POST SOCIAL | Decision 2761107
Date Published: Sep 25, 2017
OPPOSITION No B 2 761 107
Deutsche Post AG, Charles-de-Gaulle-Str. 20, 53113 Bonn, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)
a g a i n s t
Yubl Limited, 90 Fetter Lane, London EC4A 1EQ, United Kingdom (applicant), represented by Bird & Bird LLP, 12 New Fetter Lane, London, London, City of EC4A 1JP, United Kingdom (professional representative).
On 24/07/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 761 107 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 465 363, namely against some of the services in Class 35. The opposition is based on German trade mark registration No 30 012 966. 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.
- The services
The services on which the opposition is based are the following:
Class 35: Collecting, forwarding and delivery of direct and indirect mail advertising.
Class 39: Postal, freight, express, parcel and courier services; transport and delivery of items, letters, parcels, packets; collecting, forwarding and delivery of consignments with written communications and other messages, in particular letters, printed matter, trade samples, circulars, books, Braille literature, newspapers, periodicals, brochures.
The contested services are the following:
Class 35: Marketing, advertising and promotion services; promoting the goods and services of others via computer and communication networks; facilitating the exchange and sale of business and advertising services and products of third parties via computer and communication networks; promotional services, namely promoting goods and services of others by means of providing online gift cards; providing a market place (accessible via the internet, mobile platform or other electronic medium) for the advertisement of goods and services to buy and sell.
An interpretation of the wording of the list of contested services is required to determine the scope of protection of these services.
The term ‘namely’, used in the applicant’s list of services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.
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.
The contested marketing, advertising and promotion services refer to services providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or helping for the reinforcement of the 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, who 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 contested services include, as broader categories, or overlap with, the opponent’s collecting, forwarding and delivery of direct and indirect mail advertising. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.
The contested promoting the goods and services of others via computer and communication networks; facilitating the exchange and sale of business and advertising services and products of third parties via computer and communication networks; promotional services, namely promoting goods and services of others by means of providing online gift cards; providing a market place (accessible via the internet, mobile platform or other electronic medium) for the advertisement of goods and services to buy and sell are, like the opponent’s services in Class 35, a variety of different advertising services, however usually provided online, via computer and/or communication networks. The services in comparison could all be provided by the same provider and target the same consumers. Furthermore, they have the same purpose and they are in competition. It follows that these services are similar to a high degree.
- 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 services found to be identical and similar to a high degree are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise. The degree of attention of the relevant public is likely to vary from average to higher than average depending on the purpose of use and the specific prices of the particular services.
- The signs
POST | POST SOCIAL |
Earlier trade mark | Contested sign |
The relevant territory is Germany.
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).
Both signs are word marks. The earlier one consists of the element ‘POST’ and the contested one of the elements ´POST´ and ´SOCIAL´.
The public in the relevant territory will perceive the earlier sign as referring to, among other services, ‘the system of mail delivery’: a particular kind of service, most commonly involving the receipt, transportation and delivery of letters and parcels. Moreover, the term ‘POST’ will be understood, among other meanings, with the meaning of: ‘to put up (a notice) in a public place’, ‘to announce by means of or as if by means of a poster’. Regarding the perception of this meaning of the word ‘POST’ in the relevant territory, the term has gained popularity in recent years because of its extensive use in social networking media.
In the same line as the above considerations and despite the fact that the German market of postal services was one of the first to be liberalised, the term ‘POST’ in Germany when used on its own − might be associated by German consumers with the former national postal operator and its legal successor in connection with goods and services that have been or have become closely connected with (or available from), the national postal network and post offices. This conclusion is supported by the several surveys filed by the opponent, listed further below.
As far as the contested sign is concerned, it is noted that the element ‘POST’ placed in it has the meanings of the word ‘post’ specified above, with the exception of the relation to the national postal operator, as it will be further explained below. The element ‘SOCIAL’ of the contested sign is likely to be perceived as referring to the German word ‘sozial’ in the meaning of, inter alia, ‘denoting or relating to human society’. The combination of words ‘POST’ and ‘SOCIAL’ in the contested sign, does not refer to a meaningful phrase (or a word combination) used by the public in the relevant territory (even with the association of ‘SOCIAL’ with the corresponding German word).
In that regard a reference is made to the arguments brought by the opponent, who claims that the relevant consumer will associate the contested sign with the phrases ‘Social Media’ and ‘Social Network’ (and provides dictionary excerpts for the meaning of these phrases). The opponent further claims, that because of the reference of the element ‘SOCIAL’ of the contested sign to the corresponding German word ‘sozial’, the contested sign will be perceived as ‘a section of the Opponent that offers services in social media and social networks, and will equate “POST” in this context with the well-known trade mark “POST” of the Opponent, or with the Opponent’s company’. In this regard the opponent submits printouts from its profiles on social media websites, where it is present as ‘Deutsche Post’.
The Opposition Division does not support the argument brought by the opponent. Even though the element ‘SOCIAL’ is likely to be perceived by the public in the relevant territory in the meaning of the word ‘sozial’ specified above, the combination of words where the noun (when ‘post’ perceived as such) is placed before an adjective (‘social’, respectively ‘sozial’) is unusual for the public in the relevant territory and does not convey a clear combined meaning. Therefore, the particular combination of the words and their position in the sign, which is uncommon for the relevant public, is unlikely to be related to ‘Social Media’ or ‘Social Network’. It is also noted that due to the construction of words abovementioned, it is unlikely that the relevant public would relate the element ‘POST’ of the contested sign to the German postal operator, as it would be in the earlier mark, but rather with the other meanings of the word ‘post’ specified above. Finally, the opponent does not submit any evidence that the public in the relevant territory will relate the word combination of the contested sign to phrases like ‘Social Media’ or ‘Social Network’. There is no evidence either that the contested sign would be perceived as a reference to the ‘social media’ section of the opponent, as the element ‘POST’ of the contested sign, as explained above, would not be understood in the meaning of ‘Deutsche Post’ (as the opponent appears on its social media profiles). It follows that the opponent’s argument has to be set aside.
The element ‘POST’ in the signs is associated with the meanings specified above. Bearing in mind that the relevant services are ‘advertising and promotional services’ (where in the earlier mark they are specifically distributed through mail), this element is considered per se non-distinctive or, in any event, weak for all these services covered by both signs, since it refers to the nature or the means of providing the relevant services (13/05/2015, T-102/14, TPG POST, EU:T:2015:279, § 50, 68-69; BGH (German Federal Court of Justice), 23/10/2008, I ZB 48/07, Post II, § 35).
The element ‘SOCIAL’ of the contested sign is likely to be perceived in the meaning specified above. Bearing in mind that the relevant services are ‘advertising and promotional services’, this element is weaker than average for these services, as it refers to their purpose, namely to be made available to the society.
Therefore, conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and their elements. As the signs will coincide in the concept of the element ‘POST’ (being however non-distinctive or, in any event, weak for the relevant services) and will differ in the concept of ‘SOCIAL’ of the contested sign (even though of a limited distinctiveness), the signs are considered conceptually similar only to a low degree.
Visually and aurally, the signs coincide in the letters (and sounds) ‘P/O/S/T’, present as ‘POST’ in the earlier mark, and as the first element in the contested sign (‘POST’ being non-distinctive or, in any event, weak for the relevant services). However, the signs differ in the second element (and the sounds of it) ‘SOCIAL’ (being of a limited distinctiveness) of the contested sign, which has no counterpart in the earlier mark.
Furthermore, the earlier mark contains one syllable, while the contested sign contains three syllables (if ‘social’ pronounced under the English grammar rules and if the element ‘social’ is pronounced as the German word ‘sozial’). It follows that the rhythm and the intonation of the signs are different.
Bearing in mind that the coincidence lies in that the letters (and sounds) of the earlier mark are all contained in the contested sign, which however has an additional element (and the sounds of it), the signs are considered visually and aurally similar to a low degree.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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, earlier trade mark No 30 012 966 enjoys a high degree of distinctiveness ’due to an extensive and longstanding use’ in Germany, in connection with all the services for which it is registered. Such 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 (see judgment of 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18). Considering that the evidence of use is set out in its entirety in this section, the Opposition Division will also determine here whether or not the earlier mark has a reputation, as it is relevant to the opposition further below.
The evidence was presented in a clear and structured manner and consists of the documents listed below. For the sake of clarity and ease of reference, the Opposition Division will maintain the numbering of items as provided by the opponent.
Annex 1 An excerpt from the Duden dictionary (www.duden.de) showing the entry for the word ‘Post’ followed by the symbol ®.
Annex 2 Excerpts from the website www.wikipedia.org, containing a reference to the sign , referred to as the ‘Deutsche Post brand’, and from the opponent’s website, www.dp-dhl.com, in which the company’s history is explained in detail. The opponent emphasised in its observations that the word ‘Post’ was exclusively connected with Deutsche Bundespost (the German state postal service), the opponent’s legal predecessor, for almost 50 years and that, even after the privatisation of the original German state postal service in 1995, the German public associated the word ‘Post’ with the opponent, as its legal successor.
Annex 3 Copies of reports entitled ‘brand€valuation’ for the years between 2005 and 2014, prepared by Semion Brand-Broker GmbH, showing the value of the brand ‘Dt. Post’ (about EUR 13 million on average for 2013 and 2014), which held sixth position in the ranking of the most valuable German trade marks during the period 2008-2014.
Annex 4 A multi-year review (2007-2014) of Deutsche Post DHL, providing turnover figures for the business sectors mail, express, logistics, global freight forwarding, etc., and an overview of the opponent’s business in 2013.
Annex 5 Two consumer surveys (an explanation of the methodology used for the surveys is included) conducted by independent survey institutes, namely IPSOS Deutschland GmbH (2000) and NFO Infratest (2002), about the level of public awareness of the trade mark ‘POST’. According to the results of the IPSOS Deutschland GmbH survey (2000) concerning the secondary meaning of ‘POST’, when the interviewees were shown the name ‘POST’ 94.9% of them related it to the relevant services, and 77.6% recognised a specific undertaking behind those services. Of the interviewees, 70.6% named ‘Deutsche Post (AG)’, ‘Post (AG)’, ‘Bundespost’, ‘Gelbe Post (AG)’, ‘Post-Express’ or something similar when asked for the name of the undertaking they associated with this word. According to the survey conducted by NFO Infratest in November and December 2002, 67.8% of the interviewees spontaneously associated the designation ‘POST’ with a certain enterprise in Germany.
Annex 6 A consumer survey conducted by TNS Infratest in 2005 (an explanation of the methodology used for the surveys is included) that gives information about the level of awareness of the word ‘POST’, showing that 83.9% of the German public associated the word ‘POST’ with the opponent and, therefore, reaffirming the results of the two surveys conducted in 2000 and 2002 submitted as Annex 5.
Annex 7 A market survey entitled ‘“Post”: Distinctive character of this designation in connection with the transportation of letters and parcels’ (an explanation of the methodology used for the survey is included), carried out by Pflüger Rechtsforschung GmbH in October and November 2015 on 2 000 interviewees. The survey found that 97.5% of the interviewees knew the designation ‘Post’ in the context of ‘transportation of letter and parcels’; 63.8% connected the name ‘Post’ to the opponent.
Annex 8 Decision of the German Federal Patent Court regarding Cancellation Proceedings 26 W (pat) 27/06, dated 28/10/2010. The decision rejects a request for cancellation based on an alleged lack of distinctiveness because surveys in 2000 and 2002 had demonstrated that 78% of those surveyed associated the word ‘POST’ with postal services provided by the opponent. The Court held that the trade mark ‘POST’ had acquired a secondary meaning in trade circles prior to the date of the decision rendered on its registration, as a result of its use for the services in respect of which it had been applied for. The Court considered that use in the form ‘Deutsche Post’ had to be taken into consideration when determining the use of ‘POST’.
Annex 9 A scholarly article by Dr Büscher, a judge at the IP Senate of the German Supreme Court, published in 2006, according to which the trade mark ‘POST’ fulfils not only the requirements for distinctiveness acquired through use, but also those for a well-known trade mark in Germany, as, for postal services, almost 85% of the general public associates ‘POST’ with a particular company. An extract from the article that the opponent considers relevant has been translated into English.
Annex 10 ‘Brand Assessment BRIEF 2010’ from Market Research Service Center, referring to brand awareness of the sign of over 90%.
Annex 11 Two market analyses by the German Federal Network Agency (Bundesnetzagentur), dated September 2009 (market data for 1999-2008) and April 2013 (market data for 2008-2011), providing analyses of licensees in the mail sector; a breakdown of turnover figures in the licensed mail sector by provider shows that in 2011 ‘Deutsche Post’ was responsible for 90% of turnover in the sector.
Annex 12 Excerpts from a study by WIK-Consult dated 28/01/2014, stating in the section entitled ‘Postal market trends’ that ‘Deutsche Post is still the uncontested market leader with a market share of nearly 90%’.
Annex 13 A list from the Cedelex database of 219 ‘POST’ trade marks held by the opponent.
Annex 14 Printouts from the websites www.deutschepost.de and www.epost.de of what appear to be pages offering or promoting mail services, depicting the signs ‘POSTIDENT’, ‘POSTKIT’, ‘POSTCARD’, ‘INFOPOST’, ‘POST-24/7’ (word mark), ‘POSTFACH’, ‘E POST’, and , some with a copyright notice dating from 2011. The sign appears on most of the pages.
Annex 15 A printout from www.dict.cc, showing the meaning of the word ‘sozial’.
Annex 16 Printouts from https://en.oxforddictionaries.com/definition/social and http://dictionary.cambrifge.org/de/worterbuch/englisch-deutsch/social in regard to the meaning of the word ‘social’.
Annex 17 Printouts from www.duden.de, referring to the meanings of ‘Social Media’ and ‘Social Network’.
Annex 18 Printouts from the profiles of ‘Deutsche Post’ on www.facebook.com, www.instagram.com, https://twitter.com, https://de.linkedin.com and www.youtube.com.
Annex 19 Printouts from the database of the German Patent and Trade mark Office, containing the element ‘Social’.
The evidence indicates in general that a high percentage of the relevant public in Germany is aware of the sign ‛POST’ and that a significant portion of the relevant consumers may still link it to the former national postal services operator or to its legal successor.
However, this does not mean that for the purposes of this assessment, the earlier mark has achieved enhanced distinctiveness or reputation, which would normally lead to a broader scope of protection of the earlier mark. The results shown in the surveys can be explained by the specifics of the market reality in the sector.
The word ‛POST’ refers first and foremost to postal services in general. In German, in particular, it is a reference to a particular kind of service, most commonly involving the receipt, transportation and delivery of letters and parcels. While this may have been a service carried out by a single state-owned entity in the past (and consequently the provision of these services was necessarily attributed to this entity), this is no longer the case. In general, these types of services may be rendered by numerous companies. In German, ‛POST’ is also the term used for the items actually delivered by whichever company may be providing postal services. Someone waiting for the ‛POST’ in Germany would, thus, be waiting not for a particular enterprise but for letters or parcels to be delivered by anyone who does so. Although a very high percentage of the relevant German public recognises the trade mark significance of the word ‛POST’, this does not, in itself, demonstrate that this term has the value of a unique origin indicator when it is incorporated into trade marks that differ in their overall appearance, pronunciation and concept from the sole word ‛POST’. In this respect, it should be noted that, although the article headings refer to ‛POST’, most of the materials contain additional references to the opponent, Deutsche Post AG.
It is evident from the documents submitted that the trade mark ‘POST’ in Germany was registered in 2003. Having its roots in the Italian ‘poste’, (from Latin posita something placed, from pōnere to put, place) the word ‘POST’ found its way into the German language with the meaning explained in section c) of this decision long before the registration of the opponent´s trade mark. The Opposition Division does not question the validity of the registration of the earlier mark. Indeed, a finding of an absolute lack of distinctive character would not be compatible with the coexistence of European Union trade marks and national trade marks or with Article 8(1)(b) EUTMR, read in conjunction with Article 8(2)(a)(ii) EUTMR (see judgment of 24/05/2012, C-196/11 P, F1-Live, EU:C:2012:314, § 42-45). The Opposition Division is not in a position to find that the earlier national mark is completely devoid of distinctive character, as it would amount to calling into question the validity of the national mark. This cannot be done within the framework of the opposition proceedings.
The fact remains, however, that the word ‛POST’, per se, is devoid of distinctive character in respect of the earlier advertising services through mail (postal and related services). The earlier trade mark ‘POST’ has been only registered following distinctiveness acquired through use. The German Federal Court of Justice considered the earlier mark only to have a minimal scope of protection due to the descriptive function of this term (23/10/2008, I ZB 48/07, Post II, § 35-36). The Opposition Division considers in the particular case in question that the distinctiveness of the earlier mark, ‛POST’, must be seen as low in the current examination.
- Global assessment, other arguments and conclusion
The contested services have been found to be partly identical and partly similar to a high degree to the opponent’s services. The distinctiveness of the earlier mark is low for the relevant services.
It is noted that the signs are visually, aurally and conceptually similar only to a low degree due to the shared element ‘POST’. While the earlier mark consists entirely of the per se weak element ‘POST’, which will be related right away to the meanings specified above, the contested sign contains an unusual (for the relevant public) word combination. The elements of the contested sign, even though recognized as bearing specific meanings that render them a limited distinctiveness, combined together form a phrase that would not be related to the entity of the opponent (as it would be in the earlier mark).
The Opposition Division finds the visual, aural and conceptual differences between the signs sufficient (bearing in mind the observations about the low distinctiveness of the earlier sign) for the consumers to safely distinguish the marks.
Bearing in mind the above, there is no reason for the German consumer, who for the purposes of the assessment is deemed to be reasonably well-informed and reasonably observant and circumspect, to believe that the marks under comparison come from the same undertaking or economically linked undertakings.
It remains necessary to consider the opponent’s argument that the earlier trade mark on which the opposition is based along with trade marks (‘POSTIDENT’, ‘POSTKIT’, ‘POSTCARD’, etc.) for which the opponent submits information (Annexes 13 and 14), characterised by the presence of the same word component ‘POST’, constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance (the existence of a ‘family of marks’) is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the services identified by that mark may also come from the opponent.
In fact, 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.
Firstly, 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’.
Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.
Furthermore, an assumption of a ‘family of marks’ on the part of the public requires that the common denominator of the contested application and the earlier family of marks must have a distinctive character, either per se or acquired through use, to allow a direct association between all of these signs (see on the matter of distinctiveness judgment of 14/07/2011, T-160/09, OFTAL CUSI, EU:T:2011:379, § 92, 93).
In the case at issue, setting aside the question of the actual use of the opponent’s signs, the sequence of letters ‘POST’, common for the signs for which family of marks is claimed and present in the contested sign, is non-distinctive or in any case weak for the relevant services. Furthermore, it will not be associated with the entity of the opponent, as already specified above. It is, therefore, unlikely that the relevant German consumer when confronted with the contested mark, will be led to believe that the services identified by that mark may also come from the opponent. It follows that the opponent’s claim for ‘family of marks’ has to be set aside.
Finally and in order to support its argument for a likelihood of confusion, the opponent refers to previous decisions of the Office, in which the contested sign has the element ‘social’. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings, as the earlier marks in the quoted cases were of an average distinctiveness and the signs in comparison coincided in distinctive elements. Therefore, the arguments of the opponent have to be set aside.
Considering all the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on Article 8(1)(b) EUTMR.
The examination proceeds under the other ground of opposition invoked by the opponent in relation to the same earlier right, namely Article 8(5) EUTMR.
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.
- 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.
- The ‘link’ between the signs
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.
In the present case, the signs have been found similar to a low degree, due to the shared element ‘POST’. The element, however, is being at most weak when it comes to the services provided by the opponent and is understood in one of its meanings specified above, including as a reference to the opponent (or its predecessor). As it was, however, explained above in the contested sign due to the combination of elements this element is unlikely to be perceived as a reference to the opponent, but rather in one of its other meanings. Contrary to the single element of the earlier mark, the contested sign is a word construction that is unusual for the public in the relevant territory and it will not result in triggering the mental connection between the signs at issue even in relation to identical services. Therefore, there is no reason to believe that the coincidence in the element ‘POST’ would result in the contested sign being related to the earlier one.
Taking into account and weighing up all the relevant factors of the case in question, the Opposition Division concludes that it is virtually excluded that the relevant public will make a mental connection between the signs in dispute, that is to say, to establish a ‘link’ between them.
For the sake of completeness of the examination it is to be noted that even if part of the public could possibly establish a link between the contested sign and the earlier mark and even under the assumption that the earlier mark has a reputation, there is no reason to believe that the use 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 as will be explained below.
- 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 in opposition proceedings detriment or unfair advantage may be only potential, 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 however ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (judgment of 06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).
It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence or at least put forward a coherent line of argument, showing what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.
Unfair advantage (free-riding)
Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).
The opponent claims that if the contested sign is placed on the German market, the relevant consumer would assume that the applicant’s services possess similar attributes to those of the opponent’s services and would transfer characteristics (quality and fast services, qualified know-how regarding direct mail activities, qualified know-how and first on the market regarding hybrid mail activities via Internet, etc.) of the opponent’s services to the applicant’s services. It is concluded that as a result, the applicant would gain a commercial advantage over its competitors in the marketplace that would not derive from the applicant’s own marketing efforts.
There is no evidence of unfair advantage or any kind of exploitation of the ‘fame’ of the earlier mark. The low similarities between the signs, based on the element with limited distinctiveness, being the sole element of the earlier mark, which refers to the relevant services and is commonly used in connotation to them, in no way means that the applicant is trying to take unfair advantage of the distinctive character or the repute of the earlier mark, which solely consists of such a term. The line of argument developed by the opponent cannot be supported. On the basis of the above, the Opposition Division concludes that the use of the contested trade mark will not take unfair advantage of the distinctive character or the repute of the earlier trade mark.
Detriment to the distinctive character (dilution)
The opponent argues, furthermore, that the use of the contested sign in the same market as the opponent’s mark ‘would unavoidably weaken the established position of the Opponent’s well-known trademark “POST”’.
Detriment to the distinctive character of the earlier mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods or services for which it is registered and used as coming from the proprietor of that mark is weakened, since use of the later mark leads to ‘dispersion’ of the identity of the earlier mark (judgment of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 29).
If the distinctive character of an earlier trade mark is one of the circumstances generally relevant for the applicability of Article 8(5) EUTMR, it is particularly relevant in cases where precisely the distinctive character of the earlier trade mark is allegedly being put at risk.
‘Erosion’ of the earlier trade mark’s distinctive character (sometimes called ‘dilution by blurring’) is more likely where the elements of the trade marks giving rise to similarity between signs enjoy a considerable degree of inherent distinctive character. As mentioned by the Court of Justice, ‘the more ‘‘unique’’ the earlier mark appears, the greater the likelihood that the use of a later identical or similar mark will be detrimental to its distinctive character’ (judgment of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 74).
By contrast, likelihood of dilution is less likely when such elements have only a limited degree of inherent distinctive character. ‘… The risk of dilution appears, in principle, to be lower if the earlier mark consists of a term which, because of a meaning inherent in it, is very common and frequently used, irrespective of the earlier mark consisting of the term at issue’ (judgment of 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 38).
The circumstances in the present case do not suggest that use of the contested trade mark will result in dilution of the earlier trade mark. The term ‘POST’ (although registered as a trade mark in Germany) is a generic term per se and is extensively used to designate the system of mail delivery and thus the advertising services provided via mail, as are the relevant services of the earlier right in this case. Thus its inherent distinctiveness is of such a nature that it simply cannot be weakened any further. Moreover, and based on the arguments pointed above, there is no reason to assume that consumers would relate the element ‘POST’ in the uncommon word combination of the contested sign to the opponent or its mark and offered under it services.
On the basis of the above, the Opposition Division concludes that there are no indications suggesting that the use of the contested trade mark would be detrimental to the distinctive character of the earlier trade mark.
For the sake of completeness, it is noted that the opponent indicates in the notice of opposition that use of the contested sign will be detrimental to the repute of the earlier mark, however no further arguments were provided to justify such a finding, neither could the submitted evidence lead to such a conclusion. Therefore, it is concluded that no detriment to the repute of the earlier mark has been proven.
As seen above, it has not been established that the use 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 as required by Article 8(5) EUTMR. The opposition must, therefore, be rejected as not well founded under Article 8(5) EUTMR.
CONCLUSION:
It follows from the above that the opposition is rejected on the grounds of Article 8(1)(b) and 8(5) 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.
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.
The Opposition Division
André Gerd Günther BOSSE | Irina SOTIROVA | Julia SCHRADER |
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.