m3 moneymailme | Decision 2596412 - ASSOCIATED NEWSPAPERS LIMITED v. MIHAI IVASCU

Date Published: Sep 22, 2017

OPPOSITION No B 2 596 412

Associated Newspapers Limited, Northcliffe House, 2 Derry Street, Kensington, London W8 5TT, United Kingdom (opponent), represented by Haseltine Lake LLP, Redcliff Quay, 120 Redcliff Street, Bristol BS1 6HU, United Kingdom (professional representative)

a g a i n s t

Mihai Ivascu, Cal. Calarasi nr. 244, bl. S21, sc. 3, et. 2, ap. 74, Bucharest, Romania (applicant), represented by S.C. Weizmann Ariana & Partners Agentie de Proprietate Intelectuala S.R.L., str. 11 Iunie, nr. 51, sc. A, etaj 1, ap. 4, sector 4, 040171 Bucharest, Romania (professional representative).

On 14/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 596 412 is partially upheld, namely for the following contested goods:

Class 9: Software applications; Computer application software for mobile telephones; Downloadable software; Downloadable image files; Instant messaging software; File-sharing software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless, and telecommunication networks; computer software for processing images, graphics, audio, video, and text.

2.        European Union trade mark application No 13 975 735 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 975 735 for the figurative mark .

The opposition is based on European Union trade mark registration No 831 149 and United Kingdom trade mark registration No 1 447 918, both for the word mark ‘MONEY MAIL’. The opponent invoked Articles 8(1)(b) and 8(5) EUTMR regarding these earlier rights.

The opposition is also based on the United Kingdom non-registered trade mark ‘MONEY MAIL’ (word mark) in connection with which the opponent invoked Article 8(4) EUTMR.

PROOF OF USE

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the proof of use in relation to the opponent’s European Union trade mark registration No 831 149.

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the European Union trade mark on which the opposition is based.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 13/07/2015. 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 13/07/2010 to 12/07/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 9:        Electronic publications; computer software and hardware to enable searching of data and connection to databases and the Internet; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, data processing equipment and computers; parts and fittings for all the aforesaid goods; software, CD ROMS; but not including software for generating, transmitting or handling money-related electronic mail and not including CD ROMS specifically formatted for the sending of such mail.

Class 16:        Paper, cardboard; printed matter; printed publications; newspapers; magazines; supplements; posters; periodicals; books; brochures; maps; holiday and travel guides; calendars; diaries; stationery; but not including stationery or other printed matter adapted for the sending of money by mail.

Class 35:        Advertising services and information services relating thereto; all the aforesaid services also provided on-line from a computer database or from the Internet; compilation and provision of business information, advice and statistics; business research; provision of commercial information; business information services; all the aforesaid services also provided on-line from a computer database or from the Internet; compilation of advertisments for use as web pages on the Internet; public relations services; classified advertising services; organisation of exhibitions and trade fairs for commercial and advertising purposes; recruitment, employment and personnel management services; information services relating to all the aforesaid services; all the aforesaid services also provided on-line from a computer database or from the Internet.

Class 36:        Provision of information relating to insurance and financial services; analysis, evaluation, advice and information relating thereto; financial management services; financial advisory services; financial services relating to credit card services, investment schemes and accounts; bank cards, debit cards, cheque verification and cheque cashing, issuing and redemption of traveller's cheques and travel vouchers and advisory services relating thereto; all the aforesaid information and services also provided on-line from a computer database or from the Internet; but not including any such advisory or information services being disseminated by mail or electronic mail.

Class 38:        Telecommunication of information (including web pages), computer programs and any other data; electronic mail services; provision of telecommunications access and links to computer databases and the Internet; telecommunication services provided in relation to the Internet; broadcasting services; news agency services; telephone rental services; provision and rental of telephone chat lines; information services relating to all the aforesaid services; all the aforesaid services also provided on-line from a computer database or from the Internet; provision of web pages; but not including services dedicated to effecting monetary payments or transfers by electronic mail.

Class 41:        Provision of information relating to education, sporting, current events, cultural activities and entertainment; publishing services; publication of printed matter and printed publications; publishing, publication and information services relating thereto; sports information services; organisation of competitions, quizzes, games and recreational and cultural facilities; news programme services for radio or television; all the aforesaid services also provided on-line from a computer database and/or from the Internet; electronic game services provided by means of the Internet.

Class 42:        Information and advice relating to healthcare and beauty care; cookery information and advice; career information and advice; fashion information and advice; gardening information and advice; information relating to hotels; medical information and advice; news services; information and advice relating to healthcare, beauty care, cookery, careers, fashion, gardening, hotels, medical matters and news services, also provided on-line from a computer database or from the Internet; news reporters and printing services; news clipping services; commissioned writing services, syndicated writing services concerning the Internet and on-line computer services, all these services also provided on-line from a computer database an/or the Internet; providing access to and leasing time to computer databases; design, drawing and commissioned writing, all for the compilation of web pages on the Internet; restaurant, canteen, snack bar, cafe, cafeteria, wine bar, nightclub, public house and catering services; provision of food and drink; information relating to all the aforesaid services also provided on-line from a computer database or from the Internet; provision of information relating to political activities, also provided on-line from a computer database and/or from the Internet.

According to Rule 22(3) EUTMIR, the evidence of use must 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 30/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/06/2016 to submit evidence of use of the earlier trade mark. After an extension of this time limit accepted by the Office and another one rejected, this time limit ended on 16/08/2016. On 16/08/2016, within the time limit, the opponent submitted evidence of use.

On 15/05/2017, after expiry of the time limit, the opponent submitted additional evidence. In the present case, the issue of whether or not the Office may exercise the discretion conferred on it by Article 76(2) EUTMR to take into account the additional evidence submitted on 15/05/2017 is not, strictly speaking, necessary.  Indeed, even if the evidence were taken into account it merely sets out information about the company itself rather than giving any indications as to the question of genuine use. Indeed, the documentation was submitted in response to the applicant’s assertions concerning the origin of some of the pieces of evidence not deriving from the opponent. This issue will be tackled in the assessment of the evidence and it will become clear that it is not necessary to take into account this latter set of evidence.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

Therefore, the evidence to be taken into account is the following:

• Exhibit 1: an extract from the internet (www.dmgt.com), printed on 05/08/2016, regarding the company ‘DMG Media’ to which, according to the opponent, it is affiliated. According to it ‘DGM Media has more than 120 years’ heritage in newspaper publishing’ and is a ‘global multi-media business providing the world with the latest news and information in national newspapers, websites, mobile and tablet applications’. Among its portfolio of media brands, ‘The Daily Mail’, ‘The Mail on Sunday’, ‘MailOnline’ and ‘Metro’ are cited. The extract also contains information about revenue, operating margin, number of employees and operating profit of the group for the years 2014 and 2015. The earlier mark does not appear in the evidence.

• Exhibit 2: extracts from the annual reports of the ‘Daily Mail and General Trust plc’ (DMGT) for the years 2013, 2014 and 2015, containing information such as ‘dmg media’ revenue, operating profit and operating margin, as well as ‘The Daily Mail’ market share in UK, the ‘MailOnline’ audience or the ‘Mail’ brands advertising revenue. They present the consumer section of the ‘DMGT’ group, ‘dmg media’, as ‘an international publisher with a print and digital portfolio’. The earlier mark does not appear in the evidence.

• Exhibit 3: an extract from the opponent’s website www.mailconnected.co.uk presenting the newspaper’s Wednesday section ‘Money Mail’ as a ‘valued source of advice and information’ for its financially-aware readers and mentioning an award received in 2011 from the financial website www.headlinemoney.co.uk which named ‘Money Mail’ as runner-up in the Consumer Title of the Year category.

• Exhibit 4: a chronology of key events in the history of the ‘Daily Mail’ compiled by Morag McFarland of the ‘Daily Mail’, with a 2013 copyright by the ‘Associated Newspapers Limited’, where it is mentioned that the ‘Money Mail’ section was launched on 28/09/1966, providing advice and news about personal finance.

• Exhibit 5: a copy of a ‘Money Mail’ section issued with the Wednesday 27/08/2014 edition of the ‘Daily Mail’.

• Exhibit 6: a copy of the front cover of the ‘Daily Mail’ dated Wednesday 21/04/2010, with a reference to the ‘Money Mail’ section (starting in page 43 of the newspaper), along with a copy of the full section.

• Exhibit 7: screenshots from a television advert regarding the ‘Daily Mail Money Mail’ section posted in YouTube on 21/02/2011.

• Exhibit 8: extracts from circulation certificates regarding national newspapers published by the ‘Audit Bureau of Circulations’ (ABC), the UK industry body for media measurement, which show the average daily circulation figures for the ‘Daily Mail’ newspaper in the UK and the Republic of Ireland during the years 2011 (period covered from 30/05/2011 until 03/07/2011), 2013 (period covered from 01/04/2013 until 28/04/2013) and 2014 (period covered from 24/02/2014 until 30/03/2014).

• Exhibit 9: two internet articles, from www.statista.com (printed on 03/08/2016) and www.pressgazette.co.uk (dated 26/02/2015), comparing the circulation and readership of the ‘Daily Mail’ newspaper, in print and online versions, to other UK national newspapers. The first article indicates that the statistics show the average monthly reach of the leading national newspapers in the United Kingdom from April 2015 to March 2016, with the ‘Daily Mail’ print title and its website dailymail.co.uk reaching an average 18.2 million individuals a month through both its print and digital formats. The second article presents the ‘Daily Mail’ as the most popular UK newspaper in print and online with 23m readers a month according to the figures released by the National Readership Survey for the whole 2014.

• Exhibit 10: an internet extract from www.theguardian.com, dated 21/03/2012, listing the ‘Daily Mail’ as winner of the ‘Newspaper of the Year award’, among others, made at ‘The British Press Awards’ ceremony in 2012.

• Exhibit 11: extracts from the newspaper subscription service ‘OCS media’ (at www.ocsmedia.net) on which expatriate consumers (for example in Spain) can purchase vouchers which can be exchanged for the ‘Daily Mail’ at local news retailers, including an extract of the subscription page for the ‘Daily Mail’ as it appeared on 05/06/2013 retrieved using the Internet Archive service ‘WayBackMachine’ at web.archive.org.  

• Exhibit 12: a list of the retailers in Spain (over 130) at which vouchers can be exchanged for copies of the ‘Daily Mail’. According to the opponent, this list is available using the dropdown menu on the ‘OCS media’ webpage.

• Exhibits 13 to 17: examples of awards won by the ‘Money Mail’ financial section and its journalists in 2010, 2012-2015: Newspaper Title of the Year by the Headline Money 2010 Awards; Up and Coming Journalist of the Year won by Money Mail journalist Dan Hyde at the 2012 annual journalism awards from the Association of British Insurers; Consumer Money Journalist of the Year and Rising Star of the Year won by the Money Mail journalists James Coney and Victoria Bischoff at the 2013 Society of Editors Awards; Money Mail writers recognised at 2014 Santander Financial Media Awards; Rising Star of the Year (Consumer) and Investment Journalist of the Year (Consumer) won by the Money Mail journalist Holly Black, with other Money Mail writers shortlisted, at Headline Money 2015 Awards.

• Exhibit 18: screenshots from the ‘MailOnline’ and the ‘Daily Mail’ websites dated 11/06/2013, 05/08/2016 and 16/08/2016 showing the various ways in which the ‘Daily Mail’ could be read on paper and electronically, including a reference to ‘Money Mail’: online through an internet browser, using an app or downloaded and read offline/exported to an e-reader.

• Exhibit 19: sample articles published on the ‘MailOnline’ website between 2014 and 2016, showing the ‘Money Mail’ trade mark.

• Exhibit 20: sample articles from the ‘Money Mail’ section, dated 2012 and 2013, used on the finance-specific sister website of ‘MailOnline’, ‘This is Money’, showing the ‘Money Mail’ trade mark.

• Exhibit 21: samples of third party articles (e.g. AOL Money UK, Moneywise, Titan telecom, PressGazette) referencing ‘Money Mail’. These articles are dated between 2011 and 2015.

• Exhibit 22: an extract dated 07/03/2016 showing the use of the earlier mark in relation to a downloadable eBook entitled “Money Mail” Moves Abroad’.

• Exhibit 23: an example of ‘Money Mail’-branded marketing campaign targeted at advertisers during the years 2012-2013, along with marketing material and the published advertising rate card for the Daily Mail from 2015, which specifically references the price for placing advertisements in the ‘Money Mail’ section. The samples of the Money Mail publication supplied at Exhibits 5 and 6 also contain traditional advertisements in both printed and electronic versions.

• Exhibit 24: an example of a competition (‘Money Mail’ Christmas Quiz), published in the ‘Money Mail’ on 26/12/2012, sponsored by Nationwide.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company, namely DGM Media Limited, and that the connection between both companies has not been proved.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor.

The fact that the opponent submitted evidence of use of its mark by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by this other company was made with the opponent’s consent and thus is equivalent to use made by the opponent. As such, the applicant’s contentions are set aside as are the evidence submitted later to clarify the relationship between the opponent and DGM Media Limited.

The applicant also argues that the evidence does not indicate genuine use in terms of extent and use for the goods and services for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

The requirements for proof of use, namely the place, time, extent and nature of use, are cumulative (05/10/2010, T-92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). Therefore, the opponent is obliged to prove that each of these requirements has been met.

The annual reports, the extracts from the opponent’s websites, the copies of the newspapers, the extracts of circulation certificates regarding national newspapers, and the internet articles and extracts show that the place of use is, at least, the United Kingdom. This can be inferred from the language of the documents (English), the currency mentioned (Sterling Pounds) and the references to this country in the documents. Therefore, the evidence relates to the relevant territory.

The vast majority of the evidence is dated within the relevant period or refers to information or events falling within this period, as shown in the description of the evidence above.

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.

In the present case, the documents filed, namely the extract from the website of the opponent’s group of enterprises, the annual reports, the extracts of circulation certificates regarding national newspapers in the UK and the two internet articles on circulation and readership of newspapers in the UK, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Even though most of the information contained in the evidence relates to the ‘Daily Mail’ newspaper, taking into account that it has been sufficiently proven that ‘Money Mail’ refers to a financial section included in this newspaper, the circulation and readership data, as well as the revenue figures and market share percentages can be somehow extrapolated to this section even if it is published once per week. It should be pointed out in this regard that the circulation of the financial section cannot be separated from the circulation of the newspaper itself as they come together. Furthermore, in the present case, it should be pointed out that the opponent may not be in position of filing other kind of commercial documents in order to prove the extent of use of the earlier trade mark, as, for example, invoices are not habitually issued in relation to the purchase of newspapers and all the more reason in relation to a specific section in a newspaper.

The evidence submitted by the opponent in order to prove genuine use of the earlier EUTM relates mainly to the UK, with few indications about Ireland and Spain. As stated above, the territorial scope of the use is only one of several factors to be assessed in the determination of whether the use is genuine or not.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the 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.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The evidence shows that the mark has been used either as registered, that is, a word mark ‘MONEY MAIL’, or as a figurative mark . However, as regards the latter, the use of the earlier mark along with the decorative colour blue, the title case typeface and underlining does not alter the distinctive character of the mark as registered.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Furthermore, the applicant claims that the earlier mark has not been used as a trade mark taking into account that ‘Money Mail’ is merely a section in the ‘Daily Mail’ newspaper, which is the trade mark actually used. However, as submitted by the opponent, it is common on the market for a producer to have several trade marks that act under an umbrella brand. Further, these may be used in combination. In the case at hand, the evidence shows that the sign does function as a trade mark since the link between the goods and services and the opponent has been demonstrated, the trade mark is used in relation to goods and services on the market . Therefore, the applicant’s claim must be set aside.

Taking into account the evidence submitted by the opponent in its entirety, although it is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, this evidence does not show genuine use of the trade mark for all the goods and services 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 will, 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).

It should be noted that the evidence shows use in relation to paper and electronic publications in the form of a financial section in a newspaper (Classes 9 and 16), as well as regarding provision of information relating to insurance and financial services and analysis, evaluation and information relating thereto (Class 36) and, finally, publishing of electronic publications, not downloadable that can be considered to form an objective subcategory of publishing services (Class 41).

However, the opponent has not succeeded in proving use in relation to the remaining goods and services. In particular, and contrary to the opponent’s claims made in its observations, use has not been shown in relation to books (Class 16), advertising and related services, compilation and provision of business information, advice and statistics, provision of commercial information (Class 35), advice relating to insurance and financial services, financial services, financial advisory services, financial services relating to credit card services, investment schemes and accounts (Class 36), telecommunication services, news agency services (Class 38) or publication of printed matter and printed publications, syndication of news content for others (Class 41).

In this regard, the opponent has filed one single document dated outside the relevant period presenting a downloadable electronic book under the earlier trade mark (Exhibit 22). This is clearly insufficient as regards time and extent and therefor, use has not been proved regarding E-books in Class 9, whereas no evidence has been submitted regarding books in Class 16.

 

Furthermore, advertising services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, etc. The fact that the opponent may sell spaces in the newspaper is not tantamount to providing advertising services by specialised advertising agencies in the sense indicated above. As regards business and commercial information-related services in the same class, these services are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc. This is not the case here and it is not accepted that genuine use has been made regarding these services.

In addition, even though the opponent provides financial information through the newspaper section, it does not provide financial services as such or financial consulting services in Class 36 which are normally provided by financial agents or financial advisors to individuals or businesses. Advisory clients pay fees based on services provided or as a percentage of assets under management. The opponent mentions the fact that letters from the readers are responded in the financial section but this cannot qualify as financial advice as it is not a service provided to a client regarding a particular case but general information about finances that can apply to a number of reader’s financial situations.

In the same regard, telecommunications services in Class 38 within the sector of information and communication technology is made up of all telecommunications/telephone companies and internet service providers and plays a crucial role in the evolution of mobile communications and the information society, whereas a news agency is an organisation that gathers news reports and sells them to subscribing news organisations, such as newspapers, magazines and radio and television broadcasters. It is clear that the opponent is not a telecommunications service provider and even though the opponent has shown that the earlier mark is used to identify a section in a newspaper, it has not submitted any evidence in order to prove the provision of news content to other news organisations and, therefore, use regarding these services should be deemed unproven.

Finally, the opponent issues printed and electronic publications but there is nothing in the evidence proving that it provides publication of printed matter and printed publications for third parties in Class 41 and the same conclusion can be applied to the syndication of news content services which is the supply of material from the content providers for reuse and integration with other material, often through a paid services subscription.

Genuine use is also refused in relation to the remaining goods and services not specifically mentioned by the opponent because the evidence does not contain any indication whatsoever regarding these remaining goods and services as for example, software in Class 9, stationery in Class 16, recruitment, employment and personnel management services in Class 35, bank cards, debit cards, cheque verification and cheque cashing in Class 36, telephone rental services in Class 38, sports information services in Class 41 or information and advice relating to healthcare and beauty care in Class 42.

Therefore, in the present case the evidence shows genuine use of the trade mark for the following goods and services:

Class 9:        Electronic publications.

Class 16:        Printed matter; printed publications; newspapers; supplements; periodicals.

Class 36:        Provision of information relating to insurance and financial services; all the aforesaid information and services also provided on-line from a computer database or from the Internet; but not including any such information services being disseminated by mail or electronic mail.

Class 41:        Publishing of electronic publications, not downloadable; all the aforesaid services also provided on-line from a computer database and/or from the Internet.

Therefore, the Opposition Division will only consider the abovementioned goods and services in its further examination of the opposition.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark, however the Opposition Division will continue  to examine the opposition in relation to the same earlier right for which genuine use has been assessed, namely European Union trade mark registration No 831 149.

1. The goods and services

The goods and services on which the opposition is based and for which genuine use has been established are the following:

Class 9:        Electronic publications.

Class 16:        Printed matter; printed publications; newspapers; supplements; periodicals.

Class 36:        Provision of information relating to insurance and financial services; all the aforesaid information and services also provided on-line from a computer database or from the Internet; but not including any such information services being disseminated by mail or electronic mail.

Class 41:        Publishing of electronic publications, not downloadable; all the aforesaid services also provided on-line from a computer database and/or from the Internet.

The contested goods and services are the following:

Class 9: Software applications; Computer application software for mobile telephones; Financial management software; Downloadable software; Downloadable image files; Instant messaging software; File-sharing software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless, and telecommunication networks; computer software for processing images, graphics, audio, video, and text.

Class 38: Providing online computer databases; Providing internet chatrooms; Telecommunications; data transmission and reception services via telecommunication networks; electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunication networks; Instant messenger services; Mobile phone communication services.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Technical support services, namely troubleshooting of computer software problems; Consultancy in the field of computer software and Designing of computer software.

As a preliminary remark, the applicant claims that the contested mark is actually used in connection with ‘an innovative chatting app which allows instant transfer of money’ and that no likelihood of confusion exists with respect to the earlier registered trade mark. In this regards, it should be borne in mind that, within the context of opposition proceedings initiated on the basis of Article 8(1)(b) EUTMR by the proprietor of an earlier trade mark, the examination of a possible similarity between the goods and services covered by the mark applied for and by the earlier mark must be carried out by reference to the list of goods and services covered by those two marks and not to the goods or services actually marketed under those marks (04/04/2014, T-568/12, Focus extreme, EU:T:2014:180, § 30 and the case-law cited therein). Therefore, the arguments raised by the applicant along with the evidence submitted in this respect are irrelevant.

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

Contested goods in Class 9

The contested software applications; computer application software for mobile telephones; downloadable software; instant messaging software; file-sharing software; communications software for electronically exchanging data, audio, video, images and graphics via computer, mobile, wireless, and telecommunication networks; computer software for processing images, graphics, audio, video, and text are computer software and software-related applications and are similar to the opponent’s electronic publications which are electronic versions of traditional media like online newspapers. It is becoming increasingly common to distribute newspapers to consumers through mobile phones or tablet reading devices by means of the so-called ‘apps’ in the form of electronic publications. Consequently, there is a complementary relation between software/apps and electronic publications. Their producers can coincide, they follow the same distribution channels and the public is generally also the same.

The contested downloadable image files are also similar to the opponent’s electronic publications as they have the same nature and purpose. Furthermore, they can coincide in producer, end user and distribution channels.

However, the contested financial management software is specialised software aimed at financial management and has nothing relevant in common with any of the opponent’s goods and services. This is because they differ in their purposes, natures and methods of use. Furthermore, they do not have the same relevant public, producers or distribution channels and are neither complementary to nor in competition with each other. The mere fact that the opponent provides information relating to financial services is not in itself sufficient for a finding of similarity between the contested goods and the opponent’s services in Class 36, as all the relevant factors mentioned previously differ when comparing them. The goods and services are dissimilar.

Contested services in Class 38

The contested services in this class are telecommunication services which have nothing relevant in common with any of the opponent’s goods and services included in Classes 9, 16, 36 and 41, since their natures, purposes and methods of use are not the same. They are provided by different undertakings and do not have the same relevant public or distribution channels. Furthermore, they are neither complementary to nor in competition with each other. Therefore, they are dissimilar. The mere fact that some of the contested services may include transmission of magazines and magazine content, online magazine forums and discussion boards, as pointed out by the opponent, has no impact, since this connection is insufficient in itself to say the opposite, particularly when all the relevant factors determining similarity of goods and services differ in the present case, as explained above.

Contested services in Class 42

The contested services in this class, all being related to science, research, industrial design, software support and consulting, are dissimilar to any and all of the opponent’s goods and services in Classes 9, 16, 36 and 41 as they do not coincide in any of the Canon criteria specified above which can give rise to a level of similarity between them: they differ in their natures, purposes and methods of use. Furthermore, they do not coincide in end users and are provided through different trade channels by different undertakings and they are neither complementary nor in competition.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased goods.

3. The signs

MONEY MAIL
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 element ‘MONEY’ of the earlier mark is a basic English word that will be understood by the relevant public in virtually all the Member States of the European Union as ‘a current medium of exchange in the form of coins and banknotes; coins and banknotes collectively’ (information extracted from Oxford Dictionary on 06/09/2017 at www.oxforddictionaries.com). Due to its widespread use in the context of electronic correspondence, the element ‘MAIL’ of the earlier mark will be understood by a part of the relevant public as a shortened version of ‘email’, with the meaning of ‘messages distributed by electronic means from one computer user to one or more recipients via a network’ (same dictionary and date). Furthermore, the element ‘MAIL’ of the earlier mark will also be associated by a part of the relevant public with correspondence, that is ‘letters and parcels sent by post’, or as a term ‘used in titles of newspapers’ by the English-speaking part of the public (same dictionary and date).

It follows from the above that part of the public in the relevant territory will associate the earlier mark as a whole with the meaning of ‘correspondence in connection with money’, and, for reasons of procedural economy, the Opposition Division will focus the comparison on this part of the public. If a significant part of the relevant public for the goods at issue may be confused about the origin of the goods, it will be sufficient to establish a likelihood of confusion. It is not necessary to establish that all actual or potential consumers of the relevant goods are likely to be confused. As to the distinctive character of the two elements, neither is more distinctive than the other since both elements may have a lower degree of distinctive character for the relevant goods for which money may be the subject matter (namely, electronic publications) and ‘mail’ the means of correspondence, at least in the perception of the relevant public.  

The above-mentioned assertions regarding the meaning and distinctive character of the terms ‘money’ and ‘mail’ (regarding the relevant various computer software and software-related applications, and downloadable image files) applies mutatis mutandis to the contested sign, since, contrary to the applicant’s assertions, these words appear visually identified and separated by their different colours. Furthermore, also considering that at least the English-speaking part of the relevant public will associate the element ‘me’ with a pronoun ‘used by a speaker to refer to himself as the object of a verb or preposition’ (same dictionary and date), the contested mark as a whole may be associated with the meaning of ‘sending correspondence in connection to money to the speaker’. The element ‘m’ and the numeral ‘3’ contained in the figurative element of the contested sign will be associated with ‘three letters m’ or ‘letter m cubed or to its third power’ (mᵌ), reinforcing the three words ‘money’, ‘mail, and ‘me’ which start with this initial. As it does not describe any characteristic of the relevant goods, it is distinctive.

Contrary to the applicant’s claim, the contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.  

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). Thus the verbal constituents of the contested mark carry more weight.

Furthermore, since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

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

Visually, the signs coincide in the elements ‘money’ and ‘mail’ placed at the beginning of the verbal element ‘moneymailme’ of the contested sign in quite standard lowercase typeface. Therefore, the earlier mark is fully contained in the contested sign and visually separated because of the different colours of the respective elements. The signs differ in the element ‘me’ of the contested mark, as well as in the colours and the figurative element containing the letter ‘m’ and the numeral ‘3’ of the contested sign. However, this figurative component has a lower impact than the verbal element as seen above. As these elements are on equal footing as concerns their distinctive character for the relevant goods and services, considering all the factors mentioned, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the words ‘money’ and ‘mail’, present identically in both signs and at the beginning of the verbal element ‘moneymailme’ of the contested sign. The pronunciation differs in the syllable ‘me’ and in the sound corresponding to the letter ‘m’ and the numeral ‘3’ of the contested mark in the case the latter are pronounced at all by the relevant public. Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning, as far as both contain the elements ‘money’ and ‘mail’ and differ in the concept associated to ‘mᵌ’, that refers and reinforces the three words ‘money’, ‘mail’ and ‘me’, and also differ regarding a part of the relevant public in the concept of the pronoun ‘me’, the signs are conceptually similar at least to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent the earlier trade mark has a reputation in the United Kingdom and Ireland in connection with all the goods and services for which it is registered (in Classes 9, 16, 35, 36, 38, 41 and 42). However, taking into consideration the conclusions regarding the proof of use, the Opposition Division will only analyse the reputation regarding the goods and services on which the opposition is based and for which genuine use has been established, namely the following:

Class 9:        Electronic publications.

Class 16:        Printed matter; printed publications; newspapers; supplements; periodicals.

Class 36:        Provision of information relating to insurance and financial services; all the aforesaid information and services also provided on-line from a computer database or from the Internet; but not including any such information services being disseminated by mail or electronic mail.

Class 41:        Publishing of electronic publications, not downloadable; all the aforesaid services also provided on-line from a computer database and/or from the Internet.

Even though the only relevant goods for the purposes of Article 8(1)(b) EUTMR are those included in Class 9, for the sake of clarity in the further examination of the opposition under Article 8(5), the Opposition Division will analyse in the present section the reputation claimed as regards all the goods and services for which genuine use has been established as listed above.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent on 16/08/2016 with the aim of proving the genuine use of the of the earlier mark, are also to be considered in order to prove the reputation of the earlier mark as these pieces of evidence were submitted within the period granted by the Office for the opponent to furnish further facts, evidence or arguments to substantiate the opposition (ending on 04/08/2016 after extension of the time limit).

In the present case, having examined the material listed above, under the section on the proof of use, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite showing some use of the trade mark, the evidence submitted does not allow the Opposition Division to deduce any solid conclusion in relation to the trade mark’s recognition by the consumers in the UK and Ireland. In particular, even though the opponent has presented the market share, audience and circulation figures of its newspapers the ‘Daily Mail’ and the ‘MailOnline’ (in which the section ‘Money Mail’ is included once a week) through the information contained in the annual reports, circulation certificates and third parties articles, this does not prove the degree of recognition of the earlier mark among the consumers but only the use made of the name of the publication. The remaining evidence, mostly derived from the opponent itself, does not corroborate the opponent’s claim in the sense that it does not give any direct insight into the recognition of the earlier trademark among the public.

Furthermore, in spite of the number of awards received by the publication or its journalists, such fact alone cannot prove per se the reputation or high degree of recognition among the public because these awards represent, at most, the recognition among the professionals in the press sector but does not allow for any conclusions to be drawn on consumer perception. There is, therefore, no evidence that would establish the recognition of the mark by the relevant public. In this regard, the opponent did not submit any other documents such as surveys regarding the mark’s recognition, affidavits or statements from professional press associations or promotional material able to show that the mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

It must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark

enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (06/11/2014, R-0437/2014-1, SALSA/SA SALSA (fig. mark) et al.).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no clear or direct meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of elements of a lower degree of distinctive character in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods and services are partly similar and partly dissimilar to the goods and services on which the opposition is based and in relation to which genuine use has been proven. Those conflicting goods found to be similar target the public at large and business customers, with a degree of attentiveness that may vary from average to high. The earlier mark as a whole has an average degree of distinctiveness in relation to the relevant goods.

It has also been concluded that the signs are visually and aurally similar to an average degree and conceptually similar at least to an average degree taking into account that the earlier mark ‘MONEY MAIL’ is fully reproduced in the contested sign’s verbal element ‘moneymailme’ where it is visually separated by different colours used in the words constituting this element. The differences created by the additional last syllable ‘me’ and the colours and figurative element, all present in the contested sign, are not sufficient to avoid confusion, as explained in detail above.

Account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Furthermore, it should also be borne in mind that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards similar goods. As such, the relevant public may believe that the goods come from the same undertaking or, at least, economically-linked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As regards the focus on a part of the relevant public, as outlined above, there is no need to establish that all actual or potential consumers of the relevant goods are likely to be confused.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to those of the earlier trade mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

The opponent has also based its opposition on the UK trade mark registration No 1 447 918 for the word mark ‘MONEY MAIL’ in Class 16.

Since this mark is identical to the one which has been compared and covers a narrower scope of goods, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

In the same regard, there is no need to assess the proof of use in relation to this earlier mark as the outcome will not be different taking into account all the goods for which it is registered.

The examination of the opposition continues in relation to the remaining grounds invoked by the opponent.

REPUTATION – ARTICLE 8(5) EUTMR

Article 8(5) EUTMR was raised in connection with European Union trade mark registration No 831 149 and United Kingdom trade mark registration No 1 447 918, both for the word mark ‘MONEY MAIL’, for which the opponent claimed repute in the UK and Ireland, and the UK, respectively.

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 above mentioned 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

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark(s) has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As previously concluded, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

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

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that 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.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

Article 8(4) EUTMR was raised in connection with the non-registered trade mark ‘MONEY MAIL’ used in the course of trade in the United Kingdom in relation to the following goods and services: printed and electronic publications and supplements, publication of printed matter and printed and electronic publications, advertising, provision and publication of information relating to money, finance, investments and insurance, financial advisory services and analysis, evaluation, advice and information relating to money, finance and financial services.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to the second requirement.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit any information on the legal protection granted to the type of trade sign invoked by the opponent, namely the United Kingdom non-registered trade mark protected under the passing-off tort. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martin MITURA

Eva Inés PÉREZ SANTONJA

Vanessa PAGE

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.