plus1 | Decision 2710492

Date Published: Oct 1, 2017

OPPOSITION No B 2 710 492

Groupe Canal+, SA, 1, place du Spectacle, 92130 Issy Les Moulineaux, France (opponent), represented by Brandstorming, 11, rue Lincoln, 75008 Paris, France (professional representative)

a g a i n s t

Hessel Postmus, Gageldonk 2, 1083BZ Amsterdam, The Netherlands (applicant).

On 06/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 710 492 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 145 551. The opposition is based on French trade mark registration No 93 692 086. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9:        Scientific (except for medical purposes), nautical, surveying, photographic, cinematographic, optical and electrooptical, weighing, measuring, signaling, checking (supervision) and life-saving apparatus and instruments; diving equipment; apparatus and instruments for the supply, distribution, transformation, accumulation, regulation or control of electric current; decoders; electronic data processing apparatus, electric and electronic measuring and checking (supervision) apparatus; teaching apparatus and instruments; apparatus and instruments for recording, transmission, reproduction, storage, encoding, decoding, conversion and processing of sound or images; communications and telecommunications apparatus; audiovisual, telecommunications, data transmission, television apparatus and instruments, remote controls; cassette recorders; video recorders; film cameras; telephones, mobile telephones; personal organisers (PDAs); electronic diaries; radio sets; personal stereos; projectors (projection apparatus); antennas, aerials, satellite dishes; speakers, amplifiers; computers, computer screens, computer keyboards, peripheral devices for computers, modems, decoders, encoders; access devices (apparatus) and access control devices for data processing apparatus; authentication apparatus for use in telecommunications networks; apparatus for scrambling and descrambling signals and retransmissions; digital terminals; video films; CD-ROMs, recording discs, digital video discs (DVDs), video discs and audio discs, digital discs, video tapes; CD-ROM players; digital video discs; digital disc players, magnetic disc players, video and audio disc players, recording disc players; video game cartridges; video game software; video games adapted for use with a television screen; magnetic data carriers; magnetic cards; chip cards; electronic cards; integrated circuits and microcircuits; card readers; electronic components; worldwide computer network data reception monitors; automatic vending machines and mechanisms for coin-operated apparatus; calculating machines, data processing equipment; satellites for scientific and telecommunications use; Spectacles (optical), optical goods, cases for spectacles; smart cards, cards with microprocessors; electronic radio and television programme guide; apparatus and instruments for programming and selection of television programmes; interactive television apparatus and instruments; television screens; computer software (recorded programs); fiber-optic cables and optical cables; electric batteries and cells.

Class 16:        Paper and cardboard (course, semi-processed); stationery; printed matter; engravings; Lithographic works of art; tickets; photographs; catalogues, newspapers, periodicals, magazines, journals, books, bookmarks, manuals (paper), albums, brochures; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus);bags (envelopes, pouches) of paper or plastics for packaging; adhesive tape for stationery or household use; membership cards (not magnetic); credit cards (not magnetic); printers' type; printing blocks; writing implements and pens; business cards; postcards; notebooks; note pads; note books; cheque books; holders for cheque books; penholders; nibs; drawing pens; posters; calendars; letter trays; radio and television programme guide; table linen; paper napkins; paper table covers; toilet paper; paper handkerchiefs; face towels of paper; paper flags; stickers (items of stationery); postage stamps; boxes of cardboard or paper; envelopes (stationery), announcements (stationery); school supplies; note papers.

Class 35:        Business consultancy; professional business organization and management assistance and consultancy for industrial and commercial companies; business information and advice; commercial information and advice for consumers (consumer advice shop) relating to the choice of computer and telecommunications equipment; advertising; rental of advertising space; dissemination of advertisements; organization of promotional and advertising operations to obtain customer loyalty; publicity columns preparation; direct mail advertising (tracts, prospectuses, printed matter, samples); mail-order advertising; subscriptions to audiovisual programmes, to audio and radio programmes, to newspapers; subscriptions to video recordings, to sound recordings, to audio and audiovisual media of all kinds; arranging subscriptions to all information, text, sound and/or image media and in particular in the form of electronic or non-electronic digital publications, multimedia products; arranging subscriptions to a television channel; arranging subscriptions to a telephone or computer services (the Internet); consultancy relating to the entry of data on the Internet; publication of publicity texts; radio and television advertising; interactive advertising; business management; business administration; office functions; on-line advertising on a computer network; business information or enquiries; business research; commercial or industrial management assistance; employment agencies; business or industrial appraisals; accounting; document reproduction; computerized file management; database management services; entry and processing of data, namely entry, collection and systematic ordering of data, rental of computerized files; arranging exhibitions and events for commercial or advertising purposes; sales promotion (for others); marketing research; auctioning; television promotion with sales offers (sales promotion for others); administrative management of exhibition sites for commercial or advertising purposes; public relations; rental of advertising time (on all means of communication); retail and wholesale trading of clothing, leather goods, jewellery, pens, stationery, games, playthings, sporting articles; retailing and wholesaling of audiovisual, computer and telecommunications goods namely videotapes, television apparatus, video recorders, personal stereos, cassette recorders, radios, hi-fi equipment, decoders, mobile telephones, computers, magnetic tapes (ribbons), juke boxes for  computers, printed circuits, integrated circuits, computer keyboards, compact discs (audio-video), optical compact discs, couplers (data processing equipment), floppy discs, magnetic data carriers, video screens, scanners, printers for use with computers, interfaces for computers (data processing equipment), computer software (recorded programs), microprocessors, modems, monitors (computer hardware), monitors (computer programs), computers, computer memories, computer peripheral devices, recorded computer programs, processors (central processing units), computer operating programs (recorded), chips (integrated circuits), retail sale of aerials; newsclipping services; automatic telephone answering services.

Class 38:        Telecommunications services; communications by computer terminals or by optical fiber; information about telecommunications; news and information agencies; radio communications, communications by telegrams, by telephones or video phones, by television, by personal stereo, by personal video player, by interactive videography; broadcasting (television -); transmission of information by data transmission; sending of messages, telegrams, images, videos, mail; transmission of information by teleprinter; data communications; radio and television broadcasting; broadcasting of programmes by satellite, by cable, by computer network (in particular via the Internet), by radio networks, by radio-telephone networks and by radio link; broadcasting of audio, audiovisual, cinematographic and multimedia programmes (text and/or still or moving images and/or sound, whether musical or not, of ring tones), for interactive purposes or not; electronic advertising

(telecommunications); rental of telecommunications equipment and apparatus; rental of data transmission apparatus and instruments namely telephones, facsimile machines, apparatus for transmitting messages, modems; rental of aerials and satellite dishes; rental of devices (apparatus) for access to interactive audiovisual programmes; leasing access time to telecommunications networks; downloading of video games and digital data; communications (transmission) on open (Internet) or closed (intranet) global computer networks; online downloading of films and other audio and audiovisual programmes; transmission of programmes and selection of television channels; providing access to a computer network; providing connections to telecommunications services, to Internet and database services; routing and connecting services for telecommunications; connection by telecommunications to a computer network; telecommunications consultancy; professional consultancy relating to telephony; consultancy in the field of video programme broadcasting; consultancy relating to the transmission of data via the Internet; consultancy relating to providing access to the Internet; information about computing applied information; sending and receiving video images via the Internet using a computer or mobile telephone; telephone services; cellular telephone services; cellular telephone communication; paging by radio; voice messaging, call forwarding, electronic mail, electronic message transmission; video-conferencing services; video messaging services; video-telephone services; providing access to the Internet (Internet service provider); electronic mail exchange, e-mail services, instant electronic messaging services, non-instantaneous electronic messaging services; transmission of information via the Internet, an extranet and an intranet; transmission of information via secured messaging systems; providing access to electronic conferencing and discussion forums; providing access to Internet websites containing digital music or audiovisual works of all kinds; providing access to telecommunications infrastructures; providing access to search engines on the Internet; providing, namely online transmission of electronic publications.

Class 41:        Education; providing of training; entertainment; radio and television entertainment on media of all kinds, namely television, computer, personal stereo, personal video player, personal assistant, mobile phone, computer networks, the Internet; leisure services; sporting and cultural activities; animal training; production of shows, films and television films, of television broadcasts, of documentaries, of debates, of video recordings and sound recordings; rental of video recordings, films, sound recordings, video tapes; motion picture rental; rental of cinema projection apparatus, decoders and audiovisual apparatus and instruments of all kinds, encoders, radio and television sets, audio and video apparatus, cameras, personal stereos, personal video players, stage scenery; production of shows, films, audiovisual, radio and multimedia programmes; movie studios; arranging competitions, shoes, lotteries and games relating to education or entertainment; production of audiovisual, radio and multimedia programmes, text and/or still or moving images, and/or sound, musical or not, and/or ring tones, for interactive purposes or not; arranging exhibitions, conferences, seminars for cultural or educational purposes; booking of seats for shows; news reporter services; photography, namely photographic services, photographic reporting; photographic reporting; videotaping; consultancy relating to the production of video programs; game services provided on-line from a computer network, gaming; casino facilities; editing and publication of text (except publicity texts), sound and video media, multimedia (interactive discs, compact discs, storage discs); electronic online publication of periodicals and books; publication and lending of books and texts (except publicity texts); providing movie theatre facilities; micro publishing.

Class 42:        Research and development of new products (for others); technical research; surveying engineering), professional consultancy relating to computers, video programme design; operating Internet search engines; design, upgrading and rental of computer software; rental of computer apparatus and instruments, namely screens; consultancy in the field of computer hardware, computer rental; design (creation) of systems for encrypting and decrypting and for controlling access to television or radio programmes, in particular nomad systems and data transmission systems of all kinds; design of interactive programs and apparatus; drawing up technical standards (standardization), namely drawing up (design) of technical standards for manufactured products and telecommunications services; weather information services; research and development, for others, of electronic, computer and audiovisual, scrambling and access control systems in the fields of television, data processing, telecommunications and audiovisual technology; authentication (origin searches) of electronic messages; computerization of text and/or still or moving images, and/or sound (whether musical or not), of ring tones, for interactive purposes or not.

The contested goods and services are the following:

Class 9:        Computer software; Computer databases; Information technology and audiovisual equipment.

Class 35:        Modeling agency services; Modelling for advertising or sales promotion; Modelling agency services relating to sales promotions; Modelling agency services for advertising purposes; Talent agencies [management or employment].

Class 38:        Providing user access to platforms on the Internet; Provision of access to Internet platforms for the purpose of exchanging digital photographs; Provision of access to an electronic marketplace [portal] on computer networks; Provision of access to electronic sites; Arranging access to databases on the internet; Providing access to e-commerce platforms on the Internet; Message sending and receiving services; Operating of electronic communications systems; Operating of electronic communications networks; Transmission of messages, data and content via the Internet and other communications networks.

Class 42:        Creation, maintenance and adaptation of software; Creating, designing and maintaining web sites; Creating electronically stored web pages for online services and the internet; Design and development of software for database management; Design and development of operating software for accessing and using a cloud computing network; Design, development and implementation of software; Programming of software for e-commerce platforms; Programming of software for Internet portals, chatrooms, chat lines and Internet forums; Programming of software for Internet platforms.

Class 45:        Dating services; Dating agency services; Escort services; Escorting in society [chaperoning]; On-line social networking services; Online social networking services accessible by means of downloadable mobile applications; Social escort agency services; Agency services for arranging personal introductions; Computer dating services; Dating services provided through social networking; Internet based dating, matchmaking and personal introduction services; Internet dating services.

Some of the contested goods and services are identical to the goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.

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 and services assumed to be identical are directed either at the public at large or at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, sophistication, or terms and conditions of the purchased goods and services.

3. Distinctiveness of the earlier mark

Before proceeding to the comparison of signs, the Opposition Division finds it necessary to first examine the distinctiveness of the earlier trade mark.

The representation of the earlier mark is the following:

The earlier mark is a figurative mark consisting of the word ‘PLUS‘ depicted in standard bold upper-case letters. Consequently, the earlier mark consists in fact only of the word ‘PLUS‘ as such with no stylisation.

The word ‘PLUS’ of the earlier sign will be associated by the French public with something positive, something better, with high level, with an advance, with an advantage or with progress in general (07/07/2016, R 1685/2015-1, § 23).

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 France in connection with part of the goods and services for which it is registered, namely:

Class 9:        Decoders; apparatus and instruments for recording, transmission, reproduction, storage, encoding, decoding, conversion and processing of sound or images; communications and telecommunications apparatus; audiovisual, telecommunications, data transmission, television apparatus and instruments [...]; video recorders.

Class 16:        [...] periodicals, magazines, [...].

Class 35:        Subscriptions to audiovisual programmes [...]; subscriptions to video recordings, [...], to [...] audiovisual media of all kinds; arranging subscriptions to all information, text, sound and/or image media and in particular in the form of electronic or non-electronic digital publications, multimedia products; arranging subscriptions to a television channel.

Class 38:        Telecommunications services; communications by computer terminals or by optical fiber; [...]communications by [...] telephones or video phones, by television, [...] by personal video player [...]; broadcasting (television -); transmission of information by data transmission; sending of [...] images, videos [...]; [...] television broadcasting; broadcasting of programmes by satellite, by cable, by computer network (in particular via the Internet)[...]; broadcasting of [...] audiovisual, cinematographic and multimedia programmes (text and/or still or moving images and/or sound, whether musical or not, of ring tones), for interactive purposes or not; rental of telecommunications equipment and apparatus; rental of data transmission apparatus and instruments namely [...] modems; rental of devices (apparatus) for access to interactive audiovisual programmes; leasing access time to telecommunications networks; downloading of [...] digital data; communications (transmission) on open (Internet) or closed (intranet) global computer networks; online downloading of films and other audio and audiovisual programmes; transmission of programmes and selection of television channels; providing access to a computer network; providing connections to telecommunications services, to Internet and database services; routing and connecting services for telecommunications; connection by telecommunications to a computer network; sending and receiving video images via the Internet using a computer or mobile telephone; providing access to the Internet (Internet service provider).

Class 41:        Entertainment; [...] television entertainment on media of all kinds, namely television, computer, [...] personal video player, personal assistant, mobile phone, computer networks, the Internet; leisure services; [...] cultural activities; production of [...] films and television films, of television broadcasts, of documentaries, of debates, of video recordings [...]; rental of video recordings, films, [...]; motion picture rental; rental of [...] decoders and audiovisual apparatus and instruments of all kinds, [...] video apparatus, [...]; production of [...] films, audiovisual, [...] multimedia programmes; production of audiovisual [...] and multimedia programmes, text and/or still or moving images, and/or sound, musical or not, [...] for interactive purposes or not; editing and publication of [...] video media [...].

Class 42:        Design (creation) of systems for encrypting and decrypting and for controlling access to television or radio programmes [...]; design of interactive programs and apparatus; research and development, for others, of electronic, computer and audiovisual, scrambling and access control systems in the fields of television, data processing, telecommunications and audiovisual technology.

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 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 of the following documents:

• Attachment 3: opposition decision of the French national office (INPI) of 2014 concerning the trade mark ‘CONTACT PLUS’,
• Attachment 9: database print-outs of the trade marks ‘CINE – PLUS’, ‘SPORT PLUS’ etc. registered in France,
• Attachment 10: decision of the Spanish national office (OEPM) of 2015 concerning the trade mark ‘CONTACTOS PLUS’,
• Attachment 11: extracts of the study of notoriety relating to the signs ‘+’ and ‘PLUS’ conducted by Sofres in France in 2006,
• Attachment 12: summary of the aforesaid study by Sofres from January 2007,
• Attachment 13: covers of the magazine ‘PLUS’.

The remaining attachments submitted by the opponent (attachments 1, 2 and 4-8) do not concern the claim of enhanced distinctiveness/reputation.

Having examined the material listed above, 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 (or reputation) through its use.

The opposition decision of the French office (attachment 3) acknowledges enhanced distinctiveness of the earlier trade mark ‘PLUS’ for certain services, based only on the study of notoriety by Sofres from 2006 (the same as submitted here as attachment 11).

Regarding the study of notoriety by Sofres from 2006 (attachment 11), it should first be noted that the study is from December 2006 which is more than nine years prior to the filing date of the contested EUTM application (24/02/2016). Moreover, only several selected pages of the study were submitted, together with a partial translation into English. Furthermore, some of the questions submitted to the interviewees could be seen as leading and the various percentages mentioned in the document (relating to various specific sections of the public) do not allow a clear conclusion that the mark ‘PLUS’ would be known by a substantial part of the relevant public in the present case. Finally, the whole study examined whether the word ‘PLUS’ evokes some other signs and not whether the public knows any actually existing trade mark ‘PLUS’. For all the above reasons, the study is not a persuasive proof of enhanced distinctiveness (or reputation) of the earlier trade mark at the moment of filing of the contested EUTM application.

The summary of the study (attachment 12) does not bring any further clarification that would enable the Opposition Division to conclude that there is enhanced distinctiveness or reputation.

The decision of the Spanish national office (attachment 10), finding the existence of a family of marks ‘CANAL PLUS’ and the well-known character of these marks, concerns the situation in Spain and not in France, which is the relevant territory here. Consequently, this proof is irrelevant.

The database print-outs (attachment 9) only shows the existence of several trade marks containing the element ‘PLUS’ or ‘+’ on the register. They do not prove any use or recognition of these marks.

The copies of several covers of the ‘PLUS’ magazine (attachment 13) only show that such a magazine existed. They however do not provide any indications in terms of intensity of use of the mark or the recognition of the mark by the public.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. As already mentioned above, the word ‘PLUS’ of which the earlier mark consists will be understood by the French public as meaning something positive, something better, with high level, with an advance, with an advantage or with progress in general. The mark will thus be perceived as being laudatory or augmentative in nature, to the extent that, in general, it indicates increased quality of quantity. The earlier trade mark is, therefore, distinctive to a very low degree (R 1685/2015-1, § 41 and the case-law cited therein).

4. The signs

	plus1
Earlier trade mark	Contested sign

The relevant territory is France.

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 ‘PLUS’ of which the earlier mark consists has the descriptive meanings mentioned above in section c) and has only a very low degree of distinctiveness, if any.

The contested sign ‘plus1’ will be perceived as a mathematical formula ‘+1’ or as ‘one more’. The elements ‘plus’ and ‘1’ (‘1’ being one of the most basic numbers) are considered to be equally weak.

Visually, the signs coincide in ‘PLUS’, an element that has only a very low distinctiveness, if any. They differ in the weak numeral ‘1’ at the end of the contested sign that has no counterpart in the earlier trade mark.

Consequently, the signs are visually similar to an average degree.

 

Aurally, similar conclusions can be drawn. The pronunciation of the signs coincides in the sound of the very weak element ‛PLUS’ and differ in the sound produced by pronouncing the numeral ‘1’ according to the rules of French pronunciation.

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. Although the marks share the meaningful word ‘PLUS’, the marks as a whole will be associated with a dissimilar meaning (the earlier mark with something positive, something better, with high level, with an advance, with an advantage and the contested sign with the mathematical formula ‘+1’ or the notion of ‘one more’). Consequently, the signs as a whole are not conceptually similar.

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

5. Global assessment, other arguments and conclusion

The goods and services have been assumed to be identical. The degree of attention of the relevant public will be between average and high.

The marks are visually and aurally similar on account of the common element ‘PLUS‘ which has a very low degree of distinctiveness, if any. This visual and aural similarity is counteracted to a large extent by the conceptual dissimilarity between the marks taken as a whole. In this context the Opposition Division notes that conceptual differences can in certain circumstances counteract the visual and phonetic similarities between the signs concerned. For there to be such a counteraction, at least one of the signs at issue must have, from the point of view of the relevant public, a clear and specific meaning so that the public is capable of grasping it immediately (14/10/2003, T-292/01, Bass, EU:T:2003:264, § 54). This appears to be the case in the present proceedings where the contested sign ‘plus1’ will be immediately perceived as meaning ‘+1’ or ‘one more’ which is a concept that is sufficiently far removed from the (descriptive) concept of the simple word ‘PLUS’.

It follows from the above that the common element ‘PLUS’ does not have an independent distinctive role within the contested sign but will rather be perceived as an integral and indivisible part of the notion ‘plus1’ meaning ‘+1’ or ‘one more’. For this reason, the element ‘1’ in the contested sign will not be perceived as a secondary element of the sign as asserted by the opponent.

Furthermore, the degree of distinctiveness per se of the earlier trade mark is very low because it essentially consists of the descriptive term ‘PLUS’. No enhanced distinctiveness has been proven. Consequently, the scope of protection afforded by the earlier trade mark is very limited.

In order to avoid infringing Article 8(1)(b) of EUTMR, it is necessary to acknowledge a certain degree of distinctiveness of an earlier national mark on which an opposition against the registration of a European Union trade mark is based (24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 47). This circumstance is however not sufficient, to award the earlier mark with a distinctive character of such significance which would give it an unconditional right to oppose the registration of any later mark in which it is reproduced (13/05/2015, T-102/14, TPG POST / DP et al., EU:T:2015:279, § 43).

As a general rule, the public will not consider a descriptive or non-distinctive element forming part of a mark as the distinctive and dominant element of the overall impression conveyed by that mark (16/05/2007, T-491/04, Focus, EU:T:2007:141, § 50-51).

According to case-law, where the common element was weak, similar to the case at hand (where the only common element is at most endowed with little distinctiveness per se), the mere presence of such a weak element in the contested mark is not capable of giving rise to a likelihood of confusion (05/04/2006,        T-344/03, Selezione Oro Barilla, EU:T:2006:105, § 39 and 42; 13/06/2006, T-153/03, Peau de vache, EU:T:2006:157; 11/07/2006, T-247/03, Torre Muga, EU:T:2006:198; 21/03/2012, T-63/09, Swift GTi, EU:T:2012:137, § 77; 06/10/2015, T-61/14, icexpresso + energy coffee (fig.) / MIDNIGHT M X-PRESSO MONSTER ESPRESSO +ENERGY, EU:T:2015:750, § 76; 02/02/2016, T-485/14, Bon Apétit ! (fig.) / Bon Apetí (fig.) et al., EU:T:2016:53, § 73).

Consequently, it is quite unlikely in the particular circumstances of the present case that the presence of the element ‘plus’ in the contested sign ‘plus1’ could lead to confusion even if the goods and services were identical.

It remains necessary to consider the opponent’s  claim that it has a family of marks. The concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied. One of them is that the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.

In the present case, the opponent did not base its opposition on a number of marks which could constitute a ‘family’. Indeed, the present opposition is exclusively based on the mark ‘PLUS’ registered in France. Any claim that the opponent has used a family of marks is fatally flawed from the outset since a family of marks cannot consist of one mark alone. Indeed, a minimum of three marks are required to constitute a family of marks. Moreover, the opponent also failed to prove that it has actually used a number of ‘PLUS’ marks as a family. Thus, the arguments based on the use of a family of marks have not been validly claimed, and in any case, have not been properly substantiated (see R 1685/2015-1, § 65).

The decision of the Spanish national office referred to by the opponent, where the office acknowledged the existence of the opponent’s family of marks, concerns the territory of Spain and not France and is, therefore, irrelevant.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition on the ground of Article 8(1)(b) EUTMR must be rejected.

REPUTATION – ARTICLE 8(5) EUTMR

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

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

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

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

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

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

1. 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 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.

Consequently, the opponent failed to prove reputation of the earlier trade mark.

2. Conclusion

Since the opponent did not prove reputation of the earlier trade mark, the opposition under Article 8(5) EUTMR must be dismissed.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.

The Opposition Division

Richard BIANCHI

Vít MAHELKA

Lucinda CARNEY

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.