Pay Pal | Decision 2605239

Date Published: Sep 22, 2017

OPPOSITION No B 2 605 239

PayPal, Inc., 2211 North First Street, San Jose, California 95131, United States of America (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Jianyong Cheng, Lu Cheng Qu Che Zhan Da Dao Yu Da Da Sha 1701, Wenzhou, Zhejiang 325000, People’s Republic of China (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via 69 -5° Of. 510, 28013 Madrid, Spain (professional representative).

On 13/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 605 239 is upheld for all the contested goods.

2.        European Union trade mark application No 14 415 855 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 14 415 855 for the figurative mark . The opposition is based on, inter alia, international trade mark registration No 1 222 763 designating the European Union for the figurative mark . The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier international trade mark registration No 1 222 763 designating the European Union.

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

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

• 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.

• The signs must be either identical or similar.

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

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

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

In the present case the contested trade mark was filed on 29/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9:        Computer software for processing electronic payments and for transferring funds to and from others; authentication software for controlling access to and communications with computers and computer networks; magnetically encoded credit cards and payment cards.

Class 35:        Promoting the goods of others, namely, providing information regarding discounts, coupons, rebates, vouchers and special offers for the goods of others; promoting the goods and services of others by providing hypertext links to the web sites of others; promoting the goods and services of others by providing a web site featuring links to the online retail web sites of others; business consulting services in the field of online payments; managing and tracking credit card, debit card, ACH, prepaid cards, payment cards, and other forms of payment transactions via electronic communications networks for business purposes; business information management, namely, electronic reporting of business analytics relating to payment processing, authentication, tracking, and invoicing; business management, namely, optimization of payments for businesses.

Class 36:         Financial services, namely, electronic funds transfer; clearing and reconciling financial transactions; providing a wide variety of payment and financial services, namely, credit card services, issuing credit cards and lines of credit, processing and transmission of bills and payments thereof, bill payment services with guaranteed payment delivery, and brokerage of money market funds, all conducted via a global communications network; credit card and debit card transaction processing services; reimbursement of funds for disputed items in the field of electronic payment purchases; providing purchase protection services for goods and services purchased by others via a global computer network and wireless networks; credit card transaction processing services; credit services, namely, providing revolving credit account services; bill payment services; providing electronic mobile payment services for others; credit card and payment processing services; electronic foreign exchange payment processing; payment processing services, namely, providing virtual currency transaction processing services for others.

Class 42:        Providing temporary use of on-line non-downloadable software for processing electronic payments; providing temporary use of on-line non-downloadable authentication software for controlling access to and communications with computers and computer networks.

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

On 23/05/2016, the opponent submitted evidence to support this claim. 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. The evidence consists, in particular, of the following documents:

• Enclosure 2: sworn declaration dated 17/05/2016 by Mr Clifford Webb, the opponent’s Head of Trade Marks Copyrights and Domains, containing various exhibits. This declaration contains detailed information about the launch and the history of the trade mark ‘PayPal’ both worldwide and in the European Union specifically. It states that the opponent is a leading global online payment company, which was founded in 1998. Through its various websites and mobile applications, including www.paypal.com, ‘PayPal’ provides a fast, secure and easy way for users to send and receive payments online. The service allows people to send money without sharing financial information, with the flexibility to pay using their ‘PayPal’ account balances, bank accounts, credit cards or promotional financing. From its inception until the end of 2013, ‘PayPal’ registered hundreds of millions of user accounts worldwide. Of those, a significant proportion were user accounts for people in the European Union. Reference is made to the large number of transactions carried out within the European Union (many billions) and details are given of the high brand rankings that ‘PayPal’ achieved over the years. Furthermore, it states that the opponent operates under the ‘PayPal’ mark in a very large number of markets around the world, allows customers to be paid in a large number of currencies and has fully localised websites in various jurisdictions, including Austria, Belgium, Denmark, France, Germany, Italy, the Netherlands, Poland, Spain and Sweden.
• Exhibit A: list showing numerous national and regional applications and registrations worldwide for word and figurative ‘PayPal’ marks.
• Exhibit B: copies of registration certificates for various EUTM registrations for word and figurative ‘PayPal’ marks.
• Exhibit C: extracts from the ‘PayPal’ main global website, www.paypal.com, showing the earlier mark as registered in relation to payment services with various statements, such as ‘people around the world rely on us to pay and get paid’, ‘join 179+ million people who use “PayPal” to pay securely on millions of sites’, ‘whether you’re buying or selling, get the security you expect plus purchase or seller protection on all eligible transactions’, ‘accepted by millions of brands’, ‘use PayPal at businesses, big and small, in 200+ countries around the world’, ‘pay securely online, in apps, and in stores’, ‘Pay securely. Here, there, anywhere’, ‘Just a simple, secure way to pay when you’re out in the world’, ‘Buy into being safer’, ‘Gone are the days of waiting to get paid. Now you can request a secure payment in a few clicks’, etc.
• Exhibit D: extracts from ‘PayPal’ websites in Germany (www.paypal.com/de), the UK (www.paypal.com/uk), France (www.paypal.com/fr), Italy (www.paypal.com/it) and Spain (www.paypal.com/es), showing the earlier mark as registered and containing various statements, such as ‘safer and protected’, ‘Shop with peace of mind. We don’t share your sensitive financial details with sellers. And PayPal Buyer Protection covers your eligible purchases if they don’t show up or match their description’, ‘pay quickly and more securely with just an email address and password or mobile number and PIN’, ‘Pay or get paid in 203 countries and markets, and in 26 currencies’, ‘We’re Great Britain’s No 1 preferred online and mobile payment method’ (the website states that the research was carried out by Ipsos MORI using Capibus, a face-to-face omnibus study in Great Britain interviewing a nationally representative profile of adults aged 15 or over each week), ‘find out why over 20 million UK shoppers use PayPal each year’, ‘the simpler, safer way to pay and get paid’, ‘using PayPal is simpler and safer’, etc.
• Exhibit E: extracts from ‘Alexa’ rankings. Alexa.com, a company that provides website statistics, ranks www.paypal.com among the most-visited websites in the world in terms of internet traffic, specifying the significant number of visitors from European countries such as the UK, Germany and Italy.
• Exhibit F: extracts from www.paypal.com/de and www.paypal.com/uk showing a selection of retailers and providers that accept payment through ‘PayPal’.
• Exhibit G: extract from www.thepaypalshop.com offering goods such as hoodies, caps, T-shirts, backpacks, messenger bags, lanyards, cases for mobile phones, beach polo shirts, USB drives, notebooks, laser pens, etc., bearing the earlier mark.
• Exhibit H: extract from www.thepaypalshop.com indicating the availability of international shipping options.
• Exhibit I: invoice for a men’s pebble beach shirt bearing the mark ‘PayPal’ issued to a customer in Ireland.
• Exhibit J: extract from www.thepaypalshop.com offering for sale a men’s pebble beach polo bearing the mark ‘PayPal’.
• Exhibit K: extracts from the ‘Brandz’ 2014 and 2015 reports and the ‘Interbrand’ 2015 report. In May 2014, ‘Brandz’ published its annual report and review of the ‘Top 100 Most Valuable Global Brands’, which included the mark ‘PayPal’. In the 2015 ‘Brandz’ report, ‘PayPal’ was again among the ‘100 Most Valuable Global Brands’. In addition, in 2015, ‘PayPal’ appeared for the first time in the ‘Interbrand’ annual report of the ‘100 Best Global Brands’.
• Enclosure 3: 37 press articles included in newspapers and other publications distributed or accessible between 2011 and 2016 in the European Union discussing the services offered under the trade mark ‘PayPal’, for example in The Times, The Telegraph, The Irish Times and the Handelsblatt. The Times has proclaimed that the opponent and its group of companies is an ‘online payments giant’ (see page 9 of newspaper dated 23/11/2015, article entitled ‘PayPal gets ready to branch out and take on the banks’). The Telegraph has referred to the opponent as a ‘payments giant’ (see page 45 of newspaper dated 23/07/2014, article entitled ‘PayPal loans: Working Capital offered to UK businesses; Payment Giant PayPal will offer loans to UK businesses for the first time, the company has announced’). Similarly, the Mail On Sunday has called the opponent ‘one of the founding giants of the technology world’ (see page 14 of the newspaper dated 23/08/2015, article entitled ‘The Rivals … In a Race to Replace Your Wallet’). The Irish Sunday Business Post refers to the opponent as ‘one of the world’s largest and leading payment companies’ and goes on to state that ‘[those familiar with PayPal’s customer care reputation won’t be surprised [at its winning of the 2014 CCMA awards]. PayPal has determinedly put the customer at the centre of its business, a strategy that has been supported pro-actively and is acknowledged to have delivered outstanding results internationally’ (see page 48 of newspaper dated 11/05/2014, article entitled ‘Contact Centre & Shared Services Sector: PayPal’s impressive haul of CCMA awards’). The Sunday Independent lists the opponent as one of the top multinationals, among the likes of Apple and Google, and refers to it as ‘the world’s biggest transaction company’ (see page 50 of newspaper dated 02/03/2014, article entitled ‘What PayPal is all about is changing the face of money’: PayPal boss Louise Phelan is guiding her company as it pioneers moves towards the cashless society, writes Roisin Burke’). The Irish Examiner proclaims the opponent as ‘the market leader in secure online transactions’ (see page 74 of newspaper dated 13/07/2012, article entitled ‘PayPal’s profits increase 12.5%’). The Handelsblatt, a leading German business newspaper, reports that about every fifth payment in Germany is done via ‘the U.S. electronic payment giant PayPal’ and reports how German banks have failed to challenge ‘PayPal’s online dominance’ (see page 17 of newspaper dated 17/08/2015, article entitled ‘E-pay delay; A shaky Start for PayPal Rival’). The Handelsblatt also reports that a study released in 2014 by the consultancy firm Cofinpro found that ‘young people between the ages of 18 and 34 trust PayPal today even more than private banks’ (see page 31 of newspaper dated 27/03/2015).

On the basis of the evidence outlined above, the Opposition Division concludes that the earlier trade mark has a reputation in the European Union.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position, as has been attested by diverse independent sources. The large number of users of the ‘PayPal’ payment system (as attested by the extracts from the opponent’s website and by the press articles), the rankings of the trade mark by ‘Alexa.com’ (exhibit E), by ‘Brandz’ and by ‘Interbrand’ (exhibit K) and the various references in the press to the opponent’s success (enclosure 3) all unequivocally demonstrate that the mark enjoys a high degree of recognition among the relevant public. From the press articles, it is clear that the earlier mark, ‘PayPal’, covers a very important part of the market in electronic payments in the European Union, since the earlier mark, ‘PayPal’, is referred to using expressions such as ‘on-line payments giant’, ‘one of the world’s largest and leading payment companies’, ‘the world’s biggest transaction company’ and ‘the market leader in secure online transactions’ and in the German press it was even stated that ‘every fifth payment in Germany is done by the US electronic payment giant PayPal’. Taking into account all of the above, it is clear that ‘PayPal’ is a leading trade mark in the field of electronic payments and therefore it can be concluded that the earlier mark has acquired a strong reputation in the European Union.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to the provision of a payment method, whereas there is no or little reference to the remaining goods and services. This is clear, for example, from the extracts from the opponent’s websites, where mainly the provision of a payment method is mentioned.

Therefore, the Opposition Division considers that the earlier mark has a reputation for the following services:

Class 36: Financial services, namely, electronic funds transfer; providing a wide variety of payment and financial services, namely processing and transmission of bills and payments thereof, bill payment services with guaranteed payment delivery, all conducted via a global communications network; bill payment services; providing electronic mobile payment services for others; payment processing services, namely, providing virtual currency transaction processing services for others.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The verbal elements of which both marks are composed, ‘PayPal’, will be perceived by the English-speaking part of the relevant public as alluding to the slightly quirky idea of ‘a payment friend’. Even though this expression might be somewhat allusive of the relevant payment services in Class 36 of the earlier mark, the uncommon combination of the words and alliteration gives the expression a fanciful character. Therefore, as a whole, this expression is distinctive for the English-speaking part of the relevant public for both the opponent’s services in Class 36 and the contested goods in Class 9. For the remaining part of the relevant public, the verbal elements of the marks will be perceived as meaningless and are therefore also distinctive for this part of the relevant public.

Visually, the signs are similar to the extent that they coincide in the verbal elements ‘PayPal’, with the only difference between them being that there is a space between the words ‘Pay’ and ‘Pal’ in the contested sign. Furthermore, the marks differ in the slight stylisation of the verbal elements and the colours used in the earlier mark.

Therefore, the marks are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the verbal elements ‘PayPal’ present identically in both signs, as the space between the elements ‘Pay’ and ‘Pal’ in the contested sign has no impact on the pronunciation. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as meaning ‘a payment friend’ by the English-speaking part of the relevant public, the signs are conceptually identical for this part of the relevant public.

For the remaining part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public.

Taking into account the abovementioned visual, aural and, for part of the public, conceptual coincidences, the signs under comparison are highly similar overall.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are highly similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed 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.

The earlier mark, ‘PayPal’, has an average degree of inherent distinctiveness and, as has been shown above in section a) of this decision, has obtained a strong reputation in the European Union.

As explained in section b) of this decision, the earlier mark and the contested sign are visually highly similar, while they are aurally and, for part of the relevant public, conceptually identical, as they coincide fully in their verbal elements. The fact that the marks are highly similar overall is an important factor to be taken into account, as the more similar the marks are, the more likely it is that the later mark will bring the earlier mark with a reputation to the mind of the relevant public (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 26; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 44).

It is true that the services for which the earlier mark has obtained a reputation, namely various payment services in Class 36, are not directly related to the contested goods in Class 9, all of which are eye-wear articles. However, these goods and services target the same relevant public, namely the public at large. Furthermore, their relevant publics fully overlap to the extent that the goods in Class 9 might be purchased using the payment services offered by the opponent, as has also been proven by the opponent in its observations submitted on 23/05/2016, in which its services can be clearly seen being offered with eye-wear articles.

Therefore, taking into account and weighing up all the relevant factors of the present case, and in particular the strong reputation of the earlier mark, the overall high degree of similarity between the signs, the overlapping relevant publics and the fact that the goods and services are very often offered together, especially but not exclusively online, the Opposition Division concludes that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

4. Risk of injury

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

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

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

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

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

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

The opponent claims, inter alia, the following:

The use of the trade mark applied for will take unfair advantage of the reputation of the ‘PayPal’ Marks, in that it enhances the consumers’ readiness to take note of, and trust in, the products marketed under the trade mark applied for.

In other words, 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.

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed (after a limitation made by the applicant) against the following goods:

Class 9:         Spectacles [optics]; Polarizing spectacles; Goggles; Anti-glare glasses; Corrective eyewear; Reading glasses; Eyeglass cords; Bars for spectacles; Spectacle lenses; Cases for spectacles and sunglasses; Sunglasses; Spectacle frames; Spectacle cases.

        

As seen above, the earlier trade mark was found to have a reputation for:

Class 36:         Financial services, namely, electronic funds transfer; providing a wide variety of payment and financial services, namely processing and transmission of bills and payments thereof, bill payment services with guaranteed payment delivery, all conducted via a global communications network; bill payment services; providing electronic mobile payment services for others; payment processing services, namely, providing virtual currency transaction processing services for others.

        

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

When assessing unfair advantage, the applicant’s intention is not a material factor. Taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. The concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation’ (19/06/2008, T-93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T-128/06, Camelo, EU:T:2008:22, § 46).

To determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment which takes into account all the factors relevant to the circumstances of the case (10/05/2007, T-47/06, Nasdaq, EU:T:2007:131, § 53, confirmed, on appeal, by 12/03/2009, C-320/07 P, Nasdaq, EU:C:2009:146; see also 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29, 30, 38; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58, 66; 24/03/2011, C-552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53).

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.)

Therefore, for the purpose of the present evaluation, unfair advantage taken by the contested mark must be assessed by reference to the average European consumer of the goods in respect of which the applicant seeks registration, namely eye-wear goods in Class 9. These goods target the general public, which is deemed to be reasonably well informed and reasonably observant and circumspect. The degree of attention upon purchasing those goods will vary from average to higher than average.

The earlier mark possesses a strong reputation. This is an important factor to be taken into account, because a strong reputation is both easier to harm and more tempting to take advantage of, owing to its great value. In this respect the Court underlined that ‘the stronger the earlier mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused to it’ (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 67, 74; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 41). By analogy, the same must be accepted as regards the unfair advantage that the applicant might enjoy at the expense of the earlier mark.

Furthermore, because of its strong reputation, the earlier mark will be easily recognised, since it reflects a positive message that could positively influence the choice of consumers. In the present case, it appears from the evidence submitted by the opponent on 23/05/2016, as analysed above, that the payment services provided by the opponent have obtained a reputation of being simple to use, reliable and safe.

The contested goods in Class 9, being eye-wear articles, might have an impact on the health of the eyes. This is why many eye-wear goods nowadays feature special characteristics that avoid damage to the eyes or avoid vision problems (e.g. sunglasses and glasses with UV protection or protection against ‘blue light’). The relevant public is aware of this, so the safety of eye-wear articles has become an important factor for consumers when selecting and purchasing those goods.

Considering the above, the Opposition Division agrees with the opponent that it is not unlikely that the image of ‘safety’ created by the earlier reputed mark will be transferred to the contested goods and will make the marketing and sales of those goods easier.

Furthermore, when seeing the contested sign, ‘Pay Pal’, next to the depiction of the eye-wear articles in Class 9 in question in sales advertisements, the relevant public might even think – due to the strong reputation of the earlier mark and the overall high degree of similarity between the marks – that this is the opponent’s mark, being used to indicate that the goods can be purchased through the opponent’s services in Class 36 in a simple, reliable and safe way through a trusted payment system.

In addition, it has to be taken into account that it is not uncommon that marks with a strong reputation are exploited in different fields of commerce. In the present case, the evidence submitted by the opponent shows that the special attractiveness and prestige of its earlier mark has allowed it to be exploited to some extent outside its natural market sector, for example in relation to clothing, headgear, etc. Therefore, considering common market practices of brand expansion, as well as the market reality demonstrated in the evidence submitted by the opponent, the use of the contested sign could lead to the perception that the opponent is associated with or belongs to the applicant and therefore the use of the contested sign could facilitate the marketing of the contested goods.

Taking into account all of the above, it must be held that there is a high probability that the use of the contested sign may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the earlier mark and the considerable investments undertaken by the opponent to achieve that reputation.

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

5. Conclusion

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

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

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

Chantal VAN RIEL

Saida CRABBE

Ric WASLEY

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.