CASTORCIN | Decision 2427279 - CIN - CORPORAÇÃO INDUSTRIAL DO NORTE, S.A. v. Vertellus Specialties Inc.

Date Published: Sep 24, 2017

OPPOSITION No B 2 427 279

CIN - Corporação Industrial Do Norte, S.A., Avenida Dom Mendo, 831, 4474-009 Maia, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques, Pedro Gil Da Silva Pelayo de Sousa Henriques, Paulo Rul Da Silva Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 - 6°. Dt°., 4000-432 Porto, Portugal (professional representatives)

a g a i n s t

Vertellus Holdings LLC, 201 N. Illinois Street, Suite 1800, Indianapolis Indiana 46204

United States of America (applicant), represented by Groom Wilkes & Wright LLP, The Haybarn, Upton End Farm Business Park, Meppershall Road, Shillington, Hitchin, Hertfordshire SG5 3PF, United Kingdom (professional representative).

On 22/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 427 279 is upheld for all the contested goods.

2.        European Union trade mark application No 12 884 111 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 12 884 111 ‘CASTORCIN’. The opposition is based on, inter alia, Portuguese trade mark registration No 136 524 ‘CIN’. The opponent invoked Articles 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 Portuguese trade mark registration No 136 524.

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 Portuguese trade mark No 136 524.

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 24/07/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Portugal from 24/07/2009 to 23/07/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 2: Paints for construction painting, varnishes and fittings (not included in other classes).

Class 16: Paintbrushes, brushes and brushes.

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 28/07/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 28/09/2015 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 28/11/2015.

On 26/11/2015, within the time limit, the opponent submitted evidence of use. Upon request by the Office, the time limit to submit translations of the evidence of use into the language of the proceedings was extended until 20/07/2016. On 19/07/2016 the opponent filed translations of the evidence of use.

The opponent submitted evidence in support of the claim of reputation of its earlier mark on 28/04/2015. This evidence will also be taken into account in order to examine whether use of the earlier mark has been proved.

In addition, the opponent requested that the documents filed on 16/02/2015 regarding the opposition proceedings No 2 381 955 constitute evidence of reputation of the opposing trade mark ‘CIN’ in the current proceedings. However, a close examination of the documents enclosed in relation with opposition proceedings No 2 381 955 shows that the documents filed on that proceedings on 16/02/2015 are the same as the ones filed in the present opposition proceedings on 28/04/2015.

Therefore, the Opposition Division will take into account the evidence filed by the opponent on 28/04/2015 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:

• Decision of 15/03/2013, B 1 905 788.
• Declaration in Portuguese with its translation into English signed by the President of the Portuguese Association of Paints Mr. Pedro Reis de Almeida on 06/02/2015 stating that the trade mark ‘CIN’ is one of the oldest in the country in the sector of paints, varnishes and similar goods, and that it enjoys a high visibility being a trade mark with reputation and it is always associated with goods of quality. Moreover, it is stated that the Portuguese public recognises the trade mark ‘CIN’ even outside the sector of paints, varnishes and similar goods.

• Sworn declaration in Portuguese with its translation into English signed on 06/02/2015 by Ms. Paula Clara Costa Macedo, Certified Account, stating the records of the annual turnover of the trade mark ‘CIN’ from 2000-2014 related to the manufacture and trading of, among others, paints, lacquers in the EU. It stated that the sales in the Portuguese market represent about 90% of the total.

• A study in Portuguese with its translation into English conducted in November 2008 by Nielsen about the reputation of the trade mark ‘CIN’. It includes the methodology used: target audience, areas of Portugal, the sample and when the study was carried out (before and after the advertising campaign). According to the survey, unaided recognition of the ‘CIN’ brand in Portugal reached 29% and aided recognition 84% in November 2008. The survey also states that the CIN brand has high social penetration in all age groups and regions of Portugal. The survey concludes that the ‘CIN’ brand has a modern and vibrant image.

• A study in Portuguese with its translation into English carried out in June 2011 by Nielsen about the reputation and value of the ‘CIN’ brand. The survey states that ‘as the leading company in the paints market, ‘CIN’ is one of the main national brands: it is recognised by more than 90 % of the Portuguese population and also spontaneously recalled as a paint brand by more than 40% of the general public’. According to the survey, ‘the ‘CIN’ brand has a long history (established in 1917) and it continues to raise its profile: since the end of the 90s, ‘CIN’ brand total reputation has increased by around 10 percentage points and unaided reputation by approximately 15 percentage points.’ The study confirms that the reputation of the ‘CIN’ brand is high throughout all regions in Portugal. The study includes the methodology of the survey, such as the sample size (between 1 000 and 2 000 in each phase) and the fact that the number of interviews carried out in each phase was proportional to the density of the population. This survey includes an undated study carried out by the Marketing Research Institute about the value of the ‘CIN’ brand. According to the study, the CIN brand has a recognised image: in the opinion of consumers it differs from other paint brands in its attributes, such as innovation, trust and quality. Moreover, 89% of respondents believe that the ‘CIN’ brand offers innovative solutions to decoration problems—and it is particularly recognised for its quality.

• A study in Portuguese with its translation into English carried out in June 2014 by Nielsen about the reputation of paint trademarks. The survey states that ‘CIN’ is the second trademark in unaided and aided reputation. According to the survey, 16% of those who will paint the house in 2014 choose ‘CIN’.  The study includes the methodology of the survey, such as the sample size (1 000) and the fact that the number of interviews carried out in each stratum was proportional to the density of the parish.

• Excerpts from the opponent’s website (www.cin.pt) showing a list of stores in Portugal where goods under the trade mark CIN are available.

• An advertisement published in www.tintafresca.net on 17/02/2011 about the opening of two new CIN stores in Portugal’s western region. The advertisement mentions that ‘CIN has 62 stores, from North to South’. Furthermore, the advertisement refers to a ranking called ‘Coatings World 2009’ that ranks CIN in the 37th place in the world ranking of producers of paints and varnishes. It also includes several articles published in Diário As Beiras and in Diário de Coimbra respectively in 2011 about the opening of a new CIN store in Coimbra. Finally, several publications from 2010 and 2011 state that CIN invested 5 million Euro to expand manufacturing of paints at Maia.

• Press clips inserted in several publications in Portugal in 2011 related to the fact that CIN paints are ‘Iberian leader and world reference’ and strengthens its position in the world ranking of paint producers. Coating Worlds in 2009 includes a list of Top Companies in 2009 where ‘CIN’ is ranked in the 41st position with coating revenues of 319 million $.

• Press clips related to the range of the goods bearing the mark CIN, such as ‘CIN has presented the Aquastop range’ and ‘CIN launches products for wood’ in 2010. The evidence provides details of the publication dates and the media circulation figures.

• Press clips about ‘CIN acquires a Spanish company’ in 2010 which strengthens its leadership in the Iberian Peninsula.

• Press clips related to the opening of CIN stores in Angola and other news related to the expansion of the CIN brand, in among others, countries of Africa, Asia and South America.

• Press clips of 2011 about CIN participating in a meeting of the Nova Paint Club in India which was founded in 1983 to bring together the world’s leading paint manufacturers to exchange technical information and to share experiences.

• Press clips inserted in several publications and related to various topics regarding CIN paints.

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 clips, the declaration of the President of the Portuguese Association of Paints and the relevant studies of the trademark ‘CIN’ refer to Portugal.

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 dated beyond the relevant period. However, from the study carried out by Nielsen in June 2011 and the press clips (dated 2010-2011), 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 24/07/2009 to 23/07/2014 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 several publications show that CIN invested 5 million Euro to expand manufacturing of paints at Maia. Coating Worlds list includes a list of top companies in 2009 where CIN is ranked in the 41th position with coating revenues of 319 million dollars. All this information, supported by the remaining documents (annual turnover submitted by the Certified Account), 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 ‘CIN’ or its graphical representations  and 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, namely, the relevant studies, the press clips and the advertisement inserted in tintafresca.net show the word mark ‘CIN’ or the figurative signs  and .The signs used do constitute use of the earlier trade mark because the figurative features 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 covered by the earlier trade mark.

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.

In the present case the evidence listed above shows genuine use of the trade mark for the following goods: paints for construction painting, varnishes and fittings (not included in other classes) included in Class 2.

As it will become obvious from the assessment carried out below, it is not necessary, in the present case, to assess genuine use of the earlier mark in relation to the remaining registered goods, that is, goods in Class 16.

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 at least for the goods in Class 2, namely: paints for construction painting, varnishes and fittings (not included in other classes). Consequently, in the following assessment of the opposition, the goods for which the earlier mark is registered in Class 2 will be taken into account.

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 shall 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 claims to have due cause for using the contested mark. The applicant’s claim will need to be examined only if the three abovementioned conditions are met (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 60). Therefore, the Opposition Division will only deal with this issue, if still necessary, at the end of the decision.

1. Reputation of the earlier trade mark

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

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 19/05/2014. Therefore, the opponent was required to prove that the trade mark on which the opposition is, inter alia, based, acquired reputation in Portugal 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 2: Paints for construction painting, varnishes and fittings (not included in other classes).

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 by the opponent on 28/04/2015 to prove the reputation of the earlier mark has already been listed hereinabove under ‘Proof of Use’.

The applicant challenges the evidence of reputation by arguing that some of them do not come from independent sources.

The applicant’s argument is based on an individual assessment of each item of evidence. However, the Opposition Division must consider the evidence as a whole, that is, each indication should be weighed-up against the others, whereas information confirmed by more than one source will generally be more reliable than facts derived from isolated references.

As far as the sworn declaration is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. This applies to the evidence of reputation. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than 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 declaration are supported by the other items of evidence.

However, the evidence, taken as a whole, indicates that the earlier trade mark has been used for a substantial period of time in Portugal. The brand recognition studies carried out in November 2008 and in June 2011 and the press clips and articles together with the rankings of the TOP Companies in 2009 provides enough indications that the trade mark ‘CIN’ has a consolidated position in the market. Although some of the evidence is dated after the contested sign was filed (the study carried out by Nielsen in June 2014), the Opposition Division finds that, when considered in its totality, the evidence 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 paints and varnishes (Class 2).

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Portugal in connection with paints for construction painting, varnishes and fittings (not included in other classes) included in Class 2.

As the requirements for the application of Article 8(5) EUTMR are cumulative, and taking into account all the above, the Opposition Division will proceed to examination of the opposition in relation to the earlier trade mark and the following goods: paints for construction painting, varnishes and fittings (not included in other classes) in Class 2.

2. The signs

CIN	CASTORCIN
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 earlier mark is the word sign ‘CIN’ whereas the contested sign is the word mark ‘CASTORCIN’. 

The element ‘CIN’ of the earlier mark has no meaning in relation to the relevant goods for the relevant public therefore it enjoys an average degree of distinctive character.

As regards the contested sign, it cannot be denied and also according to the opponent, that a part of the relevant public will split the contested sign and perceive the element ‘CASTOR’ as referring to castor oil, an oily reddish-brown substance secreted by beavers, commonly used in industry for paint-related compositions. Bearing in mind the relevant goods, the element ‘CASTOR’ is weak as it will be associated by that part of the relevant public with some objective characteristics of the goods at issue, for instance the fact that the coatings, diluents, varnishes and oil compositions are made of or contain an oily substance secreted by beavers. As regards the element ‘CIN’ and as explained above, since it has no meaning in relation to the relevant goods for the relevant public, it has an average degree of distinctive character.

However, for another part of the public, the contested sign will be perceived as a whole and since it, as such, has no relation to the relevant goods it enjoys an average degree of distinctive character.

Taken into account this, the Opposition Division will continue the examination in relation to the part of the relevant public that will split the contested sign into ‘CASTOR’ and ‘CIN’ and for which the element ‘CASTOR’ is weak such as professionals in the relevant field.

The marks, being word signs, have no elements that could be considered clearly more dominant (more eye-catching) than other elements.

Visually, the signs coincide in the sequence of letters ‘CIN’; however, they differ in ‘CASTOR’ of the contested sign which is weak, as stated above. Therefore, the signs are visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛cin’, present identically in both signs. The pronunciation differs in the sound of the letters ‘castor’ of the contested sign which were found weak. Therefore, the signs are aurally similar to a high degree.

Conceptually, the relevant public will perceive the element ‘CASTOR’ of contested sign as referring to castor oil, an oily reddish-brown substance secreted by beavers and commonly used in the manufacture of the contested goods, whereas the earlier mark lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar. However, it has to be borne in mind that the conceptual difference between the signs results from a weak element, as set out above.

The signs under comparison are visually and aurally highly similar.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are highly similar on the visual and aural levels. 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 highly similar visually and aurally 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 1: Castor oil-based polyols for use in the further manufacture of coatings, sealants and adhesives applications; diluents for industrial use; wetting compositions.

Class 2: Thinners for coatings, paints, inks, adhesives, varnishes, lacquers; thinning agents.

Class 4: Castor oil compositions for technical purposes; castor oil compositions for industrial purposes.

As seen above, the earlier trade mark was found to have a reputation for: paints for construction painting, varnishes and fittings (not included in other classes) in Class 2.

The contested goods in Class 1 are, among others, chemical products for use in industry or other general applications. The contested goods in Class 2 all relate to different kind of thinners which might be used in the production of, among others, lacquers and varnishes including thinning agents. The contested goods in Class 4 consist of castor oil compositions for technical and industrial purposes. Consequently and in spite of the fact that the purpose of the some of the contested goods vis-à-vis the goods for which the opponent’s mark enjoys reputation could not always be the same, they are within related fields and the end users might coincide, specially the professional public. The relevant public will recognise the earlier mark ‘CIN’ because of its proven reputation and it is likely that the consumer´s choice could be influenced by the reputation of the earlier mark.

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’ (06/06/2012, 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 trade mark ‘CIN’ may be easily identified or recognised by the average consumer in Portugal. 

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:

• It developed over several years a constant high quality image. Therefore, the common existence of both trade marks in the market would cause definitely and categorically harm and serious losses to the opponent, as the public would certainly assign the goods of the contested trade mark to the same corporative origin.

• lt is plainly obvious that the trade mark whose registration the applicant unlawfully aims to obtain thereof was purportedly conceived so to take unfair advantage of the distinctive character or the repute of the outstanding and well-known opponent’s trade mark “CIN” and, therefore, to illegitimately get for itself the benefits arising thereto.

• Therefore, it is clear that, when using a trade mark equally identified by the word “CIN”, the applicant pretends to associate to the high quality image, to the know-how and to other positive elements relative to the goods designated by the earlier trade mark “CIN”.

• It would be highly dishonest to allow that the applicant takes advantage of the reputation and goodwill of the trade mark “CIN”, without undertaking any investment to acquire a similar reputation. The benefits that the applicant might enjoy would not be, since then, based on its own merits, but purely on the strong reputation of the previous trade mark in the relevant territory.

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 good quality, innovation and trendsetting (according to the study on CIN brand value carried out by The Marketing Research Institute) 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 and innovation) of the earlier trade mark has been proven. In view of this, it is probable that a transfer of the image 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 innovation 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. Due cause

As mentioned above, the applicant claims to have due cause for using the contested trade mark.

According to the applicant, it is in fact the proprietor of US rights in the mark CASTORCIN. They have used the mark since at least as early as 2008. As such, the application is a natural expansion of those rights. In support of its arguments, the applicant submitted an extract from the USPTO showing the registration details of the mark CASTORCIN which states first use in 2008.

The existence of a cause justifying the use of the trade mark applied for is a defence which the applicant may raise. Therefore, it is up to the applicant to show that it has due cause to use the mark applied for.

However, in the present case, the applicant’s claim is not well founded. The condition of due cause is not fulfilled merely by the fact that the applicant has submitted a registration certificate of the same contested mark in the USA. Moreover, the condition of due cause is not even met by the fact that the applicant has already used this sign for these products or similar products within and/or outside the relevant territory of the European Union. Even if the registration certificate shows first use in commerce since 2008, mere use of the sign is not enough — what must be shown is a valid reason justifying that use. In this case, the applicant merely claimed to be the proprietor of US rights in the mark CASTORCIN which have been used since at least 2008 but, even assuming that that aspect is relevant, provided no additional indication or explanation.

On the basis of the above, the Opposition Division considers that the applicant did not succeed in establishing due cause for using the contested trade mark.

6. 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 136 524 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

Michaela SIMANDLOVA

Carmen SÁNCHEZ PALOMARES

José Antonio GARRIDO OTAOLA

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.