POSTAMAIL | Decision 2605221 | Trademarkers LLC

POSTAMAIL | Decision 2605221

Date Published: Sep 24, 2017

OPPOSITION No B 2 605 221

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

Mailteck S.A., Polígono Industrial s/n, 31540 Buñuel (Navarra), Spain (applicant), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative).

On 25/08/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 605 221 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 14 284 715 , namely against some of the services in Class 35 and all the services in Class 39. The opposition is based on European Union trade mark registration No 797 217 (earlier mark 1), and German trade mark registrations No 30 012 966 ‘POST’ (earlier mark 2) and No 39 906 451 (earlier mark 3). The opponent invoked Article 8(1)(b) and 8(5) EUTMR in regard to earlier mark 2 and Article 8(1)(b) EUTMR in regard to earlier marks 1 and 3.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registrations No 30 012 966.

I German trade mark registration No 30 012 966 (earlier mark 2)

1. Request for proof of use

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based: European Union trade mark registration No 797 217 and German trade mark registrations No 30 012 966 and No 39 906 451.

The request was submitted in due time and is admissible in relation to European Union trade mark registration No 797 217 and German trade mark registration No 39 906 451 given that these earlier trade marks were registered more than five years prior to the date of publication of the contested application, that is 17/08/2015. The opponent was therefore required to prove that these trade marks were put to genuine use in the European Union and Germany from 17/08/2010 to 16/08/2015 inclusive.

The request is, however, inadmissible as far as earlier German national trade mark No 30 012 966 is concerned. According to Article 26(5) of the German law on the protection of marks and other signs, the relevant date for calculating the five-year grace period where an opposition has been lodged against the registration of a mark is the date when the opposition proceedings are closed, and not the date of registration of the mark.

According to the registration certificate submitted, an opposition was lodged against the registration of the mark and the proceedings were concluded on 17/10/2012. Therefore, the grace period had not yet expired at the date of publication of the mark applied for.

The request for proof of use in relation to German national trade mark No 30 012 966 is inadmissible.

2. 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 goods and services are the following:

Class 35: Distribution of leaflets, either directly or by post, or distribution of samples; dissemination of promotional material and printed (promotional) documentation by mail; mail sorting, handling and receiving.

Class 39: Storage services, delivering and collection of letters, forwarding of letters.

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

Contested services in Class 35

The contested distribution of leaflets, either directly or by post, or distribution of samples overlaps with the opponent’s collecting, forwarding and delivery of direct and indirect mail advertising, as far as they both concern the distribution of advertising materials (either leaflets or samples). The services are, therefore, considered to be identical.

The contested dissemination of promotional material and printed (promotional) documentation by mail overlaps with the opponent’s collecting, forwarding and delivery of direct and indirect mail advertising, as far as they both concern the dissemination of promotional materials (documentation) through the mail. The services are, therefore, considered to be identical.

The contested mail sorting, handling and receiving and the opponent’s postal services in Class 39 coincide in the general purpose of sorting, handling and receiving mail. Furthermore, they target the same public. These are, therefore, considered similar to a low degree.

Contested services in Class 39

Delivering and collection of letters, forwarding of letters are identically contained in both lists of services (including synonyms).

The contested storage services refer to services whereby a company’s merchandise is kept in a particular place for a fee. These overlap with the opponent’s parcel services, as far as they both are parcel storage services. It follows that the services are identical.

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 low 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

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).

The earlier mark is a word mark, ‘POST’. The contested sign is a figurative mark, which consists of the verbal elements ‘Posta’ and ‘Mail’, written in italic title-case letters and placed one below the other. Above the verbal element is depicted a ´post horn´ device, in which central part is placed the symbol ‘@’ and another curving line underneath.

The public in the relevant territory will perceive the earlier sign as referring to, among other services, ‘a system of mail delivery’: a particular kind of service, most commonly involving the receipt, transportation and delivery of letters and parcels. Moreover, the word ‘POST’ will be understood to mean, inter alia, ‘to put up (a notice) in a public place’, ‘to announce by means of or as if by means of a poster’. In recent years, the word ‘POST’ has become more widely understood in this meaning in the relevant territory because of its extensive use in social networking media.

Given the above, and despite the fact that the German market for postal services was one of the first to be liberalised, the word ‘POST’ in Germany, when used on its own, may 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 are available from) the national postal network and post offices. This conclusion is supported by several surveys filed by the opponent, listed further below.

Bearing in mind that the relevant services are collecting, forwarding and delivery of direct and indirect mail advertising, postal services, the element ‘POST’ is per se non-distinctive or, in any event, weak for all these services covered by the earlier mark, 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 ‘Posta’ in the contested sign does not exist as a word in German. It is however, not excluded that part of the relevant public would relate it to ‘post’ with the meanings already specified above (with the exception of the relation to the national postal operator, as it will be further explained below) and therefore its distinctiveness in relation to the relevant services, being advertising, mail related services and storing services (which could also be offered by postal offices) is lower than average. It is, however, noted that the element is more distinctive than the element ‘POST’ of the earlier sign.

The element ‘Mail’ of the contested sign is likely to be related by the relevant public to a short form of ‘e-mail’, as in the ‘electronic mail/ letter’ and thus it refers to the general idea of sending/receiving messages. The latter conclusion also applies to the ‘@’ symbol, which is commonly used in email addresses. Finally, the post horn device of the contested sign would be perceived as such and thus associated with postal services in general. It is also noted that due to the combination and construction of the elements abovementioned, it is unlikely that the relevant public would relate the element ‘Posta’ 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 and generally referring to postal services.

As explained above the relevant services are advertising (which could be provided by post), mail related services and storing services (which could also be offered by postal offices). Taking into account what has been said above, it is considered that the element ‘Mail, the ´post horn´ device and the ‘@’ symbol are weaker than average for the relevant services, as they refer to the nature and/or the purpose of the services or the means used for their operation (via email).

Visually, the signs coincide in the sequence of letters ‘POST’, being the only element of the earlier mark (which is weak for the relevant services) and the first four letters of the element ‘Posta’ (being of a limited distinctiveness) in the contested sign. However, they differ in the element ‘Mail’ and the ´post horn´ device, containing the ‘@’ symbol (all of them being weaker than average for the relevant services) in the contested sign, which have no counterparts in the earlier mark.

When signs consist of both verbal and figurative components (as does the contested sign), in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Bearing in mind that the coincidence lies in that the letters of the earlier mark are all contained in the contested sign, but with the additional letter ‘a’ and taking into account the differing elements of the contested sign and the remarks for the distinctiveness of all the elements of the signs, the latter are considered visually similar to a low degree.

Aurally, the signs coincide in the sounds ‘p/o/s/t’, present as ‘POST’ (which is weak for the relevant services) in the earlier mark, and as the first four letters in the element ‘Posta’ in the contested sign. However, they differ in the sound of the last letter ‘a’ of the element ‘Posta’ and in the sound of the element ‘Mail’ (both elements being of limited distinctiveness) and in the sound of the symbol @ (if pronounced as ‘at’) of the contested sign. Furthermore, the earlier mark contains one syllable, while the contested sign contains three syllables or four syllables (depending whether the symbol @ is pronounced). It follows that the rhythm and intonation of the signs are different.

Bearing in mind that the coincidence lies in that the sounds of the earlier mark are all contained in the contested sign, but with the additional sounds ‘a’ and the sounds of ‘mail’ and ´@’ (if pronounced), and taking into account the distinctiveness of the elements in question, the signs are considered aurally similar to a low degree.

Conceptually, the meanings conveyed by the trade marks’ elements as such – as well as their perception by the relevant public, bearing in mind the relevant services – have already been explained above. It is therefore concluded that, as the element ‘POST’ of the earlier sign and the element ‘Posta’ and the post horn device of the contested sign (both elements being of limited distinctiveness) would be associated with the general concept of ‘postal services’ and the‘@’ symbol of the contested sign would be related to the general idea of sending/receiving messages (also performed by the postal services), the signs are conceptually similar only to a very 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 (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 Printouts from the internet showing the slogans ‘Die Post im Internet. Der E-Postbrief’ (‘The Post on the Internet. The E-Postbrief’) and ‘Die Post im Internet. Der E-Postbrief kommt’ (‘The Post on the Internet. The E-Postbrief is coming’). Some of the pages have the sign in the top left corner, with the text in German and English ‘By E-MAIL POST you are on the internet on the safe side. For he is just as binding, confidential and reliable as a letter to Deutsche Post.’

Annex 11 A printout from the website www.slogans.de (dated 14/07/2010), with the heading ‘Deutsche Post starts the E-Postbrief’, with a partial translation into English, stating: ‘With one of the biggest media campaigns of the year Deutsche Post mobilises the citizens for the new E-Postbrief’. The following sign appears on the printout:.

Annex 12 A printout from www.horizont.net, dated 14/07/2010.

Annex 13 An article from the website www.postandparcel.info (dated 05/11/2010), entitled ‘Deutsche Post reaches hybrid mail landmark’. Reference is made only to the ‘E-Postbrief’.

Annex 14 A press release from www.marktforschung.de (dated 14/11/2011), on German public awareness of ‘E-POSTBRIEF’.

Annex 15 A presentation on the opponent’s advertising campaigns for ‘E-POST/E-POSTBRIEF’, during the period 2010-2013, depicting the signs and featuring, as explained by the opponent, ‘various celebrities well-known to the German public’ (untranslated).

Annex 16 ‘Brand Assessment BRIEF 2010’ from Market Research Service Center, referring to brand awareness of the sign of over 90%.

Annex 17 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 18 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 19 A list from the Cedelex database of 219 ‘POST’ trade marks held by the opponent.

Annex 20 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 21 Printouts from www.polymark.de, containing information about mark applications with an element ‘mail’ in them that have been refused for a lack of distinctive character or withdrawn.

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 articles 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 (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 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. For the sake of completeness, under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

Global assessment, other arguments and conclusion

The contested services have been found to be partly identical, partly similar to a low degree and partly dissimilar 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 sequence ‘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 the element ‘Posta’. Even though the latter could be related to the meaning of ‘post’ and thus its distinctiveness is also limited, it does not exist as a word per se for the relevant public and is more distinctive than the element ‘POST’ of the earlier mark, as already referred to above.

While it is true that the remaining verbal and figurative elements of the contested sign are of a limited distinctiveness and the concepts they convey are related to ‘postal services’ and/or ‘sending/receiving’ of messages, their particular combination would not be attributed to the opponent’s company, which used to hold a monopoly for postal services, but on the contrary the consumer would assume that a new competitor has entered the market, that is to say, will assume a different commercial origin. Therefore, the visual and aural similarities derived from the sequence ‘POST’ and the remote conceptual link between the element ‘POST’ of the earlier mark and the elements of the contested sign, is not sufficient in order to find a likelihood of confusion between the signs.

The Opposition Division finds the visual and aural 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 services, found to be identical or similar to a low degree, come from the same undertaking or, as the case may be, economically linked undertakings.

It remains necessary to consider the opponent’s argument that ‘[c]onsidering the obvious lack of distinctive character of “Mail”’, the element is not capable to serve for distinguishing the EUTM application form the opponent’s sign. The opponent refers to previous national decisions to support its arguments (the excerpts, listed as Annex 21 above). However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).

Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings. It is noted that in the submitted excerpts, even though it is pointed that some of the applications are refused for ‘lack of distinctive character’, there is no provision of the text of decisions per se, so it could not be conclude what was the particular reasoning of the respective authority in these specific cases. The Opposition Division is at the opinion that the element ‘Mail’ in the contested sign is of a limited distinctiveness, however it is not completely devoid of distinctiveness for the case at issue, as it was already explained above. Furthermore, it is not the sole element of the contested sign, but it is one of the elements of a combination which for the reasons, specified above is sufficient for the relevant consumer to safely distinguish the signs at issue. Therefore, the opponent’s argument has 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 in respect of this mark.

3. 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 sequence ‘POST’, present as a sole element in the earlier mark. 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 additional letter ‘a’ in the element ‘Posta’ and the combination of elements, this sequence (when perceived) is unlikely to be understood 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 construction of several elements (although of limited distinctiveness) that 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 sequence ‘Post’, present in the contested sign would result in the latter 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’ (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 sequence with a limited distinctiveness ‘POST’, 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. As noted above, the element ‘Posta’ of the contested sign does not exist as a word per se in the relevant territory and even when associated with the meaning of ‘post’ it would not be related to the opponent’s entity. Furthermore, the slight conceptual connection between the earlier mark and the remaining elements of the contested sign (i.e. the element ‘Mail’, the ‘post horn’ device and the ‘@’ symbol), some of them often used for the relevant services (the post horn device) or could be related to their general concept of sending/receiving messages, cannot be considered to constitute taking unfair advantage. Economic entities should not be prevented from using common connotations and images in their trade marks and, especially elements that are typical for the respective market.

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 (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’ (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’ (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 sequence ‘Post’ in the element ‘Posta’ and in the element 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.

The assessment proceeds with the examination of the other earlier rights invoked by the opponent, namely European Union trade mark registration No 797 217 and German trade mark registration No 39 906 451.

II European Union trade mark registration No 797 217 (earlier mark 1) and German trade mark registration No 39 906 451 (earlier mark 3)

1. Likelihood of confusion — Article 8(1)(b) EUTMR

The services

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

Earlier mark 1:

Class 35: Advertising.

Class 39: Transport; packaging and storage of goods; follow-up services included in Class 39, involving the electronic tracking of goods and items, and further logistical support services, including the systematic cross-linking of the flow of goods and information; postal, freight and courier services.

Earlier mark 3:

Class 35: Advertising.

The contested goods and services are the following:

Class 39: Storage services, delivering and collection of letters, forwarding of letters.

Contested services in Class 35

The contested distribution of leaflets, either directly or by post, or distribution of samples; dissemination of promotional material and printed (promotional) documentation by mail, as it was explained above, are variety of advertising services. These are, therefore, included in the broader category of the opponent’s advertising. The services are considered identical.

Contested services in Class 39

The contested storage services include, as a broader category the opponent’s storage of goods. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested delivering and collection of letters, forwarding of letters are included in the broader category of the opponent’s postal services. It follows that these are identical.

b) Relevant public — degree of attention

c) The signs

Earlier trade marks

Contested sign

The relevant territory is the European Union for earlier mark 1 and Germany for earlier mark 3.

The earlier marks are figurative marks, consisting of a stylised depiction of a ‘post horn’ device, which will be perceived as such by the relevant public, as it is largely used in the relevant territory by postal offices and companies. The relevant services are advertising services, storage and postal services. It is considered that the element of the ´post horn´ device is weaker than average for the relevant services, as it refers to the nature and/or the purpose of the services or the means used for their operation.

The contested sign has already been described above and reference is made to the respective findings (in I.2.c), which are applicable for the territory of Germany (when it comes to earlier mark 3).

As far the territory of the European Union as a whole is concerned (when it comes to earlier mark 1), it is noted that the element ‘Posta’ of the contested sign is likely to be related to ‘post office’ for part of the relevant public. This is either because ‘posta’ exists directly as a term (e.g. for the Hungarian-speaking part of the public) or it will be related to it (e.g. by part of the Bulgarian-speaking public, as it may be perceived as the Latin transliteration of the respective Bulgarian word ‘поща‘). For another part of the public (such as part of the English-speaking one) it will be related to the English term ‘post’ in the meaning of ‘letters, packages, etc., that are transported and delivered by the Post Office; mail’. Reference is made as well to the connotations related to the element ‘Posta’ for the German-speaking part of the public and already explained above.

For the part of the relevant public for which the element ‘Posta’ is understood as ‘post office’, namely the entity providing the relevant services (advertising services, storage and postal services) or through which the services are provided, the element is non-distinctive. For the part of the relevant public that would relate the element ‘Posta’ to ‘post’ (such as part of the English and German- speaking public) with the meanings already specified above, the distinctiveness of the element in relation to the relevant services, being advertising, mail services and storing services (which could also be offered by postal offices) is lower than average. Finally, for part of the relevant public (e.g. part of the Bulgarian -speaking public) the element would not have a meaning and it therefore would be distinctive.

As far as the element ‘Mail’ is concerned, it would be perceived by part of the relevant public, such as the English-speaking part in the meaning of the English word ‘mail’, as in, inter alia, ‘letters, packages, etc., that are transported and delivered by the post office’. It is therefore, considered that for this part of the public, this element is non-distinctive in relation to the relevant services, as it refers to the subject matter of these services or to the means of their provision. Furthermore, for part of the relevant public, such as part of the German and Hungarian-speaking public, the element would be related to the meaning of ‘email’ and its distinctiveness have already been assessed above and reference is made to the respective findings. Finally, for part of the relevant public, such as part of the Bulgarian-speaking public this element will have no meaning and it will therefore be distinctive.

The ‘@’ symbol will be perceived largely by the relevant public in the meaning already specified above and a reference is made to the findings about its distinctiveness, which is limited in relation to relevant services. Finally, the ‘post horn’ device of the contested sign would be perceived as such and thus associated with postal services in general, as already explained above and a reference is made to the respective findings about its distinctiveness, which is limited for the relevant services.

Visually, the signs coincide in the depiction of the ‘post horn device’ (being of limited distinctiveness for the relevant services), however stylised differently in the signs under comparison. They differ in the element ‘Posta’ and ‘Mail’ (even though of a limited distinctiveness or non-distinctive for part of the relevant public), as well as in the depicted @ symbol of the contested sign (being of a limited distinctiveness), which have no counterparts in the earlier marks.

Bearing in mind that the coincidences are in the weak figurative element of the signs, which is furthermore depicted differently in the signs in comparison, the signs are visually similar to a low degree.

Purely figurative signs are not subject to a phonetic assessment. As the earlier marks are purely figurative, it is not possible to compare them aurally with the contested sign.

Conceptually, all the signs coincide in the concept of the ‘post horn’ (being of limited distinctiveness). Furthermore, a conceptual link would be drawn by part of the relevant public between the ‘post horn’ device of the earlier marks and the element ‘Posta’ (being of limited distinctiveness for part of the relevant pubic), as they would be associated with the general concept of ‘postal services’. The ‘post horn’ device of the earlier marks and the ‘@’ symbol of the contested sign would be related to the general idea of sending/receiving messages. As the signs are connected only on the basis of concepts that are weak for the relevant services, the signs are conceptually similar only to a very 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 marks

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

The opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as lower than average for all of the services in question.

Global assessment, other arguments and conclusion

It was noted that the signs under comparison coincide in the depiction of the ‘post horn’ device, which is on its own of limited distinctiveness for the relevant services. The differences between the signs, due to the verbal elements of the contested sign, namely ‘Posta’ and ‘Mail’, the different depiction of the common elements (the ‘post horn’ device) and the additional @ symbol of the contested sign are clearly perceptible by the relevant public. Even though, as analysed above, for part of the relevant public the element ‘Posta’ would be non-distinctive, the element ‘Mail’ would be at least with some degree of distinctiveness; respectively for the part of the public for which ‘Mail’ is non-distinctive, the element ‘Posta’ would have at least some degree of distinctiveness. It is furthermore, concluded that the additional elements of the contested sign and the particular combination of the elements in this sign, placed together, are sufficient for the relevant consumers to be able to safely distinguish the competing marks.

Consequently, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered reasonably well informed and reasonably observant and circumspect, might believe that the services, found to be identical or similar to a low degree, come from the same undertaking or, as the case may be, economically linked undertakings.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent.

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

Judit NÉMETH

Irina SOTIROVA

Erkki MÜNTER

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.

POSTAMAIL | Decision 2605221

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