OPPOSITION No B 3 093 627

Wiko, SAS, 1 rue du Capitaine Dessemond, 13007 Marseille, France (opponent), represented by GPI Marques, 39, rue Fessart, 92100 Boulogne-Billancourt, France (professional representative)

a g a i n s t

Guangdong Seven Plus Industrial Co., Ltd., 3rd Floor, Comprehensive Building, Darwin Keji Park, Pinghu Street, Shenzhen, Guangdong, People’s Republic of China (applicant), represented by Arpe Patentes y Marcas, S.L., C/Proción 7, Edificio América II, Portal 2, 1ºC, 28023 Madrid-Aravaca, Spain (professional representative).

On 24/07/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 093 627 is upheld for all the contested goods.

2. European Union trade mark application No 18 040 922 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 040 922 (figurative). The opposition is based on European Union trade mark registration No 11 081 395 (figurative). The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

• The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the 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 the European Union.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 26/03/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 9: Mobile phones; telephones apparatus.

The opposition is directed against the following goods:

Class 21: Ultrasonic pest repellers; mouse traps; rat traps; plug-in diffusers for mosquito repellents; electric devices for attracting and killing insects; fly swatters; insect traps; fly traps.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 21/01/2020, the opponent submitted the following evidence.

• Printouts from the opponent’s websites from different countries throughout the world.

• A printout from Wikipedia on ‘WIKO’.

• An extract from a study conducted by GFK France, a market research institute, concerning the market of smart and mobile phones. According to the graph provided in the extract, in December 2015, sales of Wiko products amounted to 16 % of the French telecommunication market and in January 2016, it reached 18.3 % of the French market, placing it in second place.

• An extract from a survey conducted by a French global market research company, IPSOS, in France, in 2015, which shows several different questions and answers about WIKO brand (e.g. Q2: From a list of mobile phone brands, which do you know, if only by name?, How did you hear about the Wiko brand?, Would you be willing to buy a Wiko phone?, Why specifically do you want a Wiko phone.). The survey had around 2 162 participants of whom 19 % in the first round and 49 % in the second round answered that they knew the ‘Wiko’ brand. 63 % of 1 051 participants answered that everyone could find a Wiko phone that matched their needs, and 57 % of the participants answered that Wiko products had a reportedly unbeatable quality and performance-price ratio. Furthermore, 8 % of 2 162 participants answered that they owned a Wiko phone, and 27 % did not have a Wiko phone but knew somebody who had one. Out of 1 983 respondents 15 % intended to buy a Wiko mobile phone, mainly due to its price and excellent performance-price ratio.

• An article from the Daily Mail online, dated 04/04/2014, and another from The Economist online, dated 05/04/2014, announcing the arrival of WIKO in the UK. They discuss, inter alia, ‘budget technology from Wiko which has taken the French market by storm’, and that in 2013 ‘nearly 7 % of French first‐time smartphone buyers bought a Wiko phone’.

• An article from the Financial Times online of 26/05/2014 referring to Wiko as a relatively known French smartphone maker possessing 8 % of the domestic market share, which is now expanding into the EU – including the UKwhere it is, however, not well known.

• Two articles from Gulf News online, dated 30/09/2014 and 24/01/2017, regarding the entry of Wiko into the United Arab Emirates and opening a National Store there. One of the articles states that ‘according to research firm GfK, the brand is ranked number two after Samsung in the open French market and is also in the top five of Western Europe.’

• Several screenshots, dated in 2014 and 2015, from websites such as www.phonandroid.com, http://actualitesjeuxvideo.fr, www.lesnumeriques.com, www.edcom.fr, www.planet-sansfil.com, Le Point, www.lefigaro.fr, www.challenges.fr, in French, showing WIKO smartphones.

• Articles from the website www.dday.it dated 27/02/2017 regarding the participation of WIKO in the Mobile World Congress (MWC) 2017, and from the website www.wired.it, in Italian, showing WIKO smartphones.

• An article from the website www.economist.com dated 02/03/2017 about 5G at the Mobile World Congress, mentioning Wiko along with LG and Huawei.

• An article from the website www.teleunicom.com, dated 18/07/2017, entitled ‘Wiko, Europe’s fastest growing mobile brand, launches in Greece’. It states that the core characteristics of Wiko products are creativity, design, audacious colours, a friendly yet determined attitude and the best quality-performance ratio. It also states that Wiko is ranked 2nd in France and 4th in Western Europe in retail sales.

• An extract from the website http://androidmag.de, dated 06/10/2017, in German, showing WIKO smartphones.

• An extract from the website www.informaria.com, in Spanish, showing the participation of WIKO in the Mobile World Congress.

• An extract from the website www.gsmmaniak.pl, dated 26/02/2018, in Polish, regarding the participation of WIKO in the Mobile World Congress (MWC) 2018.

• A screenshot from the website www.techspot.com, dated 14/04/2019, of a user forum regarding the ‘Wiko Wim’ smartphone.

• Screenshots from the websites www.dendalia.es, www.mobilefun.co.uk, www.idealo.es, www.vandenborre.be, www.bestlist.nl showing Wiko mobile phones (presented in Spanish, English, German and Dutch).

• Numerous extracts from on-line databases of different EU trade mark offices, including EUIPO, regarding other trade marks belonging to the opponent that include ‘WIKO’.

• Advertising and sponsorship material from the opponent’s website for such events as ‘Wiko- Les Transardentes 2016’ (in French), ‘Team Duesseldorf 2017’ (in German), ‘Wiko Roller Bike Parade’ (in French), and ‘Wiko & McFit: Mens Fitness Challenge 2018’ (Germany) (in German). An extract from the website www.soccerex.com dated 24/11/2017 entitled ‘Lazio sign WIKO on season-long deal’.

• Press release regarding the participation of WIKO in the Mobile World Congress on 25/02/2019.

On the basis of the above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union and especially in France, at least for mobile phones.

Opinion polls and market surveys are the most suitable means of providing information about the degree of knowledge of the mark, the market share it has or the position it occupies in the market in relation to competitors’ goods. The probative value of opinion polls and market surveys is determined by the status and degree of independence of the entity conducting it, by the relevance and the accuracy of the information they provide, and by the reliability of the method applied.

In the present case, the survey, although commissioned by the opponent, was carried out by a recognised research institute IPSOS, which has included in its graphs information about the number of respondents. It can be inferred from the survey that it contained open questions (e.g. ‘Among the listed mobile phone brands, which are those that you know, if only by name?’), as well as multiple choice questions (‘How did you hear about Wiko brand?, ‘Would you be willing to buy Wiko phone?’, ‘Why specifically you want Wiko phone?’); most of the questions could receive a positive, negative or neutral answer. The structure of the questions is sufficiently reliable and the questionnaires do not contain leading questions. The aforementioned survey, together with the extract from the survey conducted by GFK France (which showed that in December 2015, sales of ‘Wiko’ products amounted to 16 % of the French telecommunication market and in January 2016, it reached 18.3 % of the French telecommunication market, placing it in second place), demonstrate that the earlier mark was subject to intensive use and show some reputation among the relevant public in France.

The articles from newspapers such as the Financial Times, Daily Mail and The Economist confirm the established position of WIKO on the French mobile telephones market and its expansion into the European market. Moreover, the extract from www.teleunicom.com states that Wiko is ranked 2nd in retail sales of mobile phones in France and 4th in Western Europe.

The remaining documents are printouts from different websites and most of them do not give much indication of the level of recognition, or even of any actual outward use, of the mark. Of more relevance are the numerous reviews in the online press of French origin, dated before the relevant date. Nevertheless, the opponent does not provide any information about those websites and their target/actual public, so it is not possible to assess their impact on the public’s awareness of the products reviewed.

Although some of the pieces of evidence provide rather incomplete information or lack some important indications, on balance the Opposition Division concludes that the opponent has proven a certain degree of reputation of the earlier trade mark for mobile phones in France. According to case-law, an EU trade mark must be known by a significant part of the public concerned for the goods or services covered by that trade mark, in a substantial part of the territory of the European Community (06/10/2009, C‑301/07, Pago, EU:C:2009:611). Therefore, considering its population, it is sufficient to conclude that the earlier mark enjoyed a reputation in a substantial part of the European Union.

2. The signs

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 elements ‘WIKO’ of the earlier mark and ‘WIKOMO’ of the contested sign have no meaning for the relevant public and are, therefore, distinctive.

The contested sign is composed of a distinctive verbal element and a less distinctive figurative element of a purely decorative nature, namely a circle above the last letter ‘o’. Therefore, the verbal element is more distinctive than the figurative element.

The element ‘WIKOMO’ in the contested sign is the dominant element as it is the most eye-catching.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in ‘WIKO’. Furthermore, the stylisation in which these letters appear is also almost identical, especially in so far as the initial letter ‘W’ is concerned. However, they differ in ‘MO’ and the decorative circle of the contested sign.

Therefore, the signs are similar to an above average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛WIKO’, present identically in both signs. The pronunciation differs in the sound of the letters ‛MO’ of the contested mark, which have no counterparts in the earlier sign.

Therefore, the signs are highly similar.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

The signs under comparison are similar to the extent that the word ‘Wikomo’ in the contested sign includes the whole earlier mark, and the stylisation of that element is very similar, if not identical, to that of the earlier trade mark’s verbal element.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are visually similar to an above average degree and aurally highly similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The signs show significant visual and aural similarities. The similarities between the signs stem, inter alia, from the initial letter ‘W’ and the special and distinctive way in which it is depicted. This particular depiction of the letter ‘W’ is an element that is placed at the beginning of both signs, where the attention of the public is focused. Moreover, it is much bigger than the remaining letters in both signs. Therefore, the structure of the signs is similar. The same letters, depicted in this particular and very similar (almost identical) font, are immediately perceived by the public who is familiar with the trade mark that appears on their goods, namely mobile phones.

The earlier mark enjoys a certain level of reputation in the relevant territory.

The goods are not similar. However, they all target the general public.

Although the conflicting goods are not similar, there is still a sufficient degree of similarity between the marks, especially from the visual point of view. In particular, the (almost) identical fanciful depiction of the letter ‘W’ at the beginning of the signs can bring the earlier reputed sign into the mind of the consumers of the contested goods in Class 21.

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).

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 ‘not only would the use of the contested application diminish the prior mark(s) attractiveness, but it would also be detrimental to the image of the mark(s)’.

In other words, the opponent claims that use of the contested trade mark would 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 contested goods in Class 21, being insect repellents and traps, convey the image of something unpleasant or even, to some extent, disgusting. They are not desirable, but bought because they are indispensable. Due to their nature and function, they are associated with unpleasant animals, dirt and death.

 Consumers might associate the earlier mark with goods such as repellents and traps for animals and notion of disgusting invasive animals will cheapen the renown of the earlier mark. As a consequence, consumers might change their behaviour and stop buying smartphones that remind them of devices to kill pests.

The Opposition Division considers that the applicant’s goods could potentially provoke a negative mental link in the consumer’s mind. The contested goods in Class 21, being insect repellents and traps, target the general public – as do the opponent’s goods. Indeed, it is likely that these goods may provoke associations that do not correspond with the values and image that the earlier trade mark embodies.

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.

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 ground 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

Anna BAKALARZ

Katarzyna ZANIECKA

Martin MITURA

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.