BASS | Decision 2299405 - FERRARI S.P.A. v. Equus Automotive, Inc.

Date Published: Sep 22, 2017

OPPOSITION No B 2 299 405

Ferrari S.P.A., Via Emilia Est, 1163, 41100 Modena, Italy (opponent), represented by Dr. Modiano & Associati S.P.A., Via Meravigli, 16, 20123 Milano, Italy (professional representative)

a g a i n s t

Equus Automotive, Inc., 2904 Bond Street, Rochester Hills MI 48309, United States of America (applicant), represented by Barkhoff Reimann Vossius, Prinzregentenstr. 74, 81675 München, Germany (professional representative).

On 05/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 299 405 is upheld for all the contested goods.

2.        European Union trade mark application No 12 077 236 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 077 236 . The opposition is based on, inter alia, European Union trade mark registration No 454 546. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 454 546.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (as in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof, the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is, inter alia, based, namely European Union trade mark registration No 454 546. The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 08/10/2013. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 08/10/2008 to 07/10/2013 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 12: Vehicles; apparatus for locomotion by land; in particular automobiles, spare parts and accessories for automobiles, included in class 12.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 26/10/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 31/12/2016 to submit evidence of use of the earlier trade mark. Upon extension requested by the opponent, the time limit to submit evidence of use was 28/02/2017.

On 23/02/2017, within the time limit, the opponent submitted evidence of use.

On 17/03/2016, the opponent submitted observations in support of the claim of reputation of its earlier mark and requested that the documents filed regarding opposition proceedings No 1 528 572 and No 2 446 998 constitute evidence of reputation of the opposing trade mark in the current proceedings.

Therefore, the Opposition Division will take into account the evidence filed by the opponent on opposition proceedings No 1 528 572 and No 2 446 998 in support of the claim of reputation of the earlier mark to also show evidence of use of it.

The evidence to be taken into account is, in particular, the following:

• Previous decisions from EUIPO and other national industrial property Offices, regarding the reputation of the Ferrari marks.
• Three printouts of articles dated 02/2014, referring to the 2014 ‘Brand Finance Global 500’ annual study conducted by brand valuation consultancy Brand Finance, declaring Ferrari is the world’s strongest brand for the second consecutive year.
• Article from the website Newstreet.it magazine of 13/01/2004 reporting that, according to a yearly survey named “Year-end Zeitgeist”, carried out by Google in 2003, Ferrari was the subject most clicked on among 550 billions of requests.
• Market survey carried out by Research International Italia in 1990 on the degree of knowledge among the Italian public of the name “Ferrari”.
• Printout of a Wikipedia entry for ‘Ferrari’, dated 24/11/2009, containing information about the company Ferrari S.p.A. and its history, as well as other documents describing its history, without reference to their source.
• List of countries where the trade marks of the opponent are used, without any reference to its source.
• List of worldwide sales figures, for the period 1989 – 2007 for the trade mark ‘Prancing Horse device’, without any references to its source.
• Numerous invoices, dated 2001-2005, issued by the opponent to retailers in the European Union (mainly in Italy, Germany and the United Kingdom), with reference to Class 12 goods and showing the word “Ferrari” and a different trade mark from the opposing trade mark in the present case.
• Documents, without reference to their source, about the history of Formula 1, Michael Schumacher, the 50th Anniversary and Schumacher’s retirement, containing some images of the earlier marks.
• List of websites of Ferrari clubs around the world, without references to the earlier signs.
• Tables showing the numbers of visitors to the opponent’s websites, without references to the earlier signs.
• Screen shots from the opponent’s web site.
• Images of, among other items, clothing, headgear, promotional materials (stickers, mugs, scarves, flags, etc.), umbrellas and various types of bags, and smokers’ articles, with their respective article numbers, mainly bearing other signs or logos of the Ferrari Company.
• List of movies in which the opponent’s marks have been used.
• List of the opponent’s worldwide trade mark registrations regarding all of its marks.
• Photocopies of registration certificates of the opponent’s marks used in different countries all over the world.
• Photocopies of Italian and European press articles, dated between 1972 and 2009, regarding the opponent’s undertaking and its marks.
• Photocopies of internet articles, dated between 2000 and 2009, about Ferrari and a variety of the opponent’s marks.
• Photocopies of “The Official Ferrari Magazine”, dated between 09/2008 and 09/2009, showing a variety of the opponent’s marks.
• List of the opponent’s sale and service network of importers/representatives in Europe and worldwide.
• Photocopies of the opponent’s catalogues, showing the opponent’s cars in connection with a variety of Ferrari signs.

• Extracts from the applicant´s website including extracts from a brochure.

Assessment of evidence

As regards place of use, trade marks must be used in the territory where they are protected. In the present case, the press articles and the catalogues refer to among other countries, Spain, Portugal, Germany or Italy. Therefore, the evidence relates to a significant part of the European Union.

In the case at hand, the information contained in the evidence is sufficient to demonstrate the place of use of the earlier mark.

As far as the time of use is concerned, according to case-law, it is sufficient that a trade mark should have been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (25/03/2009, T-191/07, Budweiser, EU:T:2009:83, § 108).

In the present case, the Opposition Division points out that some documents are not dated and some are dated beyond the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use as well during the relevant period of time. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50).

In the case at hand, some of the evidence referring to use outside the relevant period, namely, some of the Internet articles, confirms use of the opponent’s mark within the relevant period. This is because the use it refers to is very close in time to the relevant period.

Furthermore, from the catalogues and the press articles, it is clearly shown that the evidence relates to the relevant period and that the requirement of use of the earlier trade mark in the relevant period, namely, from 08/10/2008 to 07/10/2013 inclusive was met.  

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The company’s printouts do not give any indication of sales figures or commercial volume. The three printouts of articles dated 02/2014, referring to the 2014 ‘Brand Finance Global 500’ annual study conducted by brand valuation consultancy Brand Finance add information about sale volumes of all the Ferrari group. This articles states that the brand values US$ 4 billion. In the same sense, the extract from The Telegraph adds that: ‘Ferrari’s turnover increased last year (2013) as did its profits at Euro 246 million. As a result Ferrari now has Euro 1.36 billion cash at hand and no debt. It’s a remarkable figure for a luxury car maker, let alone one who has completely reinvented itself and in the process rebuilt most of its R&D and production facilities over the last decade’.

According to the opponent, such vehicles are very expensive and consequently only a few vehicles are sold every year. It has to be recalled that low turnover and sales, in absolute terms, of a medium- or low-priced product might support the conclusion that use of the trade mark in question is not genuine. However, with regard to expensive goods or an exclusive market, low turnover figures can be sufficient (decision of 04/09/2007, R 0035/2007-2, Dinky, § 22). It is, therefore, always necessary to take the characteristics of the market in question into account (judgment of 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 51). In the present case and taken into account the circumstances of the market and the expensive character and the exclusivity of the items involved, the evidence provided by the opponent, even if it is not a direct evidence of the actual figures of the items sold, provide indications of the extent of use of the earlier mark.

The opponent also provided several catalogues and insertions in advertising articles, featuring the relevant trade mark on cars. Even it is true that those catalogues and articles provide no information on the quantity of goods actually sold by the opponent under the earlier trade mark it is necessary to take into account the fact that those items were offered in the catalogues for consumers and that those items were available worldwide. Such documents, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment.

In the case at hand, and taken all the circumstances into account, it can be inferred from the material submitted that the opponent has seriously tried to acquire a commercial position in the relevant market. Therefore, all this evidence, taken as a whole, provides the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the earlier mark.

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

Nature of use requires, inter alia, that the earlier trade marks are used as trade marks that are for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

In the present case, the majority of the documents show that the earlier sign in its graphical representations,   or    are used, publicly and outwardly, in connection with the goods and therefore they are used as trade marks.

‘Nature of use’ in the context of Rule 22(3) EUTMIR further requires evidence of use of the mark as registered, or of a variation thereof which, pursuant to Article 15(1)(a) EUTMR, does not alter the distinctive character of the trade mark.

In the present case, the majority of the evidence provided shows the figurative markor .The signs used do constitute use of the earlier trade mark because the circle as shown above do not alter the distinctive character of the earlier trade mark.

In the present case, the majority of the evidence shows use of the sign as trade mark with a clear reference to specific goods. The Opposition Division considers that the opponent has provided sufficient indications concerning the nature of the use of the earlier mark.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods on which the opposition is based.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

Firstly, an interpretation of the wording of the list of goods protected by the earlier mark is required to determine the scope of protection of these goods. The term ‘in particular’ used in the opponent’s list of goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

It has to be noted that vehicles, apparatus for locomotion by land; in particular automobiles, spare parts and accessories for automobiles, included in class 12 are defined as apparatus or machines used for transporting people or goods, especially by land, and as such include cars, lorries or carts and the parts or accessories of those. Automobile is the North American word for cars.

In the present case, the evidence proves use only for cars and spare parts and accessories of them such as wheels or steering wheels and not for other types of vehicles (such as those for transporting people or goods) or other types of apparatus for locomotion by land (such as bicycles). These goods can be considered to form an objective subcategory of the general vehicles; apparatus for locomotion by land, namely automobiles, spare parts and accessories for automobiles included in Class 12. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for automobiles, spare parts and accessories for automobiles, included in class 12.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark, during the relevant period in the relevant territory for the goods automobiles, spare parts and accessories for automobiles, included in class 12.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claimed that its earlier mark is reputed in the European Union for automobiles, spare parts and accessories for automobiles, included in class 12. 

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 of 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: the 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. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The earlier mark is a figurative mark with no word elements. It consists of a single element depicting a stylised black silhouette of a rampant horse, facing left.

The contested sign is a figurative mark which consists of a central image depicting a stylised rampant, regardant horse, represented in silver grey and facing left. Below this element and in a slightly smaller size, the verbal element ‘BASS’, represented in grey upper case typeface appears. All these two elements are depicted against a black background.

The common figurative element representing a horse, although in different positions, has no relation with the relevant goods, therefore, it is distinctive.

In its observations, the applicant argues that the scope of protection of the opponent´s horse design is small and the level of attention of the consumers will be high. It adds that the common concept of a horse is descriptive for sport cars since they inform the interested consumer directly about the fact that the engine of such car has an enormous amount of horse powers i.e. a very fast sport car. However, the Opposition Division considers that it is very unlikely that the consumers, when confronted with the image of the horse, will immediate, without any further mental step, perceive it as describing the power of the engine of the automobiles. Therefore, the applicant´s argument is dismissed as unfounded.

The verbal element ‘BASS’ included in the contested sign means, at least for the English-speaking part of the public, among others, the lowest adult male signing voice or a type of fish. For the remaining part of the European public, it is a fanciful term. Be as it may be, since it has no relation with the relevant goods, it enjoys an average degree of distinctive character. The colour grey and the black background are decorative elements with less distinctive character.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The figurative element in the contested sign, due to its size and position, is the dominant element.

Visually, the signs are similar to the extent that they both contain a figurative element representing a horse facing left. On the other hand, they differ in the verbal element ‘BASS’ of the contested sign, which has no counterpart in the earlier mark. They also differ in the fact that the horse in the earlier mark is a black rampant horse, while in the contested mark it is a stylised rampant regardant horse and in the shades of silver grey and the black background included in the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, it must be noted that purely figurative signs are not subject to a phonetic assessment. As the earlier mark is purely figurative, it is not possible to compare the signs aurally.

Conceptually, the figurative elements present in both marks will be associated with the concept they reproduce, i.e. a rampant horse, facing left.

The verbal element of the contested sign, ‘BASS’ will be understood by, at least the English-speaking part of the public as, among others, the lowest adult male signing voice or a type of fish. For the remaining part of the public, this element lacks any meaning.

The signs are conceptually highly similar on account of the common concept conveyed by the horse facing left.

In its observations, the applicant argues that the signs are dissimilar since the earlier sign consists of a classic drawing of a horse whilst the applicant’s design is a modern one showing a horse in an artificial and abstract way. However, it cannot be denied that the central element included in both signs represents the image of a rampant horse facing left and that the consumers will perceive it as such. The applicant’s argument is therefore dismissed as unfounded.

The signs under comparison are visually similar and conceptually highly similar.

2. 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 which 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 20/08/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is, inter alia, based, acquired reputation in the European Union prior to this date. The evidence must furthermore show that reputation was acquired in respect of the goods, in connection with which reputation has been claimed by the opponent and for which use was proven, namely the following:

Class 12: Automobiles, spare parts and accessories for automobiles, included in class 12.

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.

The evidence submitted and referred by the opponent on 17/03/2016 to prove the reputation of the earlier mark has been already listed hereinabove under ‘Proof of use’.

The evidence, taken as a whole, indicates that the earlier trade mark has been subject to a long standing and intensive use for a substantial period of time in at least Italy, Germany and the United Kingdom where it enjoys a consolidated and leading position in the relevant market as it has been attested by independent sources. Although some of the evidence is dated after the contested sign was filed and it refers to the Ferrari group, the evidence, globally, shows numerous references featuring the black rampant horse facing left on its own. The Opposition Division finds that the press articles, the catalogues, the promotional materials and other marketing activities submitted by the opponent indicates that the earlier trade mark enjoys a certain degree of recognition among the relevant public allowing the Opposition Division to conclude that the earlier trade mark enjoys reputation.  

The evidence mainly concerns cars and parts and accessories for them (Class 12).

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in the European Union in connection with automobiles, spare parts and accessories for automobiles, included in class 12.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. 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 in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 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 seen above, in the present case, the signs are visually similar to an average degree and conceptually highly similar and the earlier mark has been found to be reputed. That does not mean automatically that the relevant public is likely to establish a link between them. Indeed, consideration must be given to the goods at stake for this link to be clear.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods:

Class 12: Luxury sport cars, race cars, and structural parts thereof.

As seen above, the earlier trade mark was found to have a reputation for: automobiles, spare parts and accessories for automobiles, included in class 12.

The contested and the earlier goods are identical and they belong to the same market sector of vehicles. The relevant public will recognise the earlier mark because of its proven reputation and it is likely that the earlier mark will be brought to the mind of the consumers upon encountering the contested mark even if consumers of cars and automobiles will display a higher than average degree of attention in respect to those goods as it was argued by the applicant.  

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested sign the relevant consumers will be likely to associate it with the earlier mark, 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 use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark and be detrimental to the repute of the earlier trade mark since the earlier trade mark may be easily identified or recognised by the consumers throughout the European Union.

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 (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following:

• The earlier mark has acquired universal recognition and acclaim and they have become a distinctive symbol worldwide of the famous company Ferrari. The earlier mark has received an enormous degree of publicity all over the world by virtue of its participation in the World Formula 1 Championships since 1950.

• The use of the contested mark will lead to the dilution of the tremendous goodwill and reputation that the opponent has attained. It is also likely to result in a misappropriation of the attractive power of Ferrari’s marks or an exploitation of its image and prestige.

• Due to the particularly high quality and originality of the products branded with the earlier mark and due to the care and attention in promoting the trade mark which is associated with high quality, prestige, technology, and design, the earlier mark has become a symbol of the Italian creativity and glamourous lifestyle in Italy and abroad.

• In view of the undoubted and extensive reputation of the earlier mark, it seems inevitable that the image of the mark and the characteristics that it projects will be transferred to the applicant’s goods.

According to the Court of Justice of the European Union

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

The opponent substantiated the claim of unfair advantage by the argument that the earlier trade mark acquired a special image of high quality, prestige, technology and design and that the use of the contested sign would take unfair advantage of this image. Moreover, the opponent claimed and proved the reputation and the leading position of its mark in the relevant segment of the market.

The Opposition Division considers that the claim of a special image (quality, design and prestige) of the earlier trade mark has been proven. In view of this, it is probable that a transfer of the image and/or prestige qualities associated with the opponent’s trade mark to the contested goods might occur. Given the high level of recognition and the similarity between the marks, it is foreseeable that the applicant may benefit from the special image aspects of the opponent’s trade mark reputation seen as a synonym of technology and/or quality.

The use of the contested mark may only take advantage of the repute of the earlier sign if they have a certain degree of similarity, by virtue of which the relevant section of the public makes a connection between those marks, that is to say, establishes a link between them, which it is likely to occur as explained above.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

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 sign would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

5. Conclusion

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

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

Since the opposition is fully successful on the basis of earlier mark No 454 546 there is no need to assess the remaining earlier rights invoked by the opponent.

COSTS

According to Article 85(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 Rule 94(3) and (6) and Rule 94(7)(d)(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

José Antonio GARRIDO OTAOLA

Carmen SÁNCHEZ PALOMARES

Michaela SIMANDLOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.