenshot provided for the company promotion video advertising of DEEN for products such as flowers, food, drinks. This video has been distributed via DEEN’s newsletter, internal narrowcasting and social media.
Annexes 8A - 8C:	Copies of weekly promotional folders of DEEN for retailing of foodstuffs, clothing, flowers, and cleaning preparations. The folders refer to dates between November 2019 and March 2019.
Annexes 9A - 9F:	Overview compiled by the royal Dutch mail-order company, PostNL, shows the number of publications disseminated throughout the Netherlands dated in 2014, 2015, 2016, 2017 and 2018.
Annex 10:	Copy of order details overview of the number of publications disseminated throughout the northern part of the provinde Noord-Holland. The overview is authored by Rodi Verspreiding and is dated 01/02/2018. The date of dissemination referred to in this Annex is 25/03/2018, and the number of publications amounts to around 330.000 units (per week).
Annex 11:	Undated screenshots of various websites where the weekly promotion folder of DEEN are promoted on: https://www.spotta.nl/winkel/deen-supermarkten https://www.folderz.nl/winkels/deen-folders.html https://www.allefolders.nl/deen-aanbiedingen https://www.folderbode.nl/deen/
Annexes 12A - 12E:	Screenshots of various online articles: regarding the choices of Leonie, the online marketing officer of DEEN to collaborate with DTG, an online marketing service provider, undated; promoting DEEN as the best training company and practical trainer of the province Noord-Holland in the trade sector, dated 27/09/2018; an interview with Leendert van Eeck (CEO of DEEN) about the success factor of DEEN, dated 23/09/2018; the history of DEEN, from a grocery store to a supermarket chain, dated 13/06/2013; a platform providing articles with the latest news about DEEN from 2018.
Annex 13:	Copy of an overview of the trade mark portfolio of DEEN.
Annexes 14, 15 and 16:	Copies of undated pictures of a promotional campaign of DEEN, promoting high quality towels, hotel quality bed and bathroom linen. Screenshot of a news article about a children’s campaign from DEEN for marbles during the World Cup of 2014.
Annex 17:	Screenshot of the latest posts of the Facebook profile of DEEN Uithoorn as well as some of the Instagram account DEEN_SUPERMARKTEN.
Annexes 18 – 22 B:	Evidence referring to press release and awards: Screenshot of a news article published on Adformatie, dated 15/11/2012, referring to DEEN being the winner of the yearly ING Retail award in the category Best Grocery Store in 2012. Adformatie is a Dutch magazine about advertising, marketing and media. Screenshot of a news article published in the Dutch newspaper Noord-Hollands Dagblad, dated 15/11/2012, referring to DEEN being the winner of the yearly ING Retail award in the category Best Grocery Store in 2012. Press release by DEEN itself about winning the yearly ING Retail award in the category Best Grocery Store in 2012. Press release by DEEN itself about DEEN Lelystad and DEEN Weidevenne, which were named as the best supermarkets in the provinces Flevoland and Noord-Holland in the year 2008. Screenshot of a news article, dated 08/11/2013, about DEEN winning the award of the best flower and plant supermarket in the Netherlands in 2012 published Distrifood.nl. The article mentions that this is the fourth time that DEEN Supermarkets has been voted the best flower and plant supermarket in the Netherlands. Screenshot of an undated news article about DEEN winning the award of the best flower and plant supermarket in the Netherlands in 2012 published on Levensmiddelenkrant.nl.

In addition to the information submitted as Annex 3, where the extract from the website of Distrifood.nl relating to the profile of DEEN for 2018 shows a market share of 2.1 %, the opponent also provided the following market share information for DEEN in relation to other retailers between 2008 and 2018:

Furthermore, the opponent claims in its observations that DEEN was founded in 1933, amounting to a period of operation in Netherlands of around 85 years.

The evidence provided, such as Annexes 1, 4, 5 and 6, shows that ‘DEEN’ has been used for supermarket retail services, including food and flower retail, in a considerable part of the Netherlands for a substantial period of time. Even if the opponent’s stores do not cover all parts of the Netherlands, account must be taken to the fact that the Netherlands is geographically a small and densely populated country where a large part of the population commutes between cities and provinces as part of their daily work routine. Therefore, a strong presence of a supermarket chain in several regions is likely to be noticed even by the part of the public that does not permanently reside in those regions. This is also supported by the fact that parts of the submitted evidence is of national character, and not only regional character, such as Annexes 18 – 22B where it is stated that DEEN was the winner of the yearly ING Retail award in the category Best Grocery Store in 2012 in the Netherlands. Moreover, the market share numbers provided by the opponent place DEEN amongst the top 10 of food retailers in the Netherlands, which must be considered a decent number. Assessed together with the fact that DEEN has been present in the Netherlands since 1933, this suggests that the trade mark does indeed have a consolidated position in the market, also considering the fact that the Dutch retail sector is fairly consolidated with the two largest food retailers (Albert Heijn and Jumbo) controlling approximately 55 % of the market.

All these facts and evidence allow the Opposition Division to conclude that the earlier trade mark has indeed been subject to long-standing and intensive use, at least in the Netherlands and that it was generally known in the relevant market sector, and enjoyed a consolidated position among the supermarket retail sector on the filing date of the EUTM application. Although the evidence does not refer to all the countries of the Benelux, it is through case law clarified that for an earlier Benelux trade mark, reputation throughout the territory of a single Member State may suffice (see by analogy 06/10/2009, C 301/07, Pago, EU:C:2009:611, § 29, 30). Therefore, the Opposition Division acknowledges that reputation proven in the Netherlands is sufficient for concluding that the earlier trade mark also has a reputation in the Benelux.

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

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to retailing services provided by a super market in relation to foodstuffs and flowers in Class 35, whereas there is little or no reference to the remaining goods and services.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is Benelux.

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 verbal element ‘DEEN’, present in both signs, will for the Dutch public be perceived as ‘Dane’ meaning a person who comes from Denmark. For the relevant goods in Class 25 and retail services in Class 35, ‘DEEN’ does not directly refer to any of these goods and services or their characteristics. While for the remaining French- and German-speaking parts of the public ‘DEEN’ is meaningless. Therefore, in any case this verbal element distinctive for the entire relevant public.

The additional verbal element ‘SUPERMARKTEN’ of the earlier mark is Dutch and means ‘supermarkets’. This word will most likely also be understood by the French- and German-speaking parts of the public as well due to the highly similar equivalent words in their respective languages, namely ‘supermarchés’ in French and ‘Supermärkte’ in German. ‘SUPERMARKTEN’ is non-distinctive for the relevant retailing services provided by a super market in relation to foodstuffs and flowers in Class 35, as it merely refers to the place of where the services are rendered. Consequently, also taking into account its small size and subordinate position, it is considered of very limited impact for the comparison of the signs. It is clear that it is the verbal element ‘DEEN’ that is the visually outstanding element of the earlier mark due to its larger size.

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). In the present case, the figurative elements of the signs mainly serve as a frame and to bring the verbal elements in white font to the attention of the public. Therefore, these figurative elements are of very limited (if any) distinctiveness.

Visually, the signs coincide in the distinctive verbal element ‘DEEN’, present in white upper-case letter font in both signs. ‘DEEN’ is the only verbal element of the contested sign and is also the only distinctive word of the earlier mark, as well as being the most visual outstanding element of the latter. The signs also share certain similarities in their figurative configuration as both signs are presented in rectangular shapes. The differences between the signs are pertained to the non-distinctive figurative verbal element ‘SUPERMARKTEN’ of the earlier mark, as well as the remaining figurative elements of both signs, which are of very limited impact as explain above.

Taking the above into consideration, the signs are visually highly similar.

Aurally, the signs share the sound of the letters ‘DEEN’. As far as the only differing phonetic element between the signs, namely ‘SUPERMARKTEN’ of the earlier mark, account must be taken to the fact that a substantial part of the public may not pronounce this element due to its small size, secondary position within the mark and its lack of distinctiveness (03/07/2013, T-206/12, LIBERTE american blend, EU:T:2013:342; 03/06/2015, joined cases T-544/12, PENSA PHARMA, EU:T:2015:355 and T-546/12, pensa, EU:T:2015:355).

Therefore, the signs are aurally at least highly similar, if not identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the Dutch-speaking part of the public, the signs are conceptually identical as they both convey the same association to a Dane. While for the remaining French- and German-speaking part of the public, the only distinctive element of the signs is meaningless, and consequently, the conceptual aspect remains neutral.

Although the earlier mark include the additional word ‘SUPERMARKTEN’, it will not modify the findings of the conceptual aspect already made above, as this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional distinctive verbal element 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.

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.

It must be remembered that the degree of similarity of the signs required under Article 8(5) EUTMR differs from the one required under Article 8(1)(b) EUTMR. Thus, whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

In the present case, there is a high degree of similarity between the signs, as they are conceptually identical for part of the public, aurally at least highly similar (if not identical), and visually highly similar due to their coincidence in the distinctive word ‘DEEN’.

The applicant argues that it is very unlikely that the signs would cause confusion as there is no overlap with the intended sector of the applicant and the one of the opponent. Furthermore, it is claimed that the applicant’s targeted markets are UK, France, Spain and Italy through online channels, while the opponent’s primary selling channels are physical stores in the Netherlands, therefore, also the territory is different. In this regard, it must be remarked that, firstly, the assessment of the relevant goods and services must be carried out on the basis of the wording indicated in the respective lists of goods/services, and on the behalf of the opponent also for which reputation has been found. Any actual or intended use not stipulated in these lists is not relevant for the assessment. Furthermore, as the contested sign is a EUTM application, the territory covered is the entire European Union, which overlaps with the territory of the earlier mark, namely the Benelux countries. Therefore, for the purpose of this assessment, there is a clear overlap of territories.

The contested goods in Class 25, which are various articles of clothing, footwear and headgear, target the same public (the public at large) as the retailing services provided by a super market in relation to foodstuffs and flowers in Class 35 for which the earlier mark is reputed. Moreover, it is fairly common of the contested goods being offered in supermarkets. In such case, it is likely that consumers will be confronted with both marks at some point in time.

Super markets more and more often sell a range of own-brand products, such as foodstuff, beverages, hygienic products, etc. Even if one would suppose that it is not the most common practice yet for super markets to put their retail brand on articles of clothing, as the applicant argues, it is indeed a fact that these super market retailers are involved in the production of clothing, footwear and headgear, albeit under other brands. Therefore, it cannot be excluded that at least a part of the relevant consumers has some association of between super market retailers and such goods. The fact that certain super market retailers rebranded their clothing line under other brands, as the applicant pointed out, does not serve as certain proof of any objective disadvantage in relation to a link between supermarkets and clothing. On the contrary, as pointed out by the opponent in its observations, the biggest supermarkets in the Netherlands does indeed use their house brand on clothing articles. Consequently, the Opposition Division is convinced that an association between super market retailers and goods such as clothing, headgear and footwear is not very far-fetched, especially considering that they would be provided through the same distribution channels.

Therefore, taking into account and weighing up all the relevant factors of the present case, especially considering the high degree of similarity between the signs as well as the distinctive character of the coinciding element ‘DEEN’, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that through the applicant’s use of a highly similar trade mark, and in this way establishing a link with the opponent’s mark, the applicant would benefit from power of attraction, the reputation and the prestige of the opponent, which would be an unfair exploitation of the opponent’s huge marketing efforts.

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

Unfair advantage (free-riding)

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

The opponent bases its claim on the following.

 ‘It is beyond any doubt that the Applicant chose the mark DEEN with the sole intention to benefit from the power of attraction, the reputation and the prestige of that Opponent’s marks in order to exploit huge marketing effort of the Opponent.’

 ‘Supermarkets often sell clothing articles in their stores. And as DEEN has in the previous years been especially active in selling clothing in their stores, among which clothes of well-known brands. This good reputation as a supermarket in selling these various clothing articles can be used by the Applicant to free ride on this reputation for their clothing articles.’

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.)

It must be stated that the evidence submitted shows that, throughout the years, the opponent has built a positive image in relation to super market retailing under the ‘DEEN’ brand. This may be deduced from their consolidated position in the market, being amongst the top ten retailers in the Netherlands, as well of winning awards such as the yearly ING Retail award in the category Best Grocery Store in 2012 in the Netherlands.

In the present case, consideration must be particularly be taken to the fact that the signs are highly similar as the only differing elements between them are of secondary or non-distinctive nature. Also considering the fact that some super markets retailers do indeed launch products covered by the contested sign, even under their own house brand, it is likely that the earlier mark is likely to be evoked in the minds of the consumers when confronted by the contested sign in relation to the relevant goods in Class 25. Consumers could feel attracted by the contested mark due to the reputation achieved by the earlier mark and this would facilitate the marketing of the goods offered under the contested sign. In this way, the applicant may unduly benefit from the reputation of the earlier mark.

Considering all the above, the image of the ‘DEEN’ brand would be transferred to the contested mark and may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark and the investments undertaken by the opponent to achieve that reputation.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the repute of the earlier trade mark.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

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

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

COSTS

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

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

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

The Opposition Division

Marianna KÓNDAS

Tu Nhi VAN

Aldo BLASI

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.