OPPOSITION No B 3 064 884

netCOMPONENTS, Inc., 4800 N. Federal Hwy., Ste. 303A, 33431, Boca Raton United States of America (opponent), represented by Mewburn Ellis LLP, City Tower 40 Basinghall Street, EC2V 5DE London, United Kingdom (professional representative)

a g a i n s t

Net-Components GmbH, Demex-Allee 1, 14641 Wustermark, Germany (applicant), represented by Linderhaus Stabreit Langen, Jägerhofstr. 21, 40479 Düsseldorf, Germany (professional representative).

On 17/03/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 884 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 898 322 for the word mark ‘NET-COMPONENTS’. The opposition is based on European Union trade mark registration No 1 443 464 for the word mark ‘NETCOMPONENTS’. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

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.

a) The goods and services

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

Class 42: Providing an interactive multilingual database on a global computer network, in the field of electronic and electromechanical parts, for purchasers and distributors.

The contested goods and services are the following:

Class 6: Common metals and their alloys; Turned and milled parts; Turned parts of metal; Milled parts of metal; Cast and forged parts; Casting and system components of lamellar graphite and spheroidal graphite; Moulds and parts thereof made of graphite; Sand castings; Die cast parts; Malleable cast iron; Die-cast parts; Laser, punched and pressed parts; Laser, punched and pressed parts of metal; Metal mouldings; Fittings of metal for furniture; Building and construction materials and elements of metal; Forged and system components of stainless steel and heat-treated steel; Metal hardware; Complexly machined parts of aluminium and steel with reaming, wire-cut EDM and coating, including silver-plating, anodising, zinc-plating, burnishing, hardening, nitrating and varnishing; Metal hardware; Assemblies for turned and milled parts, cast and forged parts, laser, punched and pressed parts, mouldings of metal, fittings of metal, forged and system components of stainless steel and heat-treated steel.

Class 37: Assembly of turned and milled parts, cast and forged parts, moulds and parts therefor of graphite, sand castings, die cast parts, investment castings, pressure castings laser, punched and pressed parts, mouldings of metal, fittings of metal, building and construction materials and elements of metal, forged and system components of stainless steel and heat-treated steel, ironmongery and complexly machined parts of aluminium and steel, and assemblies and parts therefor.

Class 40: Metal treating; Laser and sheet metal treatment; Metalworking (lasering); Metalworking (pressing); Treating [shaping] of metal; Treating [shaping] of metal; Treating [forging] of metal; Treating [stamping] of metal; Treating [stamping] of metal; Treating [embossing] of metal; Treating [tempering] of metal; Metal treating; CNC serial processing of metals; CNC metalworking; CNC cutting of metals; Drilling of metals; Threading of metals; Millworking; Milling of metals; Spinning of metals; Wire EDM; Aluminium treatment; Copper treatment; Cast iron machining; Aluminium and steel treatment, namely reaming, wire-cut EDM and coating, including silver-plating, anodising, zinc-plating, burnishing, hardening, nitrating and varnishing.

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.

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

Contested goods in Class 6

All the goods in this class, which include mainly unwrought and partly wrought common metals, including ores, as well as certain goods made of common metals are dissimilar to the opponent’s services in Class 42, referring to providing an interactive multilingual database on a global computer network, in the field of electronic and electromechanical parts, for purchasers and distributors. Goods are tangible and services are intangible. The nature and purposes of the contested goods and the opponent’s services are very different. Although some of the opponent’s goods may be used when executing the above services, those goods and services have a different nature and purpose. They are not complementary nor in competition. They have different distribution channels and sales outlets.

The opponent argues that the contested goods are complementary to the opponent’s services. The Opposition Division does not share the opponent’s view. The opponent’s services consist of offering an interactive database which is a modern and secure data interrogation and visualisation application which helps users to find a supplier, or a producer of electronic and electromechanical parts. This is, in essence, an IT service. The sine qua non component of the opponent’s platform and, therefore playing a highly complementary role to it, is a software application, which allows users to perform specific tasks when connecting to the opponent’s online platform. Therefore, this argument of the opponent must be put aside, since metals and goods made from metal cannot be considered essential in order to provide an interactive multilingual database on a global computer network.

Contested services in Classes 37 and 40

The contested services in Class 37 include the assembly of various metal goods mainly as a service in the field of construction, as well as services involving the restoration of objects to their original condition or their preservation without altering their physical or chemical properties. The contested services in Class 40 refer to services rendered by the mechanical or chemical processing, transformation or production of objects or inorganic or organic substances, including custom manufacturing services. These services are fundamentally different from the opponent’s services in Class 42, as described above. Hence, apart from having different purpose and provider, the services at issue do not coincide in their methods of use and distribution channels and they target different consumers. Besides, they are not in competition with or complementary to one another. Therefore, they are dissimilar.

b) Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark, the evidence submitted by the opponent in this respect does not alter the outcome reached above.

The Opposition Division will now continue with the examination of the opposition on the ground of Article 8(5) EUTMR in relation to the contested dissimilar goods and services.

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 European Union trade mark registration ‘NETCOMPONENTS’ has a reputation in the European Union in relation to all the services on which the opposition is based.

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 09/05/2018. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the following services:

Class 42: Providing an interactive multilingual database on a global computer network, in the field of electronic and electromechanical parts, for purchasers and distributors.

The opposition is directed against the goods and services as listed above, under the section Likelihood of confusion, a) The goods and services, of the present decision.

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.

Furthermore, in defining the kind of public that should be taken into account for assessing reputation, the Court held that the ‘public amongst which the earlier trade mark must have acquired a reputation is that [public] concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 24; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 34, 41).

Hence, if the goods and services covered by the mark are mass consumption products, the relevant public will be the public at large, whereas if the designated goods have a very specific application or exclusively target professional or industrial users, the relevant public will be limited to the specific purchasers of the products in question.

In the present case, the opponent’s services target professionals active in the electronic and electromechanical components industry.

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

On 17/04/2019 the opponent submitted the following evidence:

 Exhibits 1: Printouts of parts search results using the online demo parts search feature of the opponent’s site at www.netcomponents.com.

 Exhibit 2: Copies of European Union trade mark registration listings for marks covering electronic/electromechanical and metal goods and online database, including online sales of such goods as well as printouts of websites evidencing actual use of such marks in the European Union.

 Exhibit 3: Printouts from the opponent’s website showing that services covered by the opponent’s mark have been provided in multiple principal languages spoken in the European Union, including English, Spanish, German, Italian, Portuguese and Dutch with the information that the opponent is a market leader in sourcing services for the worldwide electronic, electromechanical component parts industry. This Exhibit also includes affidavit written by the founder and Chief Executive Officer of the opponent´s company refers to the history of the company and its brand ‘NETCOMPONENTS’ as well as the structure of the evidence filed in this case.

- Exhibit 3A: Affidavit dated 12/04/2019 written by a Member of the Management Board of Memphis Electronic AG, an electronic component parts opponent’s supplier located in Germany. Memphis Electronic AG is a subscriber to the opponent’s (opponent’s business partner) database under the earlier mark and refers to the opponent as being a ‘market leader in sourcing services for the worldwide electronic, electro-mechanical component parts industry, offering under the earlier mark ‘NETCOMPONENTS’ the industry’s largest worldwide online database of electronic component parts supplier inventories, including electromechanical/metal component parts.

- Exhibit 3B: Affidavit, dated 12/04/2019, written by a manager of the Anti-Counterfeiting Forum in the United Kingdom. The opponent’s company has since at least 2012 been a participant in and/or sponsor of the Anti-Counterfeiting Forum and its activities.

- Exhibit 3C: Copy of the article “netCOMPONENTS inventory search now at Vishay”, from Julien Happich, editor in chief of eeNews Europe of 20/11/2015. Vishay International Inc. is a New York listed US Fortune 1000 company, and one of the world's largest manufacturers of discrete semiconductor devices (diodes, rectifiers, transistors, optoelectronic devices and selected IC types) and passive electronic devices (resistors, capacitors, inductors, sensors and transducers).

- Exhibit 3D: Extract from Wikipedia referring to The Selb, which is the European headquarter of the Vishay group.

 Exhibit 4: Data taken from the opponent’s website referring to the history of the opponent’s company and its ‘NETCOMPONENTS’ brand which has been created in 1997.

 Exhibit 5: The annual numbers of the opponent’s website’s visits for years 2003-2018 from users coming from the European Union.

 Exhibit 6: Various invoices (partly blackened), referring to the opponent’s services with regard to the ’Distributor Inventory Locator Program’ from clients based mostly in Germany, France, the UK, Finland, Austria and Portugal.

 Exhibit 7: Statistical reports which contain a large amount of confidential business information. An example of such a report from December 2003 has been submitted in this Exhibit.

 Exhibit 8: Copies of the printout of a netCOMPONENTS.com system showing active members and suppliers subscribed to the opponent´s platform. They come from various EU countries such as Germany, United Kingdom, France, Italy, Spain, Poland, the Netherlands, etc.

 Exhibit 9: Printouts from the opponent’s website showing suppliers whose line items are contained in the NETCOMPONENTS database often stock inventory that was made by various manufacturers specialized in the domain of electronic, electro-mechanical component parts.

 Exhibit 10: Copies of documentation evidencing the opponent’s ownership of many domain names including ‘netcomponents’.

 Exhibit 11: Copy of the Agreement between the opponent and DEO Consulting Limited and redacted copies of exemplary invoices regarding the opponent’s engagement with marketing and advertising consultants located in the European Union between 2001 – 2008. This project has been carried out in many EU countries, such as in France, Benelux, Germany, Austria, Spain, Portugal, Italy, United Kingdom, Denmark and Sweden.

 Exhibit 12: Exemplary copies of DILP services - Distributor inventory search engine (Distributor Inventory Locator Program (“DILP”) pages active in the European Union.

 Exhibit 13: Copies of illustrations of the opponent’s banner placed on the opponent’s website advertising programs to customer, typically suppliers, located in the European Union.

 Exhibit 14: Excerpts from the opponent’s website and copies of the printouts showing the opponent’s social media presence including on Facebook and Twitter.

 Exhibit 15: Copies of advertisements material from various European Union based websites and publications, including, but not limited to, the European Component Source Directory Book in the years between 2001 and 2008, published by Europartners.

 Exhibit 16: Example of a marketing email sent by the opponent to businesses located in the European Union.

 Exhibit 17: Other examples of marketing materials issued by the opponent, mostly brochures edited in many EU languages.

 Exhibit 18 and 19: Photos showing trade shows held in the European Union and attended by the opponent, including: ‘Electronica’ held annually in Munich in 13-16 November 2018 but also in 2000, 2002, 2006, 2012, 2016.

 Exhibit 20: Two invoices issued by Europartners Distribution Forum meetings organized in France, which the opponent was attending on various occasions.

 Exhibit 21: Excerpts from the Electronic Component Supply Network’s website, formerly known as AFDEC (Association of Franchised Distributors of Electronic Components). The opponent is a member of the Association since 2013, with an informal relationship prior to that dating back to 2007. On the opponent´s website, the ECSN states the following: ‘the opponent is a market leader in sourcing services for the worldwide electronic components industry and is the world’s premier destination [emphasis added] for the sourcing and procurement of electronic components, connecting members (buyers) and suppliers (sellers) in a direct and vendor-neutral environment’.

 Exhibit 22: Two emails from Fachbverband der Bauelemente Distribution e.V. (Professional Association of Component Distribution), opponent’s business partner, a German-based trade association for the electronic component distribution market allowing the opponent to use the trade association logo as a quality indicator on NETCOMPONENTS parts.

 Exhibit 23: Copies of the emails confirming that the opponent is authorized to use the trade association logo of Assodol (network of companies and professionals promoted by the Federazione Distretti Electonica in Italia) as quality indicator on NETCOMPONENTS parts. The Assodel members are active suppliers on the NETCOMPONENTS system.

 Exhibit 24: Excerpts from the website of European Union-based anti-counterfeiting forum operated by Elan Business Support, Ltd., in which the opponent is a participant dating back to 2012 when the forum was run by ESCO (Electronic Systems Community).

 Exhibit 25: Excerpts from DomainPeople, Inc. and copies of documents showing that the opponent has taken action against third parties in the European Union resulting in the acquisition by the opponent of the domain names netcomponents.co.uk in 2006 and netcomponents.eu in 2007.

 Exhibit 26: The opponent owns numerous registrations and pending applications for its NETCOMPONENTS service mark also outside the EU. Copies attached to this Exhibit.

Furthermore, after the expiry of the substantiation period (21/04/2019), on 23/04/2019, the opponent filed for the second time the affidavit mentioned above under Exhibit 3) and two new written declarations: as Exhibit 3E – affidavit written by EMEA Distribution Manager of Schaffner of 18 April 2019 and, identified as Exhibit 3F, affidavit dated 16 April 2019. On 09/12/2019, the opponent submitted a new affidavit enumerated as Exhibit 29, written by the Head of WebServices/Corporate of Communication of TDK Europe GmbH and dated 19/04/2019.

Having examined the material listed above, the Opposition Division concludes that despite showing the use of the trade mark at issue, the evidence provides little information on the extent of such use. The evidence does not indicate the sales volumes and the market share of the earlier trade mark. There is insufficient information to reflect clearly and objectively what the opponent’s position on the market precisely is. Although, in the observations, the opponent quotes some citations coming from various organizations such as Component Supply Network, formerly known as AFDEC (Association of Franchised Distributors of Electronic Components), the Anti-Counterfeiting Forum UK and referring to the opponent as a market leader in sourcing services for the worldwide electronic, electromechanical component parts industry, these statements come either from the opponent’s business partners or from associations, in which the opponent acts as an active member or a sponsor. The same conclusion must be reached as far as the content of the affidavits is concerned.

Evidence from suppliers or distributors should, generally, be given less weight, since it is less likely that their evidence will be from an independent perspective. In this regard, the degree of independence of the latter will influence the weight to be given to the evidence by the Office (28/10/2009, T-137/08, Green/Yellow, EU:T:2009:417, § 54 56). Insofar as declarations are not made by an independent third party, but by a person connected to the opponent through a professional relationship, it cannot in itself constitute sufficient evidence that the mark enjoys certain degree of recognition among the public. In consequence, it must be treated as merely indicative and needs to be corroborated by other evidence (21/11/2012, T-338/11, PHOTOS.COM, EU:T:2012:61.

As to the invoices and other kinds of commercial documents such as reports, distribution and sponsoring contracts, samples of correspondence with clients, suppliers or associates as filed by the opponent, the Opposition Division notes that they may provide a variety of information on the intensity of use, geographical extent and duration of use of the mark. However, even though the relevance and credibility of commercial documents is not disputed, it will generally be difficult to prove reputation on the basis of such materials alone, given the variety of factors involved and the volume of documents required. They don´t really provide information about the recognition on the market and the image of the trade mark. Furthermore, evidence relating to distribution or sponsoring contracts and commercial correspondence are more appropriate for giving indications about the geographical extent or promotional side of the opponent’s activities, than for measuring the success of the mark in the market, and thus may only serve as indirect indications of reputation. The Opposition Division observes that, indeed, volume of sales should not be underestimated, as they are significant indications of the number of consumers that are expected to have encountered the mark. Therefore, it cannot be excluded that a substantial amount of sales volume may, in certain cases, be decisive for a finding of reputation, either alone, or in conjunction with very little other evidence. However, in this case, the evidence of actual sales of services bearing the earlier mark is not conclusive (the total sale numbers were not disclosed) and does not show that the sign is known by a substantial part of the public.

The opponent provided several copies of advertisements displayed on banners showing its promotional activity. Although, some conclusions about the degree of exposure of the public to advertising messages concerning the mark may be drawn, this evidence, nonetheless, cannot be conclusive of reputation, due to the fact that it cannot give much information about actual trade mark awareness. The actual impact of publicity on the perception of the public is difficult to measure without reference to sales.

it will be also difficult to prove knowledge amongst a significant part of the public exclusively by reference to promotion activities such as the opponent’s presence during trade fairs hosted in the European Union, in particular in Germany (‘Electronica’ in Munich) or advertising campaigns based on advertising banners and promotional brochures, carried out by the opponent, as the actual impact of publicity on the perception of the public will be difficult to measure without reference to sales. In such situations, the only means of evidence available to the opponent are opinion polls and similar instruments, the probative value of which may vary depending on the reliability of the method used, the size of the statistical sample, etc. In that regard, the opponent did not submit any opinion polls or similar reliable and manifest evidence in order to support the materials regarding promotional activities.

Furthermore, documents showing the number of visits paid to the opponent’s platform and the presence of the opponent in social media such as ‘Twitter’ and ‘Facebook’ cannot replace this evidence, in particular as they do not originate from independent third parties. Moreover, a mere number of trade mark applications/registrations and domain registrations are not decisive for the existence of a reputation either. The opponent refers to prior registrations worldwide; however, it is established case-law that such registrations do not bind the Office. Moreover, the Office is not bound by its previous decisions and such cases must be assessed on their own merits (21/05/2014, T-553/12, BATEAUX MOUCHES, EU:T:2014:264, § 72-73). In any case, registrations alone do not allow to draw any conclusions as to the use and recognition of a trade mark on the market.

The Opposition Division notes that the only online article ‘netGOMPONENTS inventory search now at Vishay’ is manifestly insufficient to prove reputation of the earlier mark. Vishay International Inc. is a New York listed US Fortune 1000 company, and one of the world's largest manufacturers of discrete semiconductor devices (diodes, rectifiers, transistors, optoelectronic devices and selected IC types) and passive electronic devices. The probative value of press articles and other publications concerning the opponent’s mark mainly depends on whether such publications cover promotional matter, or if, on the contrary, they are the result of independent and objective research. In the case at hand, in spite of the fact that the opponent is referred to in this online article as a ‘leading global electronic components sourcing site that maintains the industry’s largest database of worldwide electronic component suppliers’ inventories’ the content of this article shows that Vishay is the opponent’s business partner and, in any case, it does not refer to the degree of recognition of the opponent’s earlier mark in the European Union. Furthermore, it mentions also other goods and services that are not the ones for which the opponent claims reputation. Therefore, the probative value of this document is rather low.

As to the additional evidence filed by the opponent after the expiry of the substantiation period, according to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence, or where the evidence submitted is manifestly irrelevant or manifestly insufficient to meet the requirements of laid down in Article 7(2) EUTMDR, the opposition will be rejected as unfounded.

Article 8(1) EUTMDR is an essentially procedural provision and it is apparent from the wording of that provision that when no evidence with regard to the reputation of the earlier mark concerned is submitted within the time limit set by the Office, the opposition must be rejected as unfounded. It follows that the Office cannot take into account evidence submitted for the first time after the expiry of the time limit.

It is true that pursuant to Article 8(5) EUTMDR the Office will exercise its discretion under Article 95(2) EUTMR and decide whether or not to accept belated facts or evidence of substantiation. However, the use of the term ‘supplementing’ in the text of Article 8(5) EUTMDR points to the necessary existence of a previous relevant submission within the time limit set by the Office, i.e. that it is not entirely new.

In the present case, the Opposition Division notes that despite the fact that some parts of the evidence filed within the substantiation period are relevant to the case under Article 8(5), they are on themselves not sufficient to conclude that the earlier mark enjoys a reputation in relation to the relevant services in the European Union, as claimed by the opponent.

In any case, for completeness purposes, it must be noted that although the additional material filed by the opponent is partly new (Exhibits 3E, 3F and 29), it does not introduce any pertinent information as to the degree of awareness of the earlier mark among the relevant public as it refers to intentional statements made by the opponent’s business partners. The information contained in the affidavits is not publicly available. It has not been compiled for official purposes and it does not contain data that have been objectively verified, or reproduce statements made in public. Therefore, the probative value of these statements is rather low.

The Opposition Division notes that the additional material and the evidence taken as a whole give no quantitative data and information that will be appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, is not sufficient to support a finding of reputation of the earlier mark.

Consequently, the evidence does not show in a clear and convincing manner that the trade mark in question is known by a significant part of the relevant public in the European Union in relation to the registered services. The more independent, reliable and well-informed the sources of the information is, the higher the probative value of the evidence will be. Indeed, the evidence submitted by the opponent comes from the opponent itself or from the opponent’s business partners and not from the opponent’s competitors or other independent sources (e.g., specialised press or external audits). The material filed does not contain any independent publication concerning the success of the opponent brand and the earlier mark has not become an object of a case study in specialised journals. In the present case, the evidence shows, without a doubt, use of the earlier trade mark in relation to the opponent’s services but it does not allow the Opposition Division to draw the conclusion that the earlier mark ‘NETCOMPONENTS’ enjoys the high degree of recognition which could afford it the extended protection granted by Article 8(5) EUTMR. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier mark has reputation. Since it has not been established that the earlier trade mark enjoys reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

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

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

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

The Opposition Division

Gueorgui IVANOV

Monika CISZEWSKA

Ewelina ŚLIWIŃSKA

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.