OPPOSITION Nо B 3 108 586

 

Bose Products B.V., Gorslaan 60, 1441 RG Purmerend, Netherlands (opponent), represented by Jordi Güell Serra, Av. Diagonal 622, 3º, 08021 Barcelona, Spain (professional representative) 

 

a g a i n s t

 

Zhuhai Fangcheng Technology Co., Ltd., Room 501, Unit 2, Building 9, No. 1, Huzhong Road, Baiteng Lake, Doumen District, Null Zhuhai, Guangdong, People’s Republic of China (applicant), represented by José Izquierdo Faces, Iparraguirre, 42 - 3º Izda, 48011 Bilbao (Vizcaya), Spain (professional representative).

On 14/12/2020, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 108 586 is upheld for all the contested goods.

 

2.	European Union trade mark application No 18 118 306 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 2) of European Union trade mark application No 18 118 306 GREENBOSE (word mark). The opposition is based on EUTM registration No 2 081 636 BOSE (word mark). The opponent invoked  Article 8(1)(b) EUTMR and Article 8(5) EUTMR.

 

 

REPUTATION — ARTICLE 8(5) EUTMR

 

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM registration No 2 081 636, for which the opponent claimed repute in the European Union.

 

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.

a) 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 30/08/2019.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: Electric, optical, weighing, measuring, signalling, checking (supervision) and life-saving apparatus and instruments, all of the aforesaid goods not for vehicle components with the exception of sound systems and loud speaker systems; electronic apparatus, electro-mechanical acoustic converters, all of the aforesaid goods not for vehicle components with the exception of sound systems and loud speaker systems.

 

The opposition is directed against the following goods:

 

Class 2: Printing ink; Printing toner; Copying inks; edible ink cartridges, filled, for printers; pigments; Toner cartridges, filled, for laser printers; Toner cartridges, filled, for printers and photocopiers; Ink cartridges, filled, for printers; Toner cartridges, filled, for inkjet printers; Filled toner cartridges; Toner contained in cartridges; Filled inkjet cartridges; Inks contained in cartridges; Inks for printing; Printers' pastes [ink]; Ink for printers and photocopiers; Filled toner cartridges for printers and photocopiers; Cartridges of toner for use with computers.

 

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 16/06/2020 the opponent submitted, inter alia, the following evidence:

  

 Affidavit in English (Enclosure 1), dated 06/07/2018, including Exhibits 1‑12; the affidavit is signed by the trade mark counsel of Bose Corporation, affiliated with the opponent. It states that ‘BOSE’ products are sold in the EU in 43 ‘BOSE’ branded stores (list was enclosed) and hundreds of other retail stores including well-known retail chains such as Media Mark, John Lewis, Darty and BCC. The affidavit refers to the market share the ‘Bose’ brand had at the end of 2017 in the audio market in France, Germany and the UK, according to data collected by the market research company GFK. Furthermore, it mentions the advertising expenditure in the EU for the previous three years concerning the ‘BOSE’ brand, namely EUR 25‑27 million per year, including the high profile sponsorships of Mercedes Formula 1 racing team and the golf player Rory McIlroy. In addition, reference is made to many awards the ‘BOSE’ products received in 2014, 2015, 2017 and 2018, including the Best Brands and Red Dot Award. It is also stated that BOSE sound systems can be found in many automobile brands, such as Audi, Porsche, Nissan, Renault, Cadillac, Opel, Fiat, Alfa Romeo, Mazda, Chevrolet and Infinity. Finally, the affidavit mentions an on-line survey conducted in 2017 by an in-house consumer marketing group surveying respondents provided by EMI Research solutions. The survey asked a closed question regarding the knowledge of consumer electronic brands. ´BOSE´ listed amongst 14 other companies, was chosen by 81.4% of the 2,945 respondents in Germany, 71.9% of the 2,230 respondents in France and 79.2% of the 2,158 respondents in UK.

 A chart slide with a market share report for Great Britain, France and Germany from BOSE’s fiscal year ending 03/31/2017 (Enclosure 1 Exhibit 3), which is said to be based on data collected by GFK research company. In the chart, it states that in the audio market, which includes products such as soundbars, home theatres, wireless speakers and headphones, the ‘BOSE’ market share is 24.8 % for France, 25 % for Germany and 18 % for Great Britain. This results in ‘BOSE’ having the biggest market share in comparison to other producers in all of the three relevant territories.

 Printouts from different websites and copies of magazines mentioning awards granted to the opponent. For example:

o ‘Red Dot Award’ – a list of winning products from a German website, with a description of the award in English; award granted by a panel of judges for high design quality (Enclosure 1 Exhibit 6):

 2014 – BOSE for SoundTouch 30 Wi-Fi Music System,

 2017 – BOSE for a Soundbar, Home Entertainment System, Wireless Headphones (SoundSport Pulse and QuietControl 30) and Wireless Bass Module.

o ‘Best Brands’ – printouts from a German website describing the Best Brands award granted in Germany for best product brand. According to the description of the award that was submitted, winners of the award are chosen by consumers in a representative study conducted by GfK consumer research institute based on two key yardsticks: the actual economic success of the brand on the market place and the perceived popularity of their brand among consumers (Enclosure 1 Exhibit 7):

 2018 – BOSE Best Product Brand

 2017 – BOSE Best Product Brand

 2017 – BOSE Best Growth Brand

 2015 – BOSE Best Product Brand

 2014 – BOSE Best Product Brand

o ‘The plus X Award’ - printouts from a German website describing this award which is grated for innovation, quality, design, ease of use, functionality, ergonomics and ecology. According to the documents submitted, the award is granted by a jury and the contestants must first apply to the contest (Enclosure 1 Exhibit 8):

 2014 - BOSE WAVE SOUNDTOUCH (music system) for innovation, high quality, design, ease of use

 2014 - BOSE SOUNDTOUCH 30WIFI for innovation, high quality, design, ease of use

 2014 - BOSE SOUNDTOUCH PORTABLE WIFI for innovation, high quality, design, ease of use

 2015 - BOSE SOUNDLINK COLOUR BLUETOOTH SPEAKER for high quality, design, ease of use

 2015 - BOSE SOLO 15 TV SOUND SYSTEM for high quality, design, ease of use

 2015 - BOSE SOUNDLINK ON-EAR BLUETOOTH HEADPHONES for high quality, design, ease of use

 2015/2016 - BOSE SOUNDLINK ON-EAR BLUETOOTH HEADPHONES product of the year.

o ‘TOP MARKE 2008’ for best car hi-fi, mentioned in a copy of ‘Auto Zeitung’ from 2009 in German (Enclosure 1 Exhibit 9).

o ‘Best Brand’ for best car hi-fi, mentioned in a copy of ‘Auto Motor and Sport’ in German from 2009 (Enclosure 1 Exhibit 9).

 Press clips from different newspapers and websites, including:

o   Extracts from ‘Daily Mail’ online, from 09/03/2018, which state that ‘BOSE’ is ‘a company known for noise-cancelling headphones wants to create an augmented reality glasses’ (Enclosure 1 Exhibit 11).

o ‘The Independent’ online, from 16/07/2013 (‘Dr Bose’s legacy: the real sound of music’) with a description of the history of the brand: it states that the company was founded in 1964 in the USA and that it is now ‘known for its high-quality, and high-cost, speakers’; moreover, the article states that ‘BOSE’ noise‑cancelling headphones are popular amongst consumers and pilots for both military and commercial airlines; it also mentions that ‘BOSE’ sound systems are found in different public places, including the Sistine Chapel (Enclosure 1 Exhibit 11).

 Photos with big advertisements of the ‘BOSE’ brand; undated; according to the opponent taken at an automobile show in Paris and in a Mazda ‘pop-up-store’ in a shopping centre in Dusseldorf (Enclosure 1 Exhibit 5).

       History of the brand from the opponent’s website, including a list of important dates and facts from the company’s perspective. For example: the expansion of the ‘BOSE’ brand to the German market in 1972; installation of ‘BOSE’ sound systems in many public places such as the Sistine Chapel, St. Peter’s Cathedral in Rome, Grad Mosque in Mecca and many others; 30 years of partnership with General Motors that resulted in over 100 vehicle models featuring ‘BOSE’ sound systems (Enclosure 1 Exhibit 1).

       Samples of undated advertisements in English, including pictures of Formula 1 drivers Lewis Hamilton and Nico Rosberg wearing ‘BOSE’ headphones and race suits bearing ‘BOSE’ trade marks (Enclosure 1 Exhibit 10).

       Extract from the Wikipedia website regarding the BOSE Corporation; the history of the brand is presented together with a description of some of the company’s specialised products, such as noise cancelling headphones, smartphone applications and car audio products (all bearing the ‘BOSE’ trade mark). Moreover, it states that Bose conducted research into using electromagnetic motors in place of conventional (hydraulic or air) automotive suspension systems. In addition, it states that in 2010, Bose introduced ‘Bose Ride’, an active system that reduces road-induced vibration in the driver’s seat (information retrieved from The New York Times in 2012) (Enclosure 5).

In its observations and in the Enclosure 1 Exhibit 12 the opponent also provides a list of hyperlinks to websites, where the Opposition Division could find press coverage on the opponent´s brand. However, a mere indication of a website does not constitute evidence. The onus of supplying evidence of use is on the opponent and not on the Office or the applicant. Websites are easily updated, and most do not provide any archive of previously displayed material or display records that enable members of the public to establish precisely when any particular content was published. The authenticity and integrity of the information cited with only a hyperlink to a website cannot, therefore, be verified. Consequently, the submission of links to websites cannot be considered as a valid piece of evidence and cannot be taken into account.

Assessment

In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (judgments of 14/09/1999, C 375/97, Chevy, EU:C: 1999:408, § 22-23; 25/05/2005, T 67/04, Spa-Finders, EU:T:2005:179, § 34).

The Court also held that all the relevant facts must be considered in assessing the reputation of the earlier mark, ‘in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it’ (judgment of 14/09/1999, C 375/97, Chevy, EU:C: 1999:408, §25, 27).

Having examined the evidence listed above, the Opposition Division finds that the earlier trade mark ‘BOSE’ has acquired a reputation in the European Union (at least in the United Kingdom and Germany) for some of the abovementioned goods.

In relation to the affidavit, it should be noted that statements drawn up by interested parties themselves or by affiliated companies are generally given less weight and probative value than other independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the affidavit are supported by the other items of evidence.

In this case, most of the statements from the affidavit are backed up by additional evidence provided. The evidence submitted as a whole shows that the trade mark ‘BOSE’ has been subject to long-standing and intensive use and is generally known in relation to different audio apparatus in the relevant market, where it enjoys a consolidated position among the leading brands. This is corroborated, for example, by press articles in popular newspapers in which ‘BOSE’ is mentioned as ‘a company known for noise-cancelling headphones’ (‘Daily Mail’, Enclosure 1 Exhibit 11) and also ‘a company known for its high-quality, and high-cost, speakers’ (‘The Independent’, Enclosure 1 Exhibit 11). Moreover, the evidence submitted regarding the opponent’s sponsorship of Formula 1 Mercedes team (Enclosure 2) permits some conclusions to be made about the degree of exposure of the public to the opponent’s advertising campaigns. The fact that ‘BOSE’ sponsors Lewis Hamilton, currently the most successful driver in Formula 1, significantly adds to the brand’s value and recognition.

Many of the awards that ‘BOSE’ products have been granted were for their high quality, unique design, ease of use or innovation, and cannot be regarded as directly proving recognition of the mark on the market, but can, however, add to the advertising efforts that the opponent undertakes to create a coherent brand image. Applying for such awards and encouraging reviews of ‘BOSE’ products could be perceived as one means of advertising. It must be borne in mind that consumers, prior to the purchase of electronic devices, often refer to product rankings and reviews to learn more about the market of goods they are about to buy. Therefore, the recognised high quality of the opponent’s goods, which is reflected in many product rankings, enables the opponent to reach more consumers and therefore increase brand awareness.

Moreover, the ‘Best Brands’ award in Germany gives some direct and clear information on the recognition of the ‘BOSE’ brand in the aforementioned territory. According to the information provided, these awards are granted based on the marks’ perception and recognition among consumers. Also, for these awards the brands do not need to apply in order to be considered. For example, GfK (a recognised research company) awarded ‘Bose’ the ‘BestBrand’ in Germany five times between 2014-2018. This significantly increases the probative value of the opponent’s evidence and, in combination with the rest of the submitted evidence, gives the Opposition Division relevant information as regards the extent to which the trade mark has been promoted. Consequently, the evidence submitted in relation to the aforementioned awards is considered to be an indication of the opponent’s intensive and widespread sales and promotional activities.

Therefore, all the aforementioned facts and evidence allow the Opposition Division to conclude that the earlier trade mark ‘BOSE’ has been subject to long-standing and intensive use, at least in the United Kingdom and Germany, and that it was generally known in the relevant market sector and enjoyed a consolidated position among the leading audio equipment manufacturers on the filing date of the EUTM application. Although the evidence does not refer to all the countries of the European Union, the European Court of Justice has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C 301/07 ‘PAGO’, EU:C:2009:611, § 29, 30). Therefore, the Opposition Division acknowledges that reputation proven in Germany and the United Kingdom is also sufficient for concluding that the earlier trade mark has a reputation in the European Union.

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 and reputation among the relevant public for some of the opponent’s goods, namely audio apparatus, including headphones and loudspeakers.

The evidence does not succeed in establishing that the trade mark has a reputation for all the goods on which the opposition is based and for which reputation has been claimed. There is no reference with regard to goods other than audio apparatus, including headphones and loudspeakers. Moreover, as for the latter, these goods are not included, as such, in the opponent's list of goods. However, it is considered that they form part of the registered broad category of electronic apparatus, all of the aforesaid goods not for vehicle components with the exception of sound systems and loud speaker systems. Therefore, it is considered that the reputation is proved for audio apparatus, including headphones and loudspeakers in Class 9, as these goods belong to the broad and rather vague category of electronic apparatus covered by the earlier mark.

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.

 

 

b) The signs

 

 

BOSE	GREENBOSE
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C 514/06 P, Armafoam, EU:C:2008:511, § 57). In this case, as reputation is proven in Germany and United Kingdom, the following analysis will focus on this public only.

The contested sign, despite being formed of a single verbal element, will be perceived by the relevant public as a combination of the words ‘GREEN’ and ‘BOSE’. This is because although the average consumers normally perceive a mark a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which suggest a specific meaning or resemble words known to the them (06/10/2004, T-356/02, Vitakraft EU:T:2004:292, § 51; 13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The verbal element ‘GREEN’ is a basic English word, commonly used in commerce throughout the European Union (and as such will be understood even by the non-English-speakers) not only to refer to the colour green, but also as a reference to the fact that the goods offered thereunder are not harmful for the environment (07/03/2019, T-106/18, VERA GREEN / Lavera et al., EU:T:2019:143, § 48, 52; 11/04/2013, T-294/10, Carbon green, EU:T:2013:165, § 25, 28; 27/02/2015, T-106/14, Greenworld, EU:T:2015:123, § 24). In relation to the relevant goods, the word ‘GREEN’ will be perceived as a description of the characteristics of the goods at issue, namely their environmentally friendly character. Therefore, it is non-distinctive.

The common verbal element ‘BOSE’ is meaningless for the relevant public and therefore inherently, normally distinctive.

Visually and aurally, the signs coincide in the letters ‘BOSE’; that is, the entire earlier mark is reproduced as the second element of the contested sign. The marks differ in the presence of the first verbal element of the contest sign, ‘GREEN’ which has no counterparts in the earlier mark, but which is non-distinctive.

Even though the consumers usually focus on the beginning of a sign when they encounter a trade mark, in this case, as the first element of the contested sign is a non-distinctive adjective qualifying the subsequent word ‘BOSE’, the latter will receive more attention. Therefore, as the public will focus on an element which is identical in both marks, the signs are visually and aurally similar to at least above average degree.

Conceptually, neither of the signs has a meaning as a whole. Although the element ‘GREEN’ in the contested sign will evoke a concept of environmental friendliness, this concept is not distinctive and cannot indicate the commercial origin of the goods. Therefore, it has little or no impact on the conceptual comparison, in terms of identifying commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal element ‘BOSE’, which has no meaning.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

 

c) The ‘link’ between the signs

 

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

 

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

 

 the degree of similarity between the signs;

 

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

 

 the strength of the earlier mark’s reputation;

 

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

 

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

 

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

 

As regards the degree of similarity between the conflicting marks, the more similar they are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (27/11/2008, C 252/07, Intel, EU:C:2008:655, § 44). In the present case, the signs are visually and aurally similar to at least an above average degree, as the public would not fail to notice that the trade mark applied for incorporates the entire earlier mark, ‘BOSE’.

All of the goods for which the earlier mark has a reputation and the contested goods target the public at large. Therefore, it is likely that the relevant consumers will encounter each of the marks at some point in time. In fact, different kinds of electronic apparatus are usually purchased in the same shops or are displayed in the same aisles of supermarkets. Consumers are used to seeing computers, printers, loudspeakers, all placed near each other on shelves in retail outlets. This is also where they could find the contested goods which all could be described as inks, toners, cartridges for printers, as they are customarily displayed near the printers themselves. Taking into account the fact that the earlier mark is fully included in the contested sign, as its only distinctive element, it is very likely that the consumers will make a connection between the two signs, assuming a market expansion of the earlier brand or at least a collaboration between producers on this market.

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

 

 

d) Risk of injury

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

 

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

 

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

 

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

 

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

 

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

In the present case, the opponent claims that the applicant may take unfair advantage of the reputation of the earlier trade mark, since, because of the similarity between the signs and between the goods in question, the marketing of the contested mark will be easier. In its opinion, there is a reasonable risk that the image of high quality and prestige of the earlier mark, ‘BOSE’, will be transferred to the goods under the ‘GREENBOSE’ trade mark. Thus, the contested mark will manage to capture consumers’ attention, and consumers will consequently be attracted to it and inclined to acquire ‘GREENBOSE’ goods. In that situation, the applicant would obtain an unfair commercial advantage on the market and, as mentioned above, the marketing of its goods would be made easier thanks to the association with ‘BOSE’, and therefore it would save itself the expense of launching a new and unknown trade mark on the market. According to the opponent, the applicant would, in this way, take advantage of the efforts made by the opponent in creating and maintaining the image of prestige and quality of its marks without paying any compensation.

The opponent furthermore argues that, since the goods bearing the earlier mark (‘BOSE’) are of high quality and enjoy prestige on the market, consumers would expect the same standards of quality from the goods marketed under the trade mark ‘GREENBOSE’. However, since the opponent would not be able to guarantee or even influence the quality of the applicant’s goods, this could have a negative impact on the image of quality and prestige conveyed by the earlier mark, impairing its selling power and prestige. The opponent argues that, as it is one of the top companies in the world in the electronics field, especially in connection with audio equipment, it is clear that consumers might think that the goods sold under the contested mark formed part of a brand extension of the earlier trade mark ‘BOSE’.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of and be detrimental to the distinctive character and 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 evidence submitted clearly shows that, over several years, the opponent has built a strong image of high-quality goods under the ‘BOSE’ brand. This is proven not only by the many awards won by the brand, but also, for example, by the fact that ‘BOSE’ products have been chosen for use in many prestigious places across Europe, including the Sistine Chapel. This must be considered at least indirect proof of the recognition of the quality of the goods associated with the brand. Moreover, as can be seen from other items of evidence submitted, the brand is perceived as luxurious and expensive (see the press cuttings from the Daily Mail, dated 01/10/2014, and The Independent, dated 16/07/2013, Enclosures 1 and 3). Therefore, as the relevant public would establish a link (or form an association) between the signs, for the reasons explained above, the image of luxury associated with the earlier mark would inevitably be transferred to the applicant’s goods if they were marketed under the contested sign.

 

Since the opponent must have made substantial investments in developing and building the reputation of its earlier mark, the use of the contested mark by the applicant would take unfair advantage of those investments and the earlier mark’s reputation, since the applicant would benefit from the goodwill built up towards the earlier trade mark without having to make any investments of its own.

 

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

 

 

f) 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 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

 

 

Renata COTTRELL

Marta Maria CHYLIŃSKA

Lidiya NIKOLOVA

 

 

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.