UNICADE | Decision 2704164 - UNIVERSIDAD PONTIFICIA COMILLAS v. Goar Biesenkamp

Date Published: Oct 1, 2017

OPPOSITION No B 2 704 164

Universidad Pontificia Comillas, Calle Alberto Aguilera, 23, 28015 Madrid, Spain (opponent), represented by Juan Carlos Riera Blanco, Avda. Concha Espina, 8 - 6º D 28036 Madrid Spain (professional representative)

a g a i n s t

Goar Biesenkamp, Ottilienstr.34 81827 Munich, Germany (applicant).

On 03/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 704 164 is partially upheld, namely for the following contested goods and services:

Class 9:     Media content; recorded data files; pre-recorded compact discs; pre-recorded cassettes; data recorded electronically; directories [electric or electronic]; prerecorded magnetic data carriers; recorded tapes; recorded data [magnetic].

Class 41:  Providing online electronic publications in the field of music, not downloadable; Publishing of electronic publications; Library services related to data stored and retrieved by electronic means; library services related to documents stored and retrieved by electronic means; library services provided by means of a computerised database; computer based library services; music library services; electronic library services; publishing services, except printing; publication of calendars of events; music publishing and music recording services; music transcription for others; issue of publications; publication of musical texts; on-line publishing services; publishing services; publishing services (including electronic publishing services); writing of texts, other than publicity texts; writing of texts; writing and publishing of texts, other than publicity texts; digital video, audio and multimedia entertainment publishing services; publishing of musical works; music publishing services; publication of multimedia material online; publication of material which can be accessed from databases or from the internet; publication of material on magnetic or optical data media; song publishing; organizing cultural and arts events; conducting of entertainment events; arranging and conducting of concerts; organising of stage shows; arranging and conducting of meetings in the field of entertainment; arranging and presenting of live performances; organisation of ceremonial events; organising of shows for entertainment purposes; planning of shows; pop music concerts (organisation of -); musical events (arranging of -); arranging of music performances; organisation of live musical performances; organisation of live performances; arranging of presentations for entertainment purposes; organising events for entertainment purposes; arranging of visual and musical entertainment; arranging of visual entertainment; arranging, conducting and organisation of concerts; live band performance services; organization of shows [impresario services]; organisation of shows.

2.        European Union trade mark application No 15 090 525 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 090 525. The opposition is based on, inter alia, Spanish trade mark registration No 2 999 038. The opponent invoked Article 8(1)(b) and Article 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 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 Spanish trade mark registration No 2 999 038.

1. The goods and services

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

Class 16: Publications.

Class 41: Education services and publication of texts.

Class 42: Reports, evaluations and projects provided by professionals.

The contested goods and services are the following:

Class 9: Media content; recorded data files; pre-recorded compact discs; pre-recorded cassettes; data recorded electronically; directories [electric or electronic]; telephone ring tones [downloadable]; downloadable ring tones for mobile phones; prerecorded magnetic data carriers; recorded tapes; recorded data [magnetic].

Class 41: Audio and video production, and photography; library services related to data stored and retrieved by electronic means; library services related to documents stored and retrieved by electronic means; library services provided by means of a computerised database; computer based library services; music library services; electronic library services; coaching; organizing cultural and arts events; performance of dance, music and drama; special event planning consultation; advisory services relating to entertainment; consultancy and information services relating to arranging, conducting and organisation of concerts; consultancy services in the field of entertainment; provision of information relating to entertainment online from a computer database of the internet; providing digital music from the internet; providing digital music from MP3 internet web sites; providing on-line music, not downloadable; concert booking; booking of performing artists for events (services of a promoter); presentation of concerts; presentation of live entertainment events; music performances; presentation of musical performances; presentation of musical concerts; musical concerts by television; musical concerts by radio; staging of light entertainment productions; entertainer services; theatrical booking agencies; entertainment agency services; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information; song writing services; songwriting; show production services; singing concert services; live musical concerts; presentation of live performances; production of live performances; musical entertainment; conducting of entertainment events; entertainment services provided by vocalists; music composition services; composition of music for others; presentation of musical performance; orchestra services; rendering of musical entertainment by instrumental groups; rendering of musical entertainment by vocal groups; musical floor shows provided at performance venues; performing of music and singing; presentation of live performances by a musical group; live entertainment; live music performances; live demonstrations for entertainment; live performances by rock groups; live band performances; artistic direction of performing artists; arranging and conducting of concerts; organising of stage shows; arranging and conducting of meetings in the field of entertainment; arranging and presenting of live performances; organisation of ceremonial events; organising of shows for entertainment purposes; planning of shows; pop music concerts (organisation of -); musical events (arranging of -); arranging of music performances; organisation of live musical performances; organisation of live performances; arranging of presentations for entertainment purposes; organising events for entertainment purposes; arranging of visual and musical entertainment; arranging of visual entertainment; provision of live shows; production of shows; production of music shows; production of live shows; production of live entertainment events; live show production services; production of live television programmes for entertainment; production of stage shows; audio tape production services; production of entertainment shows featuring dancers and singers; production of entertainment shows featuring singers; services providing entertainment in the form of live musical performances; entertainment services performed by a musical group; entertainment services provided by a musical vocal group; entertainment services performed by musicians; entertainment by means of concerts; entertainer services provided by musicians; entertainment in the form of recorded music (services providing -); provision of live entertainment; provision of entertainment services through the media of audio tapes; entertainment services in the form of musical vocal group performances; entertainment services in the form of concert performances; entertainment services in the form of musical group performances; entertainment services provided by performing artists; arranging, conducting and organisation of concerts; live band performance services; organization of shows [impresario services]; organisation of shows; commissioned writing [plays, musicals, for publications etc.]; advisory services relating to publishing; publishing services, except printing; publication of calendars of events; music publishing and music recording services; music transcription for others; issue of publications; publication of musical texts; on-line publishing services; publishing services; publishing services (including electronic publishing services); writing of texts, other than publicity texts; writing of texts; publishing of electronic publications; writing and publishing of texts, other than publicity texts; digital video, audio and multimedia entertainment publishing services; publishing of musical works; music publishing services; publication of multimedia material online; publication of material which can be accessed from databases or from the internet; publication of material on magnetic or optical data media; song publishing; providing online electronic publications in the field of music, not downloadable.

Class 45: Copyright management consultation; consultancy relating to the licensing of intellectual property; advisory services relating to copyright; advisory services relating to intellectual property licensing; advisory services relating to intellectual property protection; advisory services relating to intellectual property rights; enforcement of intellectual property rights; consultancy relating to copyright protection; copyright protection; intellectual property services; professional advisory services relating to intellectual property rights; copyright (professional advisory services relating to infringement of -); copyright (professional advisory services relating to licensing of -); copyright (professional advisory services relating to -); providing information in the field of intellectual property; legal services relating to the exploitation of film copyright; legal services relating to the exploitation of ancillary rights relating to film, television, video and music productions; legal services relating to the exploitation of copyright and industrial property rights; legal services relating to the negotiation and drafting of contracts relating to intellectual property rights; legal services relating to intellectual property rights; legal services relating to the acquisition of intellectual property; legal services relating to the management and exploitation of copyright and ancillary copyright; legal services relating to the management, control and granting of licence rights; legal services relating to copyright licensing; legal services relating to the protection and exploitation of copyright for film, television, theatre and music productions; licensing of musical works; licensing of industrial property rights and copyright; licensing of intellectual property and copyright; licensing of intellectual property in the field of copyrights [legal services]; licensing of radio and television programs; licensing of musical shows; film, television and video licensing; legal and judicial research services in the field of intellectual property; legal consultancy relating to intellectual property rights; legal administration of licences; licensing services relating to music publishing; granting of licences to others for the use of industrial property rights and copyright; licensing services relating to performance rights; copyright licensing; licensing authority services; licensing of rights relating to television, video and radio programs, productions and formats; licensing of rights to films, television and video productions; licensing of rights relating to films; licensing of rights relating to video productions; granting of licenses relating to the copying of broadcast television programmes; agencies for copyright licensing; legal assistance in the drawing up of contracts; exploitation of industrial property rights and copyright by licensing; management of intellectual property; management of copyright and industrial property rights for others; copyright and industrial property rights management; copyright management; management and exploitation of copyright and industrial property rights by licensing for others; licensing of rights relating to the use of photographs; licensing of rights relating to audio productions; licensing of rights relating to television productions; personal wardrobe styling consultancy.

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

Contested goods in Class 9

The contested media content; recorded data files; pre-recorded compact discs; pre-recorded cassettes; data recorded electronically; directories [electric or electronic]; prerecorded magnetic data carriers; recorded tapes; recorded data [magnetic] are similar to the opponent’s education in Class 41, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

The contested telephone ring tones [downloadable]; downloadable ring tones for mobile phones are dissimilar to the opponent’s goods and services in Classes 16, 41 and 42. There is no relationship between these goods and services, as their natures and purposes are not the same, and they are neither complementary nor in competition with each other. Furthermore, their commercial origins and distribution channels are different.

Contested services in Class 41

The opponent’s education in Class 41 and the contested providing online electronic publications in the field of music, not downloadable; publishing of electronic publications are similar, as they can have the same producers, end users and distribution channels. Furthermore, they are complementary.

The contested library services related to data stored and retrieved by electronic means; library services related to documents stored and retrieved by electronic means; library services provided by means of a computerised database; computer based library services; music library services; electronic library services are considered similar to the opponent’s education, as they have the same educational purpose and it is common practice for educational institutions to maintain a library and to lend teaching materials such as books to participants in educational courses. Therefore, the goods are commonly offered by the same institutions that provide education and teaching services, and these goods and services also have the same end users.

The contested organizing cultural and arts events; conducting of entertainment events; arranging and conducting of concerts; organising of stage shows; arranging and conducting of meetings in the field of entertainment; arranging and presenting of live performances; organisation of ceremonial events; organising of shows for entertainment purposes; planning of shows; pop music concerts (organisation of -); musical events (arranging of -); arranging of music performances; organisation of live musical performances; organisation of live performances; arranging of presentations for entertainment purposes; organising events for entertainment purposes; arranging of visual and musical entertainment; arranging of visual entertainment; arranging, conducting and organisation of concerts; live band performance services; organization of shows [impresario services]; organisation of shows involve sharing knowledge and experience and providing a forum for exchange. Therefore, the contested services may have some relevant points in common with the opponent’s education. They are often offered by the same providers and they target the same public. Therefore, they are considered similar to a low degree.

The opponent’s education in Class 41 and the contested publishing services, except printing; publication of calendars of events; music publishing and music recording services; music transcription for others; issue of publications; publication of musical texts; on-line publishing services; publishing services; publishing services (including electronic publishing services); writing of texts, other than publicity texts; writing of texts; writing and publishing of texts, other than publicity texts; digital video, audio and multimedia entertainment publishing services; publishing of musical works; music publishing services; publication of multimedia material online; publication of material which can be accessed from databases or from the internet; publication of material on magnetic or optical data media; song publishing are similar to a low degree, as they can have the same distribution channels. Furthermore, they are complementary.

The remaining contested services, audio and video production, and photography; coaching; performance of dance, music and drama; special event planning consultation; advisory services relating to entertainment; consultancy and information services relating to arranging, conducting and organisation of concerts; consultancy services in the field of entertainment; provision of information relating to entertainment online from a computer database of the internet; providing digital music from the internet; providing digital music from MP3 internet web sites; providing on-line music, not downloadable; concert booking; booking of performing artists for events (services of a promoter); presentation of concerts; presentation of live entertainment events; music performances; presentation of musical performances; presentation of musical concerts; musical concerts by television; musical concerts by radio; staging of light entertainment productions; entertainer services; theatrical booking agencies; entertainment agency services; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information; song writing services; songwriting; show production services; singing concert services; live musical concerts; presentation of live performances; production of live performances; musical entertainment; entertainment services provided by vocalists; music composition services; composition of music for others; presentation of musical performance; orchestra services; rendering of musical entertainment by instrumental groups; rendering of musical entertainment by vocal groups; musical floor shows provided at performance venues; performing of music and singing; presentation of live performances by a musical group; live entertainment; live music performances; live demonstrations for entertainment; live performances by rock groups; live band performances; artistic direction of performing artists; provision of live shows; production of shows; production of music shows; production of live shows; production of live entertainment events; live show production services; production of live television programmes for entertainment; production of stage shows; audio tape production services; production of entertainment shows featuring dancers and singers; production of entertainment shows featuring singers; services providing entertainment in the form of live musical performances; entertainment services performed by a musical group; entertainment services provided by a musical vocal group; entertainment services performed by musicians; entertainment by means of concerts; entertainer services provided by musicians; entertainment in the form of recorded music (services providing -); provision of live entertainment; provision of entertainment services through the media of audio tapes; entertainment services in the form of musical vocal group performances; entertainment services in the form of concert performances; entertainment services in the form of musical group performances; entertainment services provided by performing artists; commissioned writing [plays, musicals, for publications etc.; advisory services relating to publishing, are dissimilar to the opponent’s goods and services in Classes 16, 41 and 42. They belong to different areas of trade, serve very different purposes, have different distribution channels and methods of use, are not complementary or in competition with each other, and are usually provided by different companies.

Contested services in Class 45

The opponent’s goods and services have nothing in common with the contested services in Class 45. These goods and services have different natures (goods and services are essentially different in nature), purposes (e.g. legal services versus the services of providing education) and methods of use. Furthermore, they are not provided by the same companies, they target different end users and they are provided through different distribution channels. These goods and services are not in competition or complementary. Taking all the above into account, the contested services in Class 45 are considered dissimilar to all of the opponent’s goods and services.

2. Relevant public — degree of attention

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

In the present case, as regards the goods and services in Classes 9 and 41, the relevant consumer who is part of the general public will decide to purchase certain goods and services covered by the marks in question – in particular those such as publishing of electronic publications – on the basis of previously gathered information. In those circumstances, the level of attention of the relevant consumer will be higher than average for those services. On the other hand, such a level of attention may decrease in respect of other goods and services covered by those marks, such as pre-recorded compact discs, which constitute goods for mass consumption and which do not necessarily require particular technical knowledge and may be of relatively little monetary value. In those circumstances, the relevant public will thus have an average level of attention (27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27).

3. The signs

	UNICADE
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 trade mark consists of the letters ‘ICADE’ and, above this verbal element, a figurative element resembling a cross. The contested sign is a simple word mark, ‘UNICADE’.

The earlier sign does not contain any element that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

In the contested sign, however, the element ‘UNI’ may be associated with ‘universidad’, meaning ‘university’ in Spanish. Bearing in mind that some of the relevant services in Class 41 relate to education, this element is non-distinctive for those services.

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

Visually, the signs coincide in the letters ‘ICADE’ and differ in the additional letters ‘UN’ of the contested sign and in the additional figurative element of the earlier mark, as well as its stylisation.

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

Aurally, the earlier mark will be pronounced as [i-ca-de] and the contested sign as [u-ni-ca-de]; the pronunciation of the signs coincides in the sequence of letters ‘ICADE’ and differs in the sound of the letters ‘UN’.

Therefore, the signs are aurally similar to an average degree.

Conceptually, the figurative element of the earlier sign does not have a clear meaning and the letters ‘ICADE’ do not convey any concept. In the contested mark, the letters ‘UNI’ at the beginning of the sign may be understood as a shortened form of ‘university’, as explained above.

Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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:T:2008:454).

Moreover, it should also be taken into account that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323).

In the present case, the conflicting goods and services are similar to varying degrees or dissimilar. The signs are visually and aurally similar to an average degree. Although some differences result from the first letters, ‘UN’, in the contested sign, they are not considered sufficient to outweigh the aural and visual similarities arising from the coinciding element ‘ICADE’. These visual and aural similarities could give rise to confusion between the trade marks, even where the consumer has a higher than average degree of attention.

The differences in graphic and figurative effects, although not to be ignored in the global comparison, are not sufficiently strong to prevent a finding of similarity between the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s Spanish trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be similar to those of the earlier trade mark. This conclusion stands also for the contested services that are similar to a low degree. This is because the similarity between the signs is significant enough to lead to a likelihood of confusion even in relation to the services that have only a low degree of similarity.

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

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

1) Spanish trade mark registration No 1 052 834 for the figurative mark  ;

2) Spanish trade mark registration No 1 027 987 for the figurative mark ;

3) Spanish trade mark registration No 1 053 198 for the figurative mark .

These marks are registered for the following services in Class 41: education and entertainment in general, including the services of courses, seminars, conferences, roundtables, congresses and symposiums; publishing services for books and magazines; library, audio library, video libraries; simultaneous translation, interpreting and in general, cultural events and activities of all kinds.

These other earlier rights invoked by the opponent are not similar to the contested word mark ‘UNICADE’. All the earlier rights are complex figurative signs with a high degree of stylisation. Although the signs contain the letters ‘ICADE’, they are not dominant, as they are depicted in very small characters and can be perceived only with difficulty in earlier marks No 1 and No 2. The earlier marks contain additional verbal elements that will be pronounced and which are not present in the contested sign, so they are clearly different aurally. Visually, there is a clear difference in the signs’ structures, the contested sign being a simple word mark and the earlier marks being complex figurative marks. The conceptual comparison has no impact on the assessment of the similarity between the signs. The overall impression created by the conflicting signs is that they are clearly dissimilar.

According to Article 8(1)(b) EUTMR, the similarity of the signs is a condition for a finding of likelihood of confusion. Consequently, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as regards these earlier rights.

The examination will continue on the basis of the other ground invoked by the opponent, 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.

1. The signs

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

2. Reputation of the earlier trade mark

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

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

In the present case the contested trade mark was filed on 09/02/2016. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely fuel dispensers and electronic payment terminals for use with fuel dispensers in Class 9.

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

On 08/09/2016, the opponent submitted the following evidence:

• A decision of the OEPM (the Spanish trade mark office) of 30/08/2007 in an opposition case against Spanish trade mark No 2 748 630 ‘ICADE’.

• Decision No 2115 of the Administrative Court of the High Court of Justice, Madrid, in Case No 1559/05 of 06/11/2008.

• A printout t of a Google search for ‘ICADE’, showing results leading to news and articles about the opponent.

• Several printouts from the Spanish newspaper ABC; the opponent is mentioned in several advertisements for seminars.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark has acquired a reputation.

From the evidence, it is clear that educational services under the mark ‘ICADE’ have been offered to some extent in Spain.

However, despite showing some use of the trade mark, the evidence provides little information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not demonstrate the degree of recognition of the trade mark by the relevant public.

The opponent submitted several printouts from the Spanish newspaper ABC and previous decisions by Spanish authorities.

However, the evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public, such as might have been provided by market surveys. There is no indication of the market share achieved by the trade marks. As a result, the evidence does not demonstrate that the trade mark is known by a significant part of the relevant public.

Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

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

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

COSTS

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

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

The Opposition Division

Cristina CRESPO MOLTÓ

José Antonio GARRIDO OTALOA

Janja FELC

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.