Trade mark guidelines, Part C Opposition, Section 5 Trade marks with reputation (Article 8(5) EUTMR)

Part C Opposition Section 5

1 Introduction

Whereas, under Article 8(1)(a) EUTMR, double identity of signs and goods/services and, under Article 8(1)(b) EUTMR, a likelihood of confusion are the necessary preconditions for the protection of a registered trade mark, Article 8(5) EUTMR requires neither identity/similarity of goods/services nor a likelihood of confusion. Article 8(5) EUTMR grants protection for registered trade marks not only as regards identical/ similar goods/services but also in relation to dissimilar goods/services without requiring any likelihood of confusion, provided the signs are identical or similar, the earlier mark enjoys a reputation, and the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. The rationale behind the extended protection under Article 8(5) EUTMR is the consideration that the function and value of a trade mark are not confined to its being an indicator of origin. A trade mark can also convey messages other than an indication of the origin of the goods and services, such as a promise or reassurance of quality or a certain image of, for example, luxury, lifestyle, exclusivity, etc. (‘advertising function’) (18/06/2009, C-487/07, L’Oréal, EU:C:2009:378). Trade mark owners frequently invest large sums of money and effort in creating a certain brand image associated with their trade mark. This image associated with a trade mark confers on it an — often significant — economic value, which is independent of that of the goods and services for which it is registered. Article 8(5) EUTMR aims at protecting this advertising function and the investment made in creating a certain brand image by granting protection to reputed trade marks, irrespective of the similarity of the goods or services or of a likelihood of confusion, provided it can be demonstrated that use of the contested application without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier mark. Consequently, the main focus of Article 8(5) EUTMR is not the protection of the general public against confusion as to origin, but rather the protection of the trade mark proprietor against use that takes unfair advantage of, or is detrimental to, the distinctive character or repute of a mark for which it has made significant investments.

1.2 Legal framework

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for 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 EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.’ The same wording is used in the parallel provision of Directive (EU) 2015/2436 approximating the laws of the Member States relating to trade marks (‘TMD’), namely Article 5(3)(a) TMD. The wording of Article 8(5) EUTMR is also very similar to that used in Article 9(2)(c) EUTMR and Article 10(2)(c) TMD, that is, the provisions determining the exclusive rights of a trade mark proprietor, with only a slight difference in the way these refer to the condition of detriment. Unlike the conditional form in Article 8(5) EUTMR, which applies where use of the trade mark applied for ‘would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark’, Article 9(2)(c) EUTMR and Article 10(2)(c) TMD read ‘takes unfair advantage of, or is detrimental to’. The reason for this difference is that in the first case – Article 8(5) EUTMR – registrability is at stake, which may have to be decided upon without any use of the later mark having been made, while in the second case the prohibition of use is at issue. The impact of this difference on the kind of evidence required for proving detriment in either case is discussed in paragraph 3.4.

2 Scope of Application

The previous wording of Article 8(5) EUTMR, which was applicable until 23/03/2016, gave rise to some controversy as regards its applicability exclusively to (a) earlier registered marks and (b) dissimilar goods and services. As these issues directly affected the scope of its application, it was necessary to clarify whether it was possible to also apply Article 8(5) EUTMR to (a) unregistered/well-known marks and (b) similar or identical goods and services.

2.1 Applicability to registered marks

2.1.1 The requirement of registration

According to the clear wording of the current version of Article 8(5) EUTMR, as introduced by Amending Regulation (EU) 2015/2424, this norm protects a ‘registered earlier trade mark’. Even if the requirement of registration was not expressly mentioned in the previous version of this provision, the Office interpreted it in this way, since according to its wording the applicability of the provision was restricted, indirectly but clearly, to earlier registered trade marks by prohibiting registration where [the

application] was identical or similar to the earlier trade mark and was to be registered for goods and services that were not similar to those for which the earlier trade mark was registered. It follows that the existence of an earlier registration has always been a necessary condition for the application of Article 8(5) EUTMR and that, as a consequence, the reference to Article 8(2) EUTMR should be limited to earlier registrations and earlier applications subject to their registration (11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 55).

The requirement of registration serves to mark the border between Article 8(5) EUTMR and Article 8(2)(c) EUTMR. However, neither Article 8(2)(c) EUTMR nor Article 6bis of the Paris Convention stipulate expressly that the well-known mark has to be a non-registered mark. The reason for the principle that only non-registered marks are covered by these latter provisions results indirectly both from the spirit and the ratio legis of these provisions. As regards the Paris Convention, the purpose of the provision of Article 6bis, introduced for the first time in the Convention in 1925, was to prevent the registration and use of a trade mark liable to create confusion with another mark already well known in the country of such registration, even where the latter well-known mark was not, or not yet, protected in that country by registration. As regards the EUTMR, the purpose was to close a legal gap as Article 8(5) EUTMR protects only registered EUTMs. Without Article 8(2)(c) EUTMR, reputed nonregistered trade marks would have remained without protection (apart from that of Article 8(4) EUTMR). In order to close this legal gap, the EUTMR provided for the protection of well-known marks within the sense of Article 6bis of the Paris Convention, as this Article had been drawn up mainly to afford protection to non-registered trade marks with a well-known character. Consequently, on the one hand, well-known marks that are not registered in the relevant territory cannot be protected under Article 8(5) EUTMR against dissimilar goods. They can only be protected against identical or similar goods if there is a likelihood of confusion pursuant to Article 8(1)(b) EUTMR, to which Article 8(2) (c) EUTMR refers for determining the scope of protection. However, this is without prejudice to the fact that well-known marks, to the extent that they are not registered, may also be protected under Article 8(4) EUTMR. Therefore, if the relevant national law affords them protection against dissimilar goods and services, such enhanced protection may also be invoked under Article 8(4) EUTMR. On the other hand, where well-known marks have been registered, either as EUTMs or as national marks in one of the Member States, they can be invoked under Article 8(5) EUTMR, but only if they also fulfil the requirements of reputation. Even though the terms ‘well known’ (a traditional term used in Article 6bis of the Paris Convention) and ‘reputation’ denote distinct legal concepts, there is a substantial overlap between them. This is shown by a comparison of how well-known marks are

defined in the WIPO Joint Recommendation Concerning Provision on the Protection of Well-Known Marks with how reputation was described by the Court of Justice in its judgment of 14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 22 (concluding that the different terminology is merely a ‘… nuance, which does not entail any real contradiction …’). In practical terms, the threshold for establishing whether a trade mark is well known or enjoys reputation will usually be the same. Therefore, it will not be unusual for a mark that has acquired well-known character to have also reached the threshold laid down by the Court in Chevy (General Motors) for marks with reputation, given that in both cases the assessment is principally based on quantitative considerations regarding the degree of knowledge of the mark among the public, and that the thresholds required for each case are expressed in quite similar terms (‘known …’ or ‘well known in at least one relevant sector of the public ( )’ for well-known marks, and ‘known by a significant part of the public concerned’ for marks with reputation). This has also been confirmed by case-law. In its judgment of 22/11/2007, C‑328/06, Fincas Tarragona, EU:C:2007:704, the Court qualified the notions of ‘reputation’ and ‘well known’ as kindred concepts, underlining in this way the substantial overlap and relationship between them (para. 17). See also the judgment of 11/07/2007, T‑150/04, Tosca Blu, EU:T:2007:214, § 56-57. The overlap between marks with reputation and registered well-known marks has repercussions when grounds of opposition are raised, in the sense that it should not matter for the applicability of Article 8(5) EUTMR if the opponent calls its earlier registration a well-known mark instead of a mark with reputation. For this reason, the terminology used must be carefully scrutinised, especially where the grounds of the opposition are not clearly explained, and a flexible approach should be taken where appropriate. In the context of Article 8(2)(c) EUTMR, the requirements for applying Article 6bis of the Paris Convention and Article 8(1)(a) or (b) EUTMR are the same, although the terminology used is different. Both provisions require similarity or identity between the goods or services, and similar or identical signs (Article 6bis uses the terms ‘reproduction’, which is equivalent to identity, and ‘imitation’, which refers to similarity). Both Articles also require a likelihood of confusion (‘liable to create confusion’ is the phrase used in Article 6bis). However, while according to Article 8(2)(c) EUTMR a well-known mark can serve as an earlier right and, thus, as the basis of an opposition, the grounds for an opposition under Article 8(2)(c) EUTMR are (solely) Article 8(1)(a) or (b) EUTMR. For example, if the opponent bases the opposition on (i) an earlier registration invoking Article 8(1)(b) EUTMR and Article 8(5) EUTMR and (ii) an identical earlier well-known mark in the same territory under Article 8(2)(c) EUTMR, the earlier right must be examined:

3. under Article 8(2)(c) EUTMR in conjunction with Article 8(1)(b) EUTMR, as an earlier non-registered well-known mark (which will only be useful if registration is not proven, as otherwise the outcome is the same as in bullet point 1). Even if the opponent has not expressly based its opposition on Article 8(5) EUTMR, the contents of the notice and the wording of the explanation of grounds must be carefully analysed with a view to objectively establishing whether the opponent also wants to rely on Article 8(5) EUTMR.

2.2 Applicability to similar and identical goods and services

According to the clear wording of the current version of Article 8(5) EUTMR, the protection provided by this provision is ‘irrespective of whether the goods or services for which [the later mark] is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered’. This is a codification of the case-law of the Court of Justice, interpreting the previous version of the provision (09/01/2003, C‑292/00, Davidoff, EU:C:2003:9).

3 Conditions of Application

The following conditions need be met for Article 8(5) EUTMR to apply (16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, confirmed 10/05/2012, C-100/11 P, Botolist / Botocyl, EU:C:2012:285): 1. earlier registered mark with reputation in the relevant territory; 2. identity or similarity between the contested EUTM application and the earlier mark; 3. use of the sign applied for must be capable of taking an unfair advantage of, or being detrimental to, the distinctiveness or the repute of the earlier mark;

4. such use must be without due cause. These conditions are cumulative and failure to satisfy any one of them is sufficient to render that provision inapplicable (25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 30; 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 34; 16/12/2010, T-345/08 & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). The order in which these requirements are examined may vary depending on the circumstances of each case. For instance, the examination may start by assessing the similarities between the signs, especially where there is little or nothing to say on the subject, either because the marks are identical or because they are patently similar or dissimilar.

3.1 Earlier mark with reputation

3.1.1 Nature of reputation

The nature and scope of reputation are not defined by either the EUTMR or the TMD . Furthermore, the terms used in the different language versions of these texts are not fully equivalent, which has led to considerable confusion as to the true meaning of the term ‘reputation’, as admitted by Advocate General Jacobs in his opinion of 26/11/1998, C-375/97 , Chevy, EU:C:1998:575, § 34-36. Given the lack of statutory definition, the Court defined the nature of reputation by reference to the purpose of the relevant provisions. In interpreting Article 5(2) TMD , the Court held that the text of the TMD ‘implies a certain degree of knowledge of the earlier trade mark among the public’ and explained that it ‘is only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade mark, may possibly make an association between the two trade marks … and that the earlier mark may consequently be damaged’ (14/09/1999, C-375/97 , Chevy, EU:C:1999:408, § 23). In view of these considerations, the Court concluded that reputation is a knowledge threshold requirement , implying that it must be principally assessed on the basis of quantitative criteria. In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (14/09/1999, C-375/97 , Chevy, EU:C:1999:408, § 22-23; 25/05/2005, T-67/04 , Spa-Finders, EU:T:2005:179, § 34). Moreover, if reputation is to be assessed on the basis of quantitative criteria, arguments or evidence relating to the esteem in which the public might hold the mark, rather than to its recognition, are not directly relevant for establishing that the earlier mark has acquired sufficient reputation for the purposes of Article 8(5) EUTMR . However, as the economic value of reputation is also the protected subject-matter of this provision, any qualitative aspects thereof are relevant when assessing the possibility of detriment or unfair advantage (see also paragraph 3.4 below). Article 8(5) EUTMR protects ‘famous’ marks not as such, but rather for the success and renown (‘goodwill’) they have acquired in the market. A sign does not enjoy any reputation inherently, for example, simply because it refers to a renowned person or event, but only for the goods and services it designates and the use that has been made of it.

Case No Comment

All the evidence submitted by the opponent related to the fame of Fernando Alonso as a champion 22/07/2010, R 11/2008-4 , racing driver and to the use of his image by CASAS DE FERNANDO ALONSO (fig.) / different undertakings to promote their goods and FERNANDO ALONSO services. There was no proof of reputation for use of the earlier mark as registered for the relevant goods and services (paras 44 and 48).

The only items of evidence regarding reputation of the earlier mark submitted within the time limit, namely a page showing websites containing the word ‘BALMAIN’, a Wikipedia extract about 03/03/2011, R 201/2010-2 , BALMAIN ASSET the French designer Pierre Balmain, and five MANAGEMENT / BALMAIN (fig.) extracts from the website www.style.com referring to the ‘BALMAIN’ wear collection, were clearly not sufficient to establish the reputation of the earlier mark in the EU. Therefore, the opposition was rejected as unsubstantiated (paras 36 and 37).

3.1.2 Scope of reputation

3.1.2.1 Degree of recognition

Having defined reputation as a knowledge threshold requirement, the question that necessarily follows is how much awareness the earlier mark must attain among the public in order to pass this threshold. The degree of knowledge required must be considered to be reached when the earlier trade mark is known by a significant part of the public, which, however, cannot be determined in advance by reference to a given percentage (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 25-26; 16/11/2011, T‑500/10, Doorsa, EU:T:2011:679, § 45).

By refraining from defining in more detail the meaning of the term ‘significant’ and by stating that the trade mark does not have to be known by a given percentage of the public, the Court in substance advised against the use of fixed criteria of general applicability, since a predetermined degree of recognition may not be appropriate for a realistic assessment of reputation if taken alone.

Hence, in determining whether the earlier mark is known by a significant part of the public, account must be taken not only of the degree of awareness of the mark, but also of any other factor relevant to the specific case. For more about the relevant factors and their interplay, see paragraph 3.1.3.

However, where goods or services concern quite small groups of consumers, the limited overall size of the market means that a significant part thereof is also restricted in absolute numbers. Hence, the limited size of the relevant market should not be regarded in itself as a factor capable of preventing a mark from acquiring a reputation within the meaning of Article 8(5) EUTMR, as reputation is more a question of proportions and less of absolute numbers. The need for the earlier mark to be known by a significant part of the public also serves to mark the difference between the notions of reputation as a necessary condition for the application of Article 8(5) EUTMR and enhanced distinctiveness through use as a factor for evaluating likelihood of confusion for the purposes of Article 8(1)(b) EUTMR. Even though both terms are concerned with the recognition of the mark among the relevant public, in the case of reputation a threshold exists below which extended protection cannot be granted, whereas in the case of enhanced distinctiveness there is no threshold. It follows that in the latter case any indication of enhanced recognition of the mark should be taken into account and evaluated according to its significance, regardless of whether it reaches the limit required by Article 8(5) EUTMR. Therefore, a finding of ‘enhanced distinctiveness’ under Article 8(1)(b) EUTMR will not necessarily be conclusive for the purposes of Article 8(5) EUTMR.

Case No Comment

The documents submitted by the opponent showed promotional efforts in such a way that the distinctiveness was increased through use. However, the use was not enough to reach the 21/04/2010, R 1054/2007‑4, MANDARINO (fig.) / threshold of reputation. None of the documents MANDARINA DUCK (fig.) referred to the recognition of the earlier trade mark by the relevant end consumers; nor was any evidence submitted about the market share of the opponent’s goods (para. 61).

3.1.2.2 Relevant public

In defining the kind of public that should be taken into account for assessing reputation, the Court held that the ‘public amongst which the earlier trade mark must have acquired a reputation is that [public] concerned by that trade mark, that is to say, depending on the product or service marketed, either the public at large or a more specialised public, for example traders in a specific sector’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 24; 25/05/2005, T-67/04, Spa-Finders, EU:T:2005:179, § 34, 41). Hence, if the goods and services covered by the mark are mass consumption products, the relevant public will be the public at large, whereas if the designated

goods have a very specific application or exclusively target professional or industrial users, the relevant public will be limited to the specific purchasers of the products in question.

Case No Comment

Taking into account the nature of the goods for 04/08/2011, R 1265/2010-2, MATTONI (fig.) / which the opponent claims reputation, namely MATTONI mineral water, the relevant public is the public at large (para. 44).

The goods for which the sign enjoys reputation are medicinal preparations for the treatment of 15/09/2011, R 2100/2010-1, SEXIALIS / CIALIS et sexual dysfunction. The relevant public is the al. general public and professionals with a high level of attention (para. 64).

The goods for which the earlier mark enjoys reputation are pharmaceutical preparations for the treatment of wrinkles. The evidence of 16/12/2010, T-345/08 & T-357/08, the promotion of the earlier mark ‘BOTOX’ in Botolist / Botocyl; English in the scientific and general-interest press confirmed 10/05/2012, C-100/11 P, was sufficient to establish the mark’s reputation Botolist / Botocyl amongst both the general public and health-care professionals (C-100/11 P, paras 65 to 67). Therefore, both these categories of consumers have to be taken into account.

In addition to the actual buyers of the relevant goods, the notion of the relevant public extends to the potential purchasers thereof, as well as to those members of the public that only come indirectly into contact with the mark, to the extent that such consumer groups are also targeted by the goods in question, for instance, sports fans in relation to athletic gear, or frequent air-travellers as regards air carriers, etc.

Case No Comment

The relevant services are stock exchange price quotation services in Classes 35 and 36, which normally target professionals. The opponent submitted evidence showing that the mark ‘NASDAQ’ appears almost daily in many newspapers and on many television channels 10/05/2007, T-47/06, Nasdaq, EU:T:2007:131 that can be read/viewed throughout Europe. Therefore, the Board was right to hold that the reputation of the trade mark ‘NASDAQ’ had to be determined for European consumers not only among the professional public, but also in an important subsection of the general public (paras 47 and 51).

The evidence submitted in respect of reputation supports and reinforces the fact that the relevant public for theatre productions is the public at large and not a limited and exclusive circle. The intervener’s activities were advertised, presented and commented on in numerous newspapers targeting the public at large. The intervener toured different regions throughout the United Kingdom and performed before a wide public in the United 06/07/2012, T-60/10, Royal Shakespeare, Kingdom. An activity on a large scale and, hence, EU:T:2012:348 a service offered to the public at large, is reflected both in the high turnover and the high box-office sales. Furthermore, it is clear from the documents submitted by the intervener that the intervener received substantial annual sponsorship income from undertakings in diverse sectors that also reach the public at large, such as banks, undertakings in the alcoholic drinks sector and car manufacturers (paras 35 and 36).

Quite often, a given product will concern various purchaser groups with different profiles, as in the case of multipurpose goods or goods that are handled by several intermediaries before they reach their final destination (distributors, retailers, endusers). In such cases the question arises whether reputation has to be assessed within each separate group or if it should cover all the different types of purchaser. The example given by the Court in its judgment of 14/09/1999, C-375/97, Chevy, EU:C:1999:408 (traders in a specific sector) implies that reputation within one single group may suffice.

Likewise, if the earlier trade mark is registered for quite heterogeneous goods/ services, different segments of the public may be concerned by each type of good/ service, and, therefore, the overall reputation of the mark will have to be assessed separately for each category of goods involved.

The foregoing only deals with the kind of public to be taken into account when assessing whether the earlier mark has reached the threshold of reputation laid down by the Court in Chevy (General Motors). However, a relevant question arises when assessing detriment or unfair advantage, namely whether the earlier mark must also be known to the public concerned by the goods and services of the later mark, since otherwise it is difficult to see how the public will be in a position to associate the two. This issue is discussed in paragraph 3.4 below.

3.1.2.3 Goods and services covered

The goods and services must first of all be those for which the earlier trade mark is registered and for which reputation is claimed.

Case No Comment

The opposition was dismissed since the earlier marks were not registered for the services that, according to the opponent, enjoy a reputation. 28/04/2011, R 1473/2010-1, SUEDTIROL / Article 8(5) EUTMR can only be invoked if the SÜDTIROL (fig.) et al. trade mark affirmed to be well known/renowned is a registered trade mark and if the goods/services for which this reputation/renown is claimed appear on the certificate (para. 49).

The goods and services to which the evidence refers have to be identical (not only similar) to the goods and services for which the earlier trade mark is registered.

Case No Comment

The goods that were assessed to be reputed in Germany by the decision and order referred to only concern articles of skin and body care and children’s cream. These articles are not identical 09/11/2010, R 1033/2009-4, PEPE / bebe to the earlier mark’s goods in Class 3, make-up

products; nail treating products; namely nail lacquer

and remover. Therefore, the opponent did not prove reputation for the earlier German mark in the relevant territories (para. 31).

Where the earlier mark is registered for a wide range of goods and services targeting different kinds of public, it will be necessary to assess reputation separately for each category of goods. In such cases the earlier mark may not have a reputation for all of them, as it may not have been used at all for some of the goods, whereas for others it may not have reached the degree of knowledge necessary for the application of Article 8(5) EUTMR. Hence, if the evidence shows that the earlier mark enjoys a partial reputation, that is, the reputation only covers some of the goods or services for which it is registered, it is only to that extent that this mark may be protected under Article 8(5) EUTMR. Consequently, it is only these goods that may be taken into account for the purposes of the examination.

Case No Comment

The Board concluded that the enhanced distinctiveness and reputation of the earlier marks did not concern the opponent’s G&S, which were considered to be identical or similar to the 14/06/2011, R 1588/2009-4, PINEAPPLE / APPLE contested G&S. For these G&S no enhanced distinctiveness or reputation was proven, with the exception of computer software in Class 9 (para. 43).

The evidence submitted sufficiently demonstrated that the ‘ARENA’ brand was known by a significant part of the relevant public. However, the evidence 10/12/2009, R 1466/2008-2 & R 1565/2008-2, did not include any relevant information that COMMERZBANK ARENA / ARENA et al. could allow the level of brand awareness of the ‘ARENA’ brand in sectors other than swimwear and swimming articles to be determined (paras 58 and 60).

3.1.2.4 Relevant territory

According to Article 8(5) EUTMR, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for national marks the relevant territory is the Member State concerned, whereas for EUTMs the relevant territory is the European Union. In Chevy (General Motors), the Court stated that a national trade mark cannot be required to have a reputation throughout the entire territory of the Member State concerned. It is sufficient if reputation exists in a substantial part of that territory. For the Benelux territory in particular, the Court held that a substantial part thereof may consist

of part of one of the Benelux countries (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 28-29).

The Court has clarified that, for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice.

Case No Comment

The case concerned a European Union trade mark with a reputation throughout Austria. The Court indicated that a European Union trade mark must be known in a substantial part of the EU by a significant part of the public concerned by the 06/10/2009, C-301/07, Pago, EU:C:2009:611 goods or services covered by that trade mark. In view of the facts of the particular case, the territory of the Member State in question (Austria) was considered to constitute a substantial part of the territory of the EU (paras 29 and 30).

In general, however, when evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory.

Case No Comment

Although the evidence submitted showed use of the mark in 17 restaurants in France in 2002, this 21/08/2009, R 1283/2006-4, RANCHO PANCHO figure was considered rather low for a country of 65 (fig.) / EL RANCHO million inhabitants. Therefore, the reputation was not proven (para. 22).

Opponents often indicate in the notice of opposition that the earlier mark has a reputation in an area that extends beyond the territory of protection (e.g. a pan- European reputation is alleged for a national mark). In such a case the opponent’s claim must be examined for the territory of protection only.

Similarly, the evidence submitted must specifically concern the relevant territory. For example, if the evidence relates to Japan, or to undefined regions, it will not be able to prove reputation in the EU or in a Member State. Therefore, figures concerning sales in the EU as a whole, or worldwide sales, are not appropriate for showing reputation in a specific Member State, if the relevant data are not broken down by territory. In other words, a ‘wider’ reputation must also be specifically proven for the relevant territory if it is to be taken into account.

Case No Comment

Most of the documents submitted related to countries outside the European Union, mainly 22/03/2011, R 1718/2008-1, LINGLONG / LL (fig.) China, the opponent’s home country, and other et al. Asian countries. Consequently, the opponent cannot successfully claim to hold a well-known mark in the EU (para. 53).

The respondent maintained in the notice of cancellation that reputation was claimed for the territory of the UK. However, the international 14/06/2010, R 1795/2008-4, ZAPPER-CLICK, registration only designated Spain, France and (appeal dismissed in 03/10/2012, T-360/10, Portugal and, therefore, did not extend to the ZAPPER-CLICK, EU:T:2012:517) territory of the UK. In addition, the respondent did not file any evidence of a reputation in the Member States designated by the international registration (para. 45).

However, where reputation is claimed as extending beyond the territory of protection and there is evidence to this effect, this must be taken into account because it may reinforce the finding of reputation in the territory of protection.

3.1.2.5 Relevant point in time

The opponent must show that the earlier mark had acquired a reputation by the filing date of the contested EUTM application, taking account, where appropriate, of any priority validly claimed. In addition, the reputation of the earlier mark must subsist until the decision on the opposition is taken. However, in principle it will be sufficient for the opponent to show that its mark already had a reputation on the filing/priority date of the EUTM application, while any subsequent loss of reputation is for the applicant to claim and prove. In practice, such an occurrence will be rather exceptional, since it presupposes a dramatic change of market conditions over a relatively short period of time. Where the opposition is based on an earlier application, there is no formal obstacle for the application of Article 8(5) EUTMR, which encompasses earlier applications by reference to Article 8(2) EUTMR. Although, in most cases, the earlier application will not have acquired sufficient reputation in so short a time, it cannot be a priori excluded that a sufficient degree of reputation may be achieved in an exceptionally short period. In addition, the application may be for a mark that was already in use long before the application was filed and has therefore had sufficient time to acquire a reputation. In any event, as the effects of registration are retroactive, the applicability of Article 8(5) EUTMR to earlier applications cannot be regarded as a deviation from the rule that Article 8(5) EUTMR only applies to earlier registrations, as concluded in paragraph 2.1.

In general, the closer to the relevant date the evidence is, the easier it will be to assume that the earlier mark had acquired reputation at that time. The evidential value of a particular document is likely to vary depending on how close the period covered is to the filing date. Evidence of reputation with regard to a later point in time than the relevant date might nevertheless allow conclusions to be drawn as to the earlier mark’s reputation at the relevant date (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 31; 17/04/2008, C‑108/07 P, Ferro, EU:C:2008:234, § 53; 15/12/2005, T‑262/04, Briquet à Pierre, EU:T:2005:463, § 82).

For this reason, the materials submitted with a view to proving reputation must be dated, or at least clearly indicate when the facts attested therein took place. Consequently, undated documents, or documents bearing a date added afterwards (e.g. hand-written dates on printed documents), are not appropriate for giving reliable information about the material time.

Case No Comment

The evidence showed that the mark ‘BRAVIA/ BRAVIA’ was used for LCD televisions in Austria, the Czech Republic, France, Germany, Hungary, Italy, the Netherlands, Poland, Portugal, Slovakia and Turkey. However, none of the documents 15/03/2010, R 55/2009‑2, BRAVIA / BRAVIA were dated. The opponent failed to submit any information regarding duration. Therefore, the evidence, taken as whole, was insufficient to prove reputation in the European Union (paras 27 and 28).

In the Board’s view, a judgment from 1972 was not able to prove enhanced distinctiveness at the time of filing the mark, that is, 20/10/2006. Furthermore, ‘it follows from the decision of the [Court] 09/11/2010, R 1033/2009‑4, PEPE / bebe [21/04/2005, T‑164/03, monBeBé, EU:T:2005:140] that the reputation of the earlier mark has been assessed as from 13 June 1996, i.e. more than ten years before the reputation date to be taken into consideration’ (para. 31).

If the period between the latest evidence of use and the filing of the EUTM application is quite significant, the relevance of the evidence should be carefully assessed by reference to the kind of goods and services concerned. This is because changes in consumer habits and perceptions may take some time to happen, usually depending on the particular market involved.

For instance, the clothing market is strongly tied to yearly seasons and to the different collections presented every quarter. This will have to be taken into account in assessing a possible loss of reputation in this particular field. Likewise, the market

for internet providers and e-commerce companies is very competitive and undergoes rapid growth, as well as rapid demise, which means that reputation in this area may be diluted faster than in other market sectors.

Case No Comment

The appellant failed to prove that its earlier mark was already well known on the application date of the contested mark. The certificates regarding the 17/12/2010, R 883/2009‑4, MUSTANG / MUSTANG reputation of the ‘Mustang designation’ refer neither CALZADOS (fig.) to the ‘Calzados Mustang’ figurative mark asserted by the applicant nor to the time when reputation must be determined (para. 28).

A similar question arises in the case of evidence that post-dates the filing date of the EUTM application. Even though such evidence will not usually be sufficient on its own to prove that the mark had acquired a reputation when the EUTM was filed, it is not appropriate to reject it as irrelevant either. Given that reputation is usually built up over a period of years and cannot simply be switched on and off, and that certain kinds of evidence (e.g. opinion polls, affidavits) are not necessarily available before the relevant date, as they are usually prepared only after the dispute arises, such evidence must be evaluated on the basis of its contents and in conjunction with the rest of the evidence. For example, an opinion poll conducted after the material time but showing a sufficiently high degree of recognition might be sufficient to prove that the mark had acquired a reputation on the relevant date if it is also shown that the market conditions have not changed (e.g. the same levels of sales and advertising expenditure were maintained before the opinion poll was carried out).

Case No Comment

Although the reputation of an earlier mark must be established at the filing date of the contested mark, 16/12/2010, T‑345/08 & T‑357/08, Botolist / documents bearing a later date cannot be denied Botocyl, confirmed 10/05/2012, C‑100/11 P, evidential value if they enable conclusions to be EU:C:2012:285 drawn with regard to the situation as it was on that date (para. 52).

Even if some documents submitted to prove the reputation of the earlier mark bear a date which is e.g. 5 years earlier than the filing date of the contested EUTM, this fact does not deprive 05/10/2020, T-51/19, apiheal (fig.) / APIRETAL, such documents of their evidential value. It cannot EU:T:2020:468 automatically be ruled out that a document drawn up some time before or after the relevant date may contain useful information since the reputation of a trade mark is, in general, acquired progressively (para. 112).

The possibility cannot automatically be ruled out that evidence dated some time before or after the date of filing of the EUTM application may contain useful information in view of the fact that the reputation of a trade mark is, in general, acquired progressively. The same applies to the loss of such a reputation, which is also, in general, lost gradually. The evidential value of such evidence is likely to vary depending on how close the period covered is to the filing date (24/04/2024, T-157/23, Joyful by nature / JOY et al., EU:T:2024:267, § 38; 27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50, § 31; 17/04/2008, C‑108/07 P, Ferro, EU:C:2008:234, § 53). For instance, in the case a ‘historical’ mark that enjoyed a high degree of reputation in the past, even if the mark is no longer used, it cannot be ruled out that it may retain a certain ‘surviving’ reputation (24/04/2024, T-157/23, Joyful by nature / JOY et al., EU:T:2024:267, § 34).

Case No Comment

The press articles submitted proved that there 16/12/2010, T‑345/08 & T‑357/08, Botolist / was significant media coverage of the products Botocyl, confirmed by 10/05/2012, C‑100/11 P, marketed under the trade mark BOTOX on the filing EU:C:2012:285 date of the disputed marks (para. 53).

3.1.2.6 Reputation acquired as part of another mark

Reputation proven for a complex sign refers to that sign as such and not a particular element alone. As an example, the reputation acquired by a figurative mark may, but will not automatically, benefit a word mark with which it is subsequently used. To establish the reputation of a trade mark on the basis of evidence relating to the use and well-known nature of a different trade mark, the former must be included in the latter and play therein ‘a predominant or even significant role’ (21/05/2015, T‑55/13, F1H20 / F1 et al., EU:T:2015:309 § 47). When the earlier mark has been used as part of another mark, it is incumbent on the opponent to prove that the earlier mark has

independently acquired a reputation (12/02/2015, T‑505/12, B, EU:T:2015:95, § 121). The examples below give guidance.

Case No Comment

A 3-D mark may acquire reputation even if it is 28/05/2020, T‑677/18, GULLÓN TWINS COOKIE used together with a word mark, provided that the SANDWICH (fig.) / OREO (fig.) et al., relevant public perceives the goods as originating from the same undertaking (§ 80-82). The word mark ‘Spa’ was used as part of another registration combining the word element with the logo of a pantomime character, as reproduced here 17/03/2015, T‑611/11, Manea Spa, EU:T:2015:152 (Relevant Classes 3, 24, 25, 43 and 44) . The word element occupies a central position in the complex sign, and therefore plays a ‘distinct and predominant’ role.

Case No Comment

On the other hand, in case T‑10/09 it was held that the evidence of reputation referred to the earlier figurative mark ‘F1 Formula 1’

17/02/2011, T‑10/09, F1-Live, EU:T:2011:45; 24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314 and not to the earlier word marks, ‘F1’. Without (Relevant Classes 16, 38 and 41) its particular logotype the text ‘Formula 1’ and its abbreviation ‘F1’ are perceived as descriptive and elements for a category of racing cars or races 21/05/2005, T‑55/13, F1H20 / F1 et al., involving those cars. The reputation was not proven EU:T:2015:309 for the word marks (see paras 53, 54 and 67). (Relevant Classes 9, 25, 38 and 41) In case T‑55/13, the Court held that the reputation with which the complex sign ‘F1’ is associated did not benefit the word element alone, which does not play a ‘predominant or even significant’ role in the earlier figurative mark (see para. 47).

Case No Comment

The same conclusion applies to a ‘winged hourglass’ figurative element used in a complex mark in association with the word ‘Longines’

. The figurative element remains clearly ancillary and in the background in the overall impression 12/02/2015, T‑76/13, QUARTODIMIGLIO QM, conveyed by the complex mark (paras 104 to 106). EU:T:2015:94 The Court found that the opponent had failed to submit opinion polls showing the recognition of the ‘winged hourglass’ logo independently of the word element, and the use of this figurative element alone in a limited number of documents was found insufficient from both a quantitative and qualitative point of view (paras 91 to 93 and para. 112).

Case No Comment

The evidence showed reputation of the earlier word mark ‘ANNA DE CODORNIU’, but that evidence did not prove that the earlier figurative mark

27/06/2019, T‑334/18, ANA DE ALTUN (fig.) / ANNA (fig.) et al., EU:T:2019:451 was reputed on its own (paras 38-39). While a mark may also acquire reputation as a result of its use under a different form, in particular under the form of another registered mark, this is dependent on the condition that the relevant public continues to perceive the goods as originating from the same undertaking (para. 45).

3.1.2.7 Use of the reputed earlier mark as registered

The principles regarding the use of a mark in a form which does not alter its distinctive character as registered apply, mutatis mutandis, in the assessment of the proof of reputation of the earlier mark within the meaning of Article 8(5) EUTMR.

Therefore, where the earlier mark is used in a form that does not alter its original distinctive character, this use would comply with the requirements under Article 8(5)

EUTMR. On the other hand, where a mark is presented in a different form, the existence of differences that alter the distinctive character may rule out a finding that the mark has acquired a reputation on the basis of the different form.

Case No Comment

The earlier figurative mark

was used, inter alia, in the forms reproduced below:

22/01/2025, T-1053/23, MK MICHAEL MICHELE (fig.) / MK MICHAEL KORS et al., EU:T:2025:53 (Relevant Classes 14, 18 and 25) The GC confirmed that the above forms of use of the earlier mark do not alter the distinctive character of the mark in the form in which it was registered. In particular, the omission of the element ‘MK’ would not alter the original distinctive character because it would be perceived as just an abbreviation of the personal name ‘Michael Kors’. The additional word ‘michael’ is merely a repetition of the male forename already contained in the sign, and the difference in size of their elements, their layout and the different colours are not so fanciful that they alter the distinctive character of the sign as it was registered (§ 47-55).

Case No Comment

In this case, the evidence shows that the earlier EU word mark ‘ONE’ was used in combination with the additional word ‘PURINA’, which, being a fanciful, distinctive word, would be an element capable of altering the original distinctive character of the mark 06/11/2024, as registered. In addition, the presence of that word T‑359/23, would also have an impact on the meaning of the THE ONLY ONE, earlier mark because the arrangement ‘PURINA ONE’ would be perceived by the relevant public EU:T:2024:780; as indicating that the element ‘purina’ refers to ‘the (Relevant Classes 5, 31) best’, ‘the number one’ or ‘the first’ in a hypothetical series ‘purina one’, ‘purina two’ and ‘purina three’ (§ 79). Therefore, it cannot be concluded that the earlier mark enjoys a reputation as a result of its use in the form ‘PURINA ONE’.

3.1.3 Assessment of reputation — relevant factors

Apart from indicating that ‘[i]t cannot be inferred from either the letter or the spirit of Article 5(2) of the [TMD] that the trade mark must be known by a given percentage of the public’, the Court also held that all the relevant facts must be considered when assessing the reputation of the earlier mark, ‘in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of investment made by the undertaking in promoting it’ (14/09/1999, C-375/97, Chevy, EU:C:1999:408, § 25, 27). If these two statements are taken together, it follows that the level of knowledge required for the purposes of Article 8(5) EUTMR cannot be defined in the abstract, but should be evaluated on a case-by-case basis, taking into account not only the

degree of awareness of the mark, but also any other fact relevant to the specific

case, that is, any factor capable of giving information about the performance of the mark in the market. The list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark (such as the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the amount spent by the undertaking in promoting it) only serve as examples. The conclusion that the mark enjoys reputation does not necessarily have to be reached on the basis of indications regarding all those factors.

Case No Comment

The opponent provided detailed evidence relating to the intensity, geographical extent and duration of use of its trade mark, Nasdaq, as well as to the amount spent in promoting it, demonstrating that it was known by a significant part of the relevant public. The Court considered that the fact that it did not produce figures regarding market share did not call this finding into question (para. 51). 10/05/2007, T-47/06, Nasdaq, EU:T:2007:131 The Court concluded that, first, the factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serve as examples, as all relevant evidence in the case must be taken into consideration and, second, the other detailed and verifiable evidence produced by the intervener is already sufficient in itself to conclusively prove the reputation of its mark, Nasdaq (para. 52).

Moreover, the relevant factors should be assessed with a view not only to establishing the degree of recognition of the mark amongst the relevant public, but also to ascertaining whether the other requirements related to reputation are fulfilled, for example, whether the alleged reputation covers a significant part of the territory concerned or whether the reputation had indeed been acquired by the filing/priority date of the contested EUTM application. The same kind of test is applied to ascertain whether the trade mark has acquired enhanced distinctiveness through use for the purposes of Article 8(1)(b) EUTMR, or whether the mark is well known within the meaning of Article 6bis of the Paris Convention, since what has to be proven in all these cases is in substance the same, namely the degree to which the mark is known by the relevant public, without prejudice to the threshold required in each case.

3.1.3.1 Trade mark awareness

The statement of the Court that it is not necessary for the mark to be ‘known by a given percentage of the public’, cannot be taken in itself as meaning that figures of trade mark awareness are irrelevant, or should be given a lower probative value, when assessing reputation. It only implies that percentages of awareness defined in the abstract may not be appropriate for all cases and that, consequently, it is not possible to fix a priori a generally applicable threshold of recognition beyond which it should be assumed that the mark is reputed (04/05/1999, C-108/97 & C-109/97, Chiemsee, EU:C:1999:230, § 52; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 24; 16/11/2011, T-500/10, Doorsa, EU:T:2011:679, § 52).

Therefore, even though not expressly listed by the Court among the factors to be taken into account for assessing reputation, the degree of recognition of the mark amongst the relevant public is directly relevant and can be particularly helpful in evaluating whether the mark is sufficiently known for the purposes of Article 8(5) EUTMR, provided of course that the method of its calculation is reliable.

As a rule, the higher the percentage of trade mark awareness, the easier it will be to accept that the mark has a reputation. However, in the absence of a clear threshold, only if the evidence shows a high degree of trade mark awareness, will percentages of recognition be persuasive. Percentages alone are not conclusive. Rather, as explained before, reputation has to be evaluated by making an overall assessment of all the factors relevant to the case. The higher the degree of awareness, the less additional evidence may be required to prove reputation and vice versa.

Case No Comment

The evidence submitted proved that the earlier mark enjoyed a very significant reputation in Sweden for jellies, jams, fruit stews, fruit drinks, concentrates for production of drinks and juice’. According to the survey conducted by TNS Gallup, spontaneous awareness (answers by telephone to the question ‘What brands for — ‘the relevant group of products is mentioned’ — have you 24/02/2010, R 765/2009-1, Bob the Builder heard about or do you know about?’) of the trade (fig.) / BOB et al. mark ‘BOB’ varied between 25 % and 71 %, depending on the goods: apple sauces, jams, marmalades, soft drinks, fruit drinks and fruit juices. Supported awareness (answers to a questionnaire showing the products bearing the mark) varied between 49 % and 90 %, depending on the goods. Furthermore, the market share for 2001 to 2006 averaged 30-35 % in the above product groups (para. 34).

Where the evidence shows that the mark only enjoys a lesser degree of recognition, it should not automatically be assumed that the mark is reputed; this means that, most of the time, mere percentages will not be conclusive in themselves. In such cases, only if evidence of awareness is coupled with sufficient indications of the overall performance of the mark in the market will it be possible to evaluate with a reasonable degree of certainty whether the mark is known by a significant part of the relevant public.

3.1.3.2 Market share

The market share enjoyed by the goods offered or sold under the mark and the position it occupies in the market are valuable indications for assessing reputation, as they both serve to indicate the percentage of the relevant public that actually buys the goods and to measure the success of the mark against competing goods. Market share is defined as the percentage of total sales obtained by a brand in a particular sector of the market. When defining the relevant market sector, the goods and services for which the mark has been used must be taken into account. If the scope of such goods and services is narrower than those for which the mark is registered, a situation of partial reputation arises, similar to the one where the mark is registered for a variety of goods, but has acquired a reputation only for part of them. This means that, in such a case, only the goods and services for which the mark has actually been used and acquired a reputation will be taken into account for the purposes of the examination. Therefore, a very substantial market share, or a leader position in the market, will usually be a strong indication of reputation, especially if combined with a reasonably high degree of trade mark awareness. Conversely, a small market share will in most cases be an indication against reputation, unless there are other factors that suffice on their own to support such a claim.

Case No Comment

‘… the size of the market share of BOTOX in the United Kingdom, 74.3 % in 2003, like the degree of awareness of the trade mark of 16/12/2010, T-345/08 & T-357/08, 75 % among the specialised public accustomed Botolist / Botocyl, confirmed 10/05/2012, to pharmaceutical treatments against wrinkles, C-100/11 P, EU:C:2012:285 is sufficient to substantiate the existence of a considerable degree of recognition on the market’ (para. 76).

Case No Comment

The Court considered that the opponent failed to prove the enhanced distinctiveness or reputation of its earlier trade marks, since the evidence submitted (advertisements, seven letters from a number of advertising directors and a video cassette) did not include adequately substantiated 13/12/2004, T-08/03, Emilio Pucci, EU:T:2004:358 or verifiable objective evidence to make it possible to assess the market share held by the marks Emilio Pucci in Spain, how intensive, geographically widespread and long-standing use of the marks had been, or the amount invested by the undertaking in promoting them (para. 73).

Another reason why a moderate market share will not always be conclusive against reputation is that the percentage of the public that in reality knows the mark may be much higher than the number of actual buyers of the relevant goods. This would be the case, for example, for goods that are normally used by more than one user (e.g. family magazines or newspapers) (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 35-36; 10/05/2007, T-47/06, Nasdaq, EU:T:2007:131, § 47, 51) or for luxury goods, which many may know, but few can buy (e.g. a high percentage of European consumers know the trade mark ‘Ferrari’ for cars, but only few own one). For this reason, the market share proved by the evidence should be assessed taking into account the particularities of the specific market.

Case No Comment

KENZO identifies, in the eyes of the European public, a pre-eminent provider of recognised fashion and luxury items in the form of perfumes, 29/05/2012, R 1659/2011-2, KENZO / KENZO cosmetics and clothing. The relevant public however was considered to be the general public (para. 29).

In certain cases it will not be easy to define the market share of the earlier mark, for example when the exact size of the relevant market cannot be measured accurately, owing to peculiarities of the goods or services concerned.

Case No Comment

The limited presence of the product on the market by no means prevented it from becoming well known by the relevant public. The evidence clearly showed that the trade mark appeared continuously in specialist magazines for the market from December 2003 to March 2007 (the date of 12/01/2011, R 446/2010-1, the EUTM application). That meant that the public TURBOMANIA / TURBOMANIA targeted by the magazines had constant, ongoing exposure to the opponent’s trade mark over a long period covering more than 3 years prior to the relevant date. Such a huge presence in the press specifically targeting the relevant public was more than sufficient evidence that the relevant public was aware of the trade mark (para. 31).

In such cases, other similar indications may be relevant, such as TV audience ratings, as in the case of motor racing and other sporting or cultural events.

Case No Comment

The opponent submitted evidence showing that the mark Nasdaq appeared almost daily, particularly with reference to the Nasdaq indices, in many newspapers and on many television channels that can be read/viewed throughout Europe. The 10/05/2007, T-47/06, Nasdaq, EU:T:2007:131 opponent also submitted evidence of substantial investments in advertising. The Court found reputation proven, even though the opponent did not submit any market share figures (paras 47 to 52).

3.1.3.3 Intensity of use

The intensity of use of a mark may be demonstrated by sales volumes (i.e. the number of units sold) and turnover (i.e. the total value of those sales) attained by the opponent for goods bearing the mark. Usually, the relevant figures correspond to sales in 1 year, but there may be cases where the time unit used is different.

Case No Comment

The documents submitted (press articles, sales figures, surveys) showed that the earlier sign, CIALIS, was intensively used before the filing date of the EUTM application, that the products under the mark CIALIS were marketed in several Member 15/09/2011, R 2100/2010-1, SEXIALIS / CIALIS et States where they enjoyed a consolidated position al. among the leading brands, and that there was a high degree of recognition when compared with the market leader Viagra. Large and constantly growing market share and sales numbers also showed ‘the vast expansion of CIALIS’ (para. 55).

In evaluating the importance of a given turnover or sales volume, account should be taken of how large the relevant market is in terms of population, as this has a bearing on the number of potential purchasers of the products in question. For example, the relative value of the same number of sales will be much bigger, for example, in Luxembourg than in Germany. Moreover, whether or not a given sales volume or turnover is substantial will depend on the kind of product concerned. For example, it is much easier to achieve a high sales volume for everyday mass consumption goods than for luxury or durable products that are bought rarely, without this meaning that in the former case more consumers have come into contact with the mark, as it is likely that the same person has bought the same product more than once. It follows that the kind, value and durability of the goods and services in question should be taken into consideration in determining the significance of a given sales volume or turnover. Turnover and sales figures will be more useful as indirect indications, to be assessed in conjunction with the rest of the evidence, than as direct proof of reputation. In particular, such indications can be especially helpful for completing the information given by percentages as regards market share and awareness, by giving a more realistic impression of the market. For example, they may reveal a very large amount of sales behind a not-so-impressive market share, which may be useful in assessing reputation in the case of competitive markets, where it is in general more difficult for a single brand to account for a substantial portion of the overall sales. By contrast, where the market share of the products for which the mark is used is not given separately, it will not be possible to determine whether a given turnover corresponds to a substantial presence in the market or not, unless the opponent also submits evidence showing the overall size of the relevant market in monetary terms, so that the opponent’s percentage of the market can be inferred.

Case No Comment

Reputation was not sufficiently proven, in particular because none of the documents referred to recognition of the earlier trade mark by the relevant end consumers. Nor was any evidence about the market share of the opponent’s goods submitted. 21/04/2010, R 1054/2007-4, MANDARINO Information about market share is particularly (fig.) / MANDARINA DUCK (fig.) important in the sector in which the opponent had its core business (handbags, transport items, accessories and clothing), as it is ‘a quite atomized and competitive sector’ and ‘there are many different competitors and designers in that product range’ (paras 59 to 61).

This does not mean that the importance of turnover figures or volume of sales should be underestimated, as both are significant indications of the number of consumers that are expected to have encountered the mark. Therefore, it cannot be excluded that a substantial amount of turnover or sales volume may, in certain cases, be decisive for a finding of reputation, either alone, or in conjunction with very little other evidence.

Case No Comment

Although, for reasons of force majeure, it was not possible for the earlier trade mark to become well known by traditional methods, that is, through sales of the product, it did become extremely well known as a result of promotional activities, through the trade mark being extensively, continually and constantly publicised in the specialist press and at 12/01/2011, R 445/2010-1, FLATZ / FLATZ sector fairs, thereby reaching virtually the whole of the three relevant sectors of the public. The limited presence of the product on the market by no means prevented it from becoming well known by the relevant public that, on the relevant date, FLATZ was the trade mark with which the opponent identified its electronic bingo machines (paras 41, 42, 50 and 51).

Case No Comment

The lack of figures regarding market share held by the trade mark ARENA in the relevant countries was not in itself capable of calling the finding of reputation into question. First, the list of factors to be taken into consideration in order to ascertain the reputation of an earlier mark only serves to 10/12/2009, R 1466/2008-2 & R 1565/2008-2, illustrate examples, as all the relevant evidence COMMERZBANK ARENA / ARENA ET AL. in the case must be taken into consideration and, second, the other detailed and verifiable evidence submitted by the opponent is already sufficient in itself to prove conclusively the substantial degree of recognition of the ARENA mark amongst the relevant public (para. 59).

However, as this would deviate from the rule that reputation has to be evaluated by making an overall assessment of all factors relevant to the case, findings of reputation based almost exclusively on such figures should be generally avoided, or at least confined to exceptional cases in which such a finding would really be justified.

3.1.3.4 Geographical extent of use

Indications of the territorial extent of use are mainly useful for determining whether the alleged reputation is widespread enough to cover a substantial part of the relevant territory, within the sense given in paragraph 3.1 above. In this assessment, account should be taken of the population density in the areas concerned, as the critical criterion is the proportion of consumers knowing the mark, rather than the size of the geographical area as such. Similarly, what is important is public awareness of the mark rather than availability of the goods or services. A mark may, therefore, have a territorially widespread reputation on the basis of advertising, promotion, media reports, etc. In general, the more widespread the use, the easier it will be to conclude that the mark has passed the required threshold, whereas any indication showing use beyond a substantial part of the relevant territory will be a positive indicator of reputation. Conversely, a very limited amount of use in the relevant territory will be a strong indication against reputation, as for example where the vast majority of the goods are exported to a third jurisdiction in sealed containers directly from their place of production.

Case No Comment

If the earlier mark were so well known in the 27 Member States of the EU for TV broadcasting and magazines, it should have been easy for the opponent to provide information about ‘the reach of the mark’ just before 2008, when the 26/05/2011, R 966/2010-1, ERT (fig.) / ERT (fig.) EUTM application was filed. The magazine sales figures did not cover the right period. Nor did the documents submitted give any indication of the extent to which the public was aware of the mark (paras 16 and 18).

However, evidence of actual use in the relevant territory should not be regarded as a necessary condition for the acquisition of reputation, as what matters most is knowledge of the mark and not how it was acquired.

Such knowledge may be generated by, for example, intensive advertising prior to the launching of a new product or, in the case of high levels of cross-border shopping, it may be fuelled by a significant price difference in the respective markets, a phenomenon often referred to as ‘territorial spill-over’ of reputation from one territory to another. However, when it is claimed that such circumstances have occurred, the corresponding evidence must demonstrate this. For example, it cannot be assumed, merely because of the principle of free trade in the European Union, that goods put on the market in Member State X have also penetrated the market of Member State Y in significant quantities.

3.1.3.5 Duration of use

Indications of the duration of use are particularly useful for determining the longevity of the mark. The longer the mark has been used in the market, the larger will be the number of consumers that are likely to have encountered it, and the more likely it is that such consumers will have encountered the mark more than once. For example, a market presence of 45, 50 or 100-plus years is considered a strong indication of reputation.

Case No Comment

The evidence submitted showed a particularly impressive duration of use (over 30 years) and 10/12/2009, R 1466/2008‑2 & R 1565/2008‑2, geographical extent of use (over seventy-five COMMERZBANK ARENA / ARENA ET AL. countries worldwide, including the Member States concerned) for the ARENA brand (para. 55).

Case No Comment

29/03/2012, T‑369/10, Beatle, EU:T:2012:177 The Beatles group was considered to be a group (appeal dismissed in 14/05/2013, C‑294/12 P, with an exceptional reputation, lasting for more than EU:C:2013:300) 40 years (para. 36).

The duration of use of the mark should not be inferred by mere reference to the term of its registration. Registration and use do not necessarily coincide, as the mark may have been put to actual use either before or after it was filed. In the end, the decisive element is whether the earlier mark had a reputation at the time of filing of the contested application. Whether that reputation also existed at some earlier point in time is legally irrelevant. Therefore, evidence of continuous use up to the filing date of the application will be a positive indicator of reputation. By contrast, if use of the mark was suspended over a significant period, or if the period between the latest evidence of use and the filing of the EUTM application is quite long, it will be more difficult to conclude that the mark’s reputation survived the interruption of use, or that it subsisted until the filing date of the application (see paragraph 3.1.2.5).

3.1.3.6 Promotional activities

The nature and scale of the promotional activities undertaken by the opponent are useful indications when assessing the reputation of the mark, to the extent that these activities were undertaken to build up a brand image and enhance trade mark awareness among the public. Therefore, a long, intensive and widespread promotional campaign may be a strong indication that the mark has acquired a reputation among the potential or actual purchasers of the goods in question, and that it may actually have become known beyond the circle of the actual purchasers of those goods.

Case No Comment

Evidence of the promotion of BOTOX in English in the scientific and general-interest press was 10/05/2012, C-100/11 P, Botolist / Botocyl sufficient to establish the mark’s reputation amongst both the general public and health-care professionals (paras 65 and 66).

Case No Comment

Although, for reasons of force majeure, it was not possible for the earlier trade mark to become well known by traditional methods, that is, through sales of the product, it did become extremely well known as a result of promotional activities, through the trade mark being extensively, continually and constantly publicised in the specialist press and at 12/01/2011, R 445/2010-1, FLATZ / FLATZ sector fairs, thereby reaching virtually the whole of the three relevant sectors of the public. The limited presence of the product on the market by no means prevented it from becoming well known by the relevant public that, on the relevant date, FLATZ was the trade mark with which the opponent identified its electronic bingo machines (paras 41, 42, 50 and 51).

The opponent’s goods, cosmetics, perfumes and clothing, have been advertised and articles have 29/05/2012, R 1659/2011-2, KENZO / KENZO been written about them in many of the world’s (confirmed, 22/01/2015, T-393/12, EU:T:2015:45, leading fashion-related lifestyle magazines, and in § 57) some of Europe’s leading mainstream periodicals. In line with the case-law, the reputation of KENZO for the said goods is confirmed (para. 29).

Even though it cannot be ruled out that a mark acquires a reputation before any actual use, promotional activities will usually not be sufficient on their own for establishing that the earlier mark has indeed acquired a reputation (see paragraph 3.1.3.4 above). For example, it will be difficult to prove knowledge amongst a significant part of the public exclusively by reference to promotion or advertising, carried out as preparatory acts for the launching of a new product, as the actual impact of publicity on the perception of the public will be difficult to measure without reference to sales. In such situations, the only means of evidence available to the opponent are opinion polls and similar instruments, the probative value of which may vary depending on the reliability of the method used, the size of the statistical sample, etc. (for the probative value of opinion polls, see paragraph 3.1.4 below).

The impact of the opponent’s promotional activities may be shown either directly, by reference to the amount of promotional expenditure, or indirectly, by way of inference from the nature of the promotional strategy adopted by the opponent and the kind of medium used for advertising the mark.

For example, advertising on a nationwide TV channel or in a prestigious periodical should be given more weight than campaigns of a regional or local scope, especially if coupled with high audience or circulation figures. Likewise, the sponsoring of

prestigious athletic or cultural events may be a further indication of intensive promotion, as such schemes often involve a considerable investment.

Case No Comment

It is apparent from Ferrero’s various advertising campaigns on Italian television (including Rai) that 22/01/2010, R 1673/2008-2, FIESTA / FIESTA (fig.) the earlier mark was widely exposed to viewers in ET AL. 2005 and 2006. Many of these spots appear to have been broadcast at peak viewing times (e.g. during Formula 1 Grand Prix coverage) (para. 41).

Furthermore, the contents of the advertising strategy chosen by the opponent can be useful for revealing the kind of image the opponent is trying to create for its brand. This may be of particular importance when assessing the possibility of detriment to, or unfair advantage being taken of, a particular image allegedly conveyed by the mark, since the existence and contents of such an image must be abundantly clear from the evidence submitted by the opponent (see paragraph 3.4 below).

Case No Comment

The opponent’s trade mark is not only known per se but, due to the high price of sports cars and the 11/01/2011, R 306/2010-4, opponent’s intensive expenditure on advertising, CARRERA / CARRERA, and against the background of its successes in (under appeal, 27/11/2014, T-173/11, Carrera / racing, the public associates it with an image CARRERA, EU:T:2014:1001) of luxury, high technology and high performance (para. 31).

3.1.3.7 Other factors

The factors listed above are only indicative. All the facts relevant to the particular case must be taken into consideration when assessing the reputation of the earlier mark (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 27). Other factors may be found in case-law or in WIPO’s Joint Recommendation. Therefore, depending on their relevance in each case, the following factors may be added: record of successful enforcement; number of registrations; certification and awards; and the value associated with the mark. Record of successful enforcement Records of successful enforcement of a mark against dissimilar goods or services are important because they may demonstrate that, at least in relation to other traders, there is acceptance of protection against dissimilar goods or services.

Such records may consist of the successful prosecution of complaints outside the courts, such as the acceptance of cease and desist requests, delimitation agreements in trade mark cases, etc. Furthermore, evidence showing that the reputation of the opponent’s mark has been repeatedly recognised and protected against infringing acts by decisions of judicial or administrative authorities will be an important indication that the mark enjoys a reputation in the relevant territory, especially where such decisions are recent. That effect may be reinforced when there is a substantial number of decisions of this kind (on the probative value of decisions, see paragraph 3.1.4.4). This factor is mentioned in Article 2(1)(b)(5) of WIPO’s Joint Recommendation. Number of registrations The number and duration of registrations and applications for the mark around Europe or the world is also relevant, but is in itself a weak indication of the degree of recognition of the sign by the relevant public. The fact that the opponent has many trade mark registrations and in many classes may indirectly attest to the international circulation of the brand, but cannot decisively prove a reputation in itself. This factor is mentioned in Article 2(1)(b)(4) of the WIPO Joint Recommendation, where the need for actual use is made clear: the duration and geographical area of any registrations, and/or any applications for registration, of the mark are relevant ‘to the extent that they reflect use or recognition of the mark’. Certification and awards Certification, awards, and similar public recognition instruments usually provide information about the history of the mark, or reveal certain quality aspects of the opponent’s products, but as a rule they will not be sufficient in themselves to establish reputation and will be more useful as indirect indications. For example, the fact that the opponent has been a holder of a royal warrant for many years may perhaps show that the mark invoked is a traditional brand, but cannot give first-hand information about trade mark awareness. However, if the certification concerns facts that are related to the performance of the mark, its relevance will be much higher. This factor is mentioned by the Court in Lloyd Schuhfabrik (Lloyd Schufabrik Meyer) and Chiemsee (Windsurfing Chiemsee) in relation to the assessment of enhanced distinctiveness through use.

Case No Comment

The new evidence submitted by the appellant and accepted by BoA shows that the earlier mark had consistently been granted a high brand rating as well as prizes in surveys carried out by specialised 14/06/2012, R 1637/2011‑5, made by APART since companies in Poland between 2005 and 2009 1975 / Apart et al. (para. 30). It was therefore considered that the appellant successfully proved reputation in Poland for jewellery, but did not prove reputation for the other goods and services covered by its earlier signs.

The value associated with the mark The fact that a mark is solicited by third companies for reproduction on their products, either as a trade mark, or as mere decoration, is a strong indication that the mark possesses a high degree of attractiveness and an important economic value. Therefore, the extent to which the mark is exploited through licensing, merchandising and sponsoring, as well as the scale of the respective schemes, are useful indications in assessing reputation. This factor is mentioned in Article 2(1)(b)(6) of the WIPO Joint Recommendation.

3.1.4 Proof of reputation

3.1.4.1 Burden of proof and required standard of proof

According to the second sentence of Article 95(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the facts, evidence and arguments provided by the parties. Therefore, when assessing whether the earlier mark has a reputation, the Office cannot take into account facts known to it as a result of its own private knowledge of the market, nor can it conduct an ex officio investigation. At the same time, Article 7(2)(f) EUTMDR provides that the burden of putting forward and providing the relevant facts lies with the opponent, by expressly requiring it to provide evidence attesting that the earlier mark has a reputation for the goods and services claimed. Therefore, as confirmed by the Court, reputation of the earlier mark cannot be considered to be a well-known fact, and the burden of proof rests on its owner (05/10/2022, T‑711/20, CMS Italy (fig.) / PUMA (fig.) et al., EU:T:2022:604 § 83). Whether or not a mark has acquired a reputation requires a legal evaluation of several factual indications. In particular, qualitative aspects of the reputation, such as a specific image associated with the reputed mark, may only be assessed on the basis of specific pertinent evidence. The opponent must submit evidence enabling the Office to reach the positive conclusion that the earlier mark has acquired a reputation in the relevant territory.

The wording used in Article 8(5) EUTMR and Article 7(2)(f) EUTMDR is quite clear in this respect: the earlier mark deserves enlarged protection only if it ‘has a reputation’. It follows that the evidence must be clear and convincing, in the sense that the opponent must clearly establish all the facts necessary to safely conclude that the mark is known by a significant part of the public. The reputation of the earlier mark must be established to the satisfaction of the Office and not merely assumed (05/10/2022, T‑711/20, CMS Italy (fig.) / PUMA (fig.) et al., EU:T:2022:604 § 84).

3.1.4.2 Evaluation of the evidence

The following guidance concerns the particularities of taking evidence for proving reputation of an earlier mark and, as such, completes the general information on filing evidence provided in the Guidelines, Part A, Section 10, Evidence. The basic rules on the evaluation of evidence are also applicable here: the evidence should be assessed as a whole, that is, each indication should be weighed up against the others, with information confirmed by more than one source generally being considered more reliable than facts derived from isolated references. Indeed, the more independent, reliable and well-informed the information source is, the higher the probative value of the evidence will be. Therefore, information deriving directly from the opponent is unlikely to be enough on its own, especially if it only consists of opinions and estimates instead of facts, or if it is of an unofficial character and lacks objective confirmation, for example, when the opponent submits internal memoranda or tables with data and figures of unknown origin.

Case No Comment

The content of the documentation submitted does not clearly demonstrate that the earlier marks enjoy a reputation. The documentation emanates, in the main, from the respondent directly and contains 29/04/2010, R 295/2009‑4, PG PROINGEC information taken from its trade catalogues, its CONSULTORIA (fig.) / PROINTEC (fig.) et al. own advertising and documents downloaded from its website. There is insufficient documentation or information from third parties to reflect clearly and objectively what precisely the respondent’s position on the market is. Reputation not proved (para. 26).

Case No Comment

As regards documents in the case file that come from the company itself, the General Court has held that, to assess the evidential value of such a document, account should be taken first and foremost of the credibility of the account it 16/11/2011, T‑500/10, Doorsa, EU:T:2011:679 contains. The General Court added that it is then necessary to take account of the person from whom the document originates, the circumstances in which it came into being, the person to whom it was addressed and whether, prima facie, the documents appear sound and reliable (para. 49).

However, if such information is publicly available or has been compiled for official purposes and contains information and data that have been objectively verified, or reproduces statements made in public, its probative value is generally higher. Regarding its contents, the more indications the evidence gives about the various factors from which reputation may be inferred, the more relevant and conclusive it will be. In particular, evidence that, as a whole, gives little or no quantitative data and information will not be appropriate for providing indications about vital factors, such as trade mark awareness, market share and intensity of use and, consequently, will not be sufficient to support a finding of reputation. However, an accumulation of items of evidence may allow the necessary facts to be established, even though each of those items of evidence, taken individually, would be insufficient to constitute proof of the accuracy of those facts (05/10/2022, T‑711/20, CMS Italy (fig.) / PUMA (fig.) et al., EU:T:2022:604 § 85). In addition, only the evidence that clearly and specifically relates to the reputation of that particular mark is to be taken into account, not other evidence which relates to other marks, whether or not they are similar, to various degrees, to the earlier mark relied on (05/10/2022, T‑711/20, CMS Italy (fig.) / PUMA (fig.) et al., EU:T:2022:604 § 93). Reputation acquired as part of another mark or reputation acquired through use of the mark in a form that does not alter its distinctive character can be taken into account subject to the requirements under points 3.1.2.6 and 3.1.2.7.

3.1.4.3 Means of evidence - particularities for proving reputation

The opponent may avail itself of all the means of evidence listed under Article 97(1) EUTMR. In any event, the opponent is free to choose the form of evidence that it considers useful to submit (26/06/2019, T‑651/18, HAWKERS (fig.) / HAWKERS (fig.) et al., EU: T:2019:444, § 35).

The following means of evidence can be pertinent to prove reputation (this list does not reflect their relative importance or probative value): 1. affidavits; 2. decisions of courts or administrative authorities; 3. decisions of the Office; 4. opinion polls and market surveys;

5. audits and inspections;

6. certification and awards;

7. articles in the press or in specialised publications;

8. annual reports on economic results and company profiles;

9. invoices and other commercial documents; 10.advertising and promotional material; 11.evidence of a presence and activity on the internet. For further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 4, Specific means of evidence. Affidavits The weight and probative value of affidavits is determined by the general rules the Office applies when assessing such evidence. In particular, both the capacity of the person giving the evidence and its relevance to the particular case must be taken into account. For further details on the weight and probative value of affidavits, see the Guidelines,Part A, General rules, Section 10, Evidence, paragraph 4.2, Affidavits and Part C, Opposition, Section 7, Proof of use. Decisions of courts or administrative authorities Opponents often invoke decisions of national authorities or courts that have accepted the reputation of the earlier mark. Even though national decisions are admissible evidence and may have evidentiary value, especially if they originate from a Member State where the territory is also relevant for the opposition concerned, they are not binding for the Office, in the sense that it is not mandatory for the Office to follow their conclusion.

Case No Comment

As far as judgments of Spanish courts are concerned, the European Union trade mark system 17/12/2010, T‑192/09, Seve Trophy, EU:T:2010:553 is an autonomous system, consisting of a set of rules and objectives that are specific and applied independently of any national system (para. 79).

Since such decisions may serve to indicate reputation and to record successful enforcement of the mark, their relevance should be addressed and examined. Consideration should be given to the type of proceedings involved, to whether the issue was in fact reputation within the sense of Article 8(5) EUTMR, to the level of the court, and to the number of such decisions.

Case No Comment

Decisions of the UK national office relating to the reputation of BOTOX are facts that may, if 10/05/2012, C‑100/11 P, Botolist / Botocyl, relevant, be taken into account by the General EU:C:2012:285 Court, despite the EUTM owners not being parties in those decisions (para. 78).

There might be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Firstly, there may be differences as to how the requirement of reputation is defined or interpreted. Secondly, the weight the Office gives to the evidence is not necessarily the same as the weight given to it in national proceedings. Furthermore, national instances may be able to take into account ex officio facts known to them directly, whereas, under Article 95 EUTMR, the Office may not. Consequently, the probative value of national decisions should be assessed on the basis of their contents, including the specific evidence submitted by the parties, and may vary depending on the case. For further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 3.2, References to national office and court decisions, and decisions of the Office. Office decisions The opponent may also refer to earlier Office decisions, on condition that such a reference is clear and unambiguous, and that the language of the proceedings is the same (28/06/2018, C‑564/16 P, DEVICE OF A JUMPING ANIMAL (FIG. MARK) / PUMA (FIG. MARK) et al., EU:C:2018:509, § 69). Reference to Puma case-law (not mentioned in Part A General Rules, Section 10 Evidence). Otherwise, the opponent must also file a translation of the decision within the 4-month period for filing further facts, evidence and arguments, in order to allow the applicant to exercise its right of defence. When they are properly identified, the Office is required to take into account those decisions and to consider whether or not it should decide upon reputation in the same way and, if not, to provide an explicit statement of its reasoning for departing from those decisions, stating why they are no longer relevant (22/05/2019, T-161/16, CMS Italy (fig.) / PUMA (fig.) et al., EU:T:2019:350, § 46). As regards the relevance and probative value of previous Office decisions, the same rules as for national decisions apply. Even where the reference is admissible and the decision is relevant, the Office is not bound to come to the same conclusion and must examine each case on its own merits. Recognition of the reputation of an earlier mark cannot depend on prior recognition in the context of separate proceedings concerning the parties and different legal and factual elements (e.g., time and territory of the reputation). It is therefore for any party relying on the reputation of its earlier mark to establish, in the circumscribed context of each set of proceedings to which it is a

party and on the basis of the facts that it considers most appropriate, that that mark has acquired a reputation; it cannot merely claim to adduce that evidence by virtue of its having been recognised, even for the same mark, in a separate administrative procedure (23/10/2015, T‑597/13, dadida (fig.) / CALIDA, EU:T:2015:804, § 43-45). It follows that previous Office decisions only have a relative probative value and should be evaluated in conjunction with the rest of the evidence, especially where the opponent relies on a previous Office decision without referring to particular materials filed in the corresponding proceedings, that is, where the applicant has not had a chance to comment on such materials, or where the time that has elapsed between the two cases is quite long. The situation may be different if the evidence to which the opponent refers had been submitted in other proceedings between the same parties and the applicant had been aware of the evidence concerning the reputation of an earlier mark (22/01/2015, T‑322/13, KENZO, EU:T:2015:47, § 18). For further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 3.2, References to national office and court decisions, and decisions of the Office. Opinion polls and market surveys Opinion polls and market surveys are the most suitable means of evidence for providing information about the degree of knowledge of the mark, the market share it has, or the position it occupies in the market in relation to competitors’ goods. The probative value of opinion polls and market surveys is determined by the status, expertise and impartiality of the entity conducting it, by the relevance and accuracy of the information it provides, and by the reliability of the method applied. Opinion polls and market surveys that fulfil these requirements will be a strong indication of reputation, especially if they show a high degree of trade mark awareness. For information on the evaluation of the probative value of an opinion poll or market survey, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 4.3, Opinion polls and market surveys. Audits and inspections Audits and inspections of the opponent’s undertaking may provide useful information about the intensity of use of the mark, as they usually comprise data on financial results, sales volumes, turnover, profits, etc. However, this evidence will be pertinent only if it specifically refers to the goods sold under the mark in question, rather than to the opponent’s activities in general. For further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 4.4, Audits. Certification and awards This kind of evidence includes certification and awards by public authorities or official institutions, such as chambers of commerce and industry, professional associations and societies, consumer organisations, etc.

For further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 4.7, Certifications, rankings and awards. Articles in the press or in specialised publications The probative value of press articles and other publications concerning the opponent’s mark mainly depends on whether such publications are merely promotional, or if, on the contrary, they are the result of independent and objective research. Details on the distribution of the relevant material (e.g., the number of copies circulated or downloaded, or number of visitors to a webpage) indicating that the relevant public has been exposed to the earlier mark at the relevant time increase the probative value of such evidence. In addition, the more independent the publications are, the higher their evidentiary weight. For further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 4.8, Promotional materials and publications. Annual reports on economic results and company profiles This type of evidence includes all kinds of internal publications giving varied information about the history, activities and perspectives of the opponent’s company, or more detailed figures about turnovers, sales, advertising, etc. For further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 4.5, Annual reports on economic results and company profiles. Invoices and other commercial documents All kinds of commercial documents may be grouped under this heading, such as invoices, order forms, distribution and sponsoring contracts, samples of correspondence with clients, suppliers or associates, etc. Documents of this sort may provide a great variety of information on intensity of use, geographical extent and duration of use of the mark (for further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 4.6, Invoices and other commercial documents). Even though the relevance and credibility of commercial documents is not disputed, it will generally be difficult to prove reputation on the basis of such materials alone, given the variety of factors involved and the volume of documents required. Furthermore, evidence relating to distribution or sponsoring contracts and commercial correspondence are more appropriate for giving indications about the geographical extent or promotional side of the opponent’s activities, than for measuring the success of the mark in the market, and thus may only serve as indirect indications of reputation.

Case No Comment

The evidence submitted shows a high level of recognition of the mark on the Spanish market. The total invoices on the Spanish tin-loaf market in 2004 amounted to EUR 346.7 million, 14/04/2011, R 1272/2010‑1, GRUPO BIMBO (fig.) / of which the opponent’s invoices amounted to BIMBO et al. EUR 204.9 million. The invoices submitted cover (08/07/2015, T‑357/11, GRUPO BIMBO (fig.) / advertisements on TV, as well as in newspapers BIMBO et al., EU:T:2015:534) and magazines. Therefore, the reputation of ‘BIMBO’ in Spain for industrially produced bread has been substantiated (para. 64). The Court did not address this point.

Advertising and promotional material

This kind of evidence may take various forms, such as press cuttings, advertising spots, promotional articles, offers, brochures, catalogues, leaflets, etc. In general, such evidence cannot be conclusive of reputation on its own, due to the fact that it cannot give much information about actual trade mark awareness.

However, some conclusions about the degree of exposure of the public to advertising messages concerning the mark may be drawn by reference to the kind of medium used (national, regional, local) and the audience rates or circulation figures attained by the relevant advertising spots or publications – if, of course, this kind of information is available.

Case No Comment

The documents submitted show that the device of a black rooster has acquired reputation and will be associated with wines from the Chianti Classico region. The opponent provided several copies of advertisements in newspapers and magazines, showing its promotional activity, as well as independent articles displaying a black rooster in connection with the Chianti Classico 10/01/2011, R 43/2010‑4, FFR (fig.) / CONSORZIO region. However, given that the reputation only VINO CHIANTI CLASSICO (fig.) pertains to the device of a black rooster and given that this device is only one part of the earlier marks, (05/12/2012, T‑143/11, F.F.R., EU:T:2012:645) serious doubts arise about whether reputation can be attributed to the marks as a whole. Moreover, for the same reason, doubt also arises about which marks the reputation could be attributed to, given that the opponent owns several marks. (paras 26 and 27). The Court did not assess the evidence on reputation.

In addition, such evidence may give useful indications of the kind of goods covered, the form in which the mark is actually used and the kind of image the opponent is trying to create for its brand. For example, if the evidence shows that the earlier registration for which reputation is claimed covers a device, but in fact this device is used in combination with a verbal element, it would not be correct to accept that the device itself has a reputation. Rather, it should be assessed whether the reputation extends to the device. For that purpose, it is important to assess whether the device plays a predominant or even significant role when used in combination with the verbal element, and has acquired a reputation in itself. This has to be assessed on a case-by-case basis. See example judgments in paragraph 3.1.2.6.

For further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 4.8, Promotional materials and publications.

Evidence of a presence and activity on the internet

As a consequence of the growing importance of information technologies and the internet to personal, social and economic life, parties are increasingly relying on evidence originating from the internet to show the use and reputation of their marks. However, it must be clarified that a mere reference to a website (even if by a direct hyperlink) where the Office can find further information is insufficient.

For further information, see the Guidelines, Part A, General rules, Section 10, Evidence, paragraph 4.1, Online evidence.

3.2 The similarity of the signs

Similarity or identity between the signs is a precondition for the application of both Article 8(1)(b) and Article 8(5) EUTMR. Accordingly, a finding of dissimilarity precludes both the application of Article 8(1)(b) and 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66). It is not apparent either from the wording of those provisions or from the case-law that the similarity between the marks at issue must be assessed in a different way. Accordingly, similarity should be assessed according to the same criteria that apply in the context of Article 8(1)(b) EUTMR, thus taking into account elements of visual, aural or conceptual similarity (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 52, 54). See the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 4, Comparison of Signs. However, those provisions differ in terms of the degree of similarity required. Whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is, to establish a link between them. If there is some similarity, even faint, between the marks, a global assessment must be carried out to ascertain whether, notwithstanding the low degree of similarity, other relevant factors such as the reputation or recognition enjoyed by the earlier mark serve to establish a link between the marks (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53, 66; 20/11/2014, C‑581/13 P & C‑582/13 P, Golden balls, EU:C:2014:2387, § 72). While a lesser degree of similarity between the marks may suffice to establish a link and a risk of injury, this is not a factor that affects the comparison of the marks. The purpose of the comparison is to establish whether the marks are similar or not, and, if so, determine their degree of similarity. At this stage, there should be no discussion as to whether the degree found is sufficient for Article 8(5) EUTMR to apply. This has to be examined later, when assessing the link between the marks and the risk of injury. The following case-law examples illustrate the degree of similarity required for the purposes of applying Article 8(5) EUTMR.

Earlier mark Contested mark Case No

11/12/2014, T‑480/12, MASTER, EU:T:2014:1062

G&S: Class 29, 30, 32 Territory: EU Assessment: The earlier mark is reputed for non-alcoholic drinks. While there are clear visual differences between the marks, there are also elements of visual similarity. The marks each have a ‘tail’ flowing from their first letters in a signature flourish. Moreover, they use the same font type, the Spenserian script, which is not commonly used in contemporary business. Given the degree of similarity, however faint, between those marks, it is not altogether inconceivable that the relevant public could make a link between them and, even if there is no likelihood of confusion, be led to transfer the image and the values of the earlier mark to the goods bearing the contested mark (paras 46-48, 57, 74).

Earlier mark Contested mark Case No

01/02/2018, T‑105/16, Raquel Superior Quality Cigarettes FILTER CIGARETTES (fig.) / FILTER CIGARETTES PM Marlboro 20 CLASS A CIGARETTES (fig.) et al., EU:T:2018:51

G&S: Class 34 Territory: EU Assessment: Since Article 8(5) EUTMR merely requires the similarity that exists to be capable of leading the relevant public to make a connection between the signs at issue, that is to say, to establish a link between them, but does not require that similarity to be capable of leading that public to confuse those signs, the protection that provision lays down in favour of marks with a reputation may apply even if there is a lower degree of similarity between the signs at issue (para. 75).

Earlier mark Contested mark Case No

16/01/2018, T‑398/16, COFFEE ROCKS (fig.) / STARBUCKS COFFEE (fig.) et al., EU:T:2018:4

G&S: Class 43 Territory: EU Assessment: The earlier mark is claimed to be reputed for coffee and cafeteria services.The marks have the same general appearance, in as much as they are circular devices consisting of a figurative element placed in the centre and a surrounding broad band with word elements of identical structures and two smaller white figurative elements; they use the same colours (black and white) and font type; they share the word ‘coffee’, which, despite its descriptive character, is an important similarity factor, especially considering the claim of reputation. Phonetically, the signs are similar due to the presence of the word ‘coffee’ and because the ending ‘rocks’ is phonetically similar to the ending ‘bucks’, particularly on account of the relevant English-speaking public’s pronunciation of the letters ‘o’ and ‘u’. Conceptually, the relevant public will associate both marks with the concept of a ‘coffee house’ due to the general appearance of the marks and the presence of the word ‘coffee’ in both of them (paras 51-64).

3.3 The link between the signs

The types of injury under Article 8(5) EUTMR, where they occur, are the consequence of a certain degree of similarity between the earlier and later marks, by virtue of which the relevant section of the public makes a connection between those two marks, that is to say, establishes a link between them even though it does not confuse them (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 30, and the case-law cited therein). Therefore, before the examination of any risk of injury, it must be assessed whether the relevant public will establish a link between the marks , namely, whether the contested mark would, in the context of the contested goods and services, bring the earlier reputed mark to mind. Where a link between the marks is not found, there is no risk of injury (13/12/2023, T-56/23, A´PEAL / APIRETAL et al., EU:T:2023:798, § 50). As established by the Court, the link between the marks must be appreciated globally, by taking into acount all the relevant factors, in particular the following (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42). The strength of the reputation of the earlier mark.

The degree of similarity between the conflicting marks. The more similar they are,

the more likely it is that the later mark will bring the earlier reputed mark to the mind of the relevant public (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 26 and, by analogy, 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 44). The nature of the goods or services for which the earlier mark is reputed and the

later mark seeks registration. This defines the relevant public and the proximity of the market sectors concerned by the goods and services.

The degree of similarity or the dissimilarity between the goods and services, and

any overlap between the relevant public concerned by those goods and services. The goods or services may be so remote that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 49). It must nevertheless be remembered that one of the key features of Article 8(5) EUTMR is that it provides protection also against dissimilar goods and services. The degree of distinctive character of the earlier reputed mark, whether inherent or

acquired through use. The more inherently distinctive the prior mark, the more likely it will be brought to a consumer’s mind when encountering a similar (or identical) later mark. Conversely, the less inherently distinctive the earlier mark is, the more difficult it may prove to establish a link. The existence of likelihood of confusion on the part of the public.

This list is not exhaustive, and a link between the marks at issue may be established or excluded on the basis of only some of those criteria. The question of whether the relevant public will establish a link between the marks must be answered in the light of the facts and circumstances of each case and the evidence and arguments provided by the parties, which then need to be weighed up. Even a faint similarity between the signs (which might not be sufficient for a finding of likelihood of confusion under Article 8(1)(b) EUTMR) calls for the assessment of whether a link between the signs will be established in the mind of the relevant public (11/12/2014, T‑480/12, MASTER, EU:T:2014:1062, § 74). Moreover, a lack of coherent reasoning by the opponent is not sufficient reason for dismissing the claim where the relevant factors for the assessment indicate that a link will be made (factors such as the degree of reputation, the relationship between the signs, the proximity of the market sectors, an overlap of the relevant public). The link will be more difficult to establish in cases where the market sectors concerned by the goods and services are remote, in the sense that a connection between the respective segments of the public is not obvious. In such situations, the opponent must justify why the marks will be associated, by reference to some other connection between its activities and those of the applicant, for example where the earlier mark is exploited outside its natural market sector, for instance, by licensing or merchandising. In addition, when the contested mark is used in a commercial context which is fundamentally different from that in which the earlier mark has a reputation, a link between the marks is less likely when the earlier reputed mark consists of word elements with an established semantic content. This is because when the relevant public is confronted with those word elements in a different commercial context, it may associate them with their original meaning rather than with the earlier reputed mark. It follows that earlier marks composed of meaningless words have more capacity to create a link in the mind of the public (04/12/2024, T‑11/24, LaZZarO by Li Puma (fig.) / PUMA (fig.) et al., EU:T:2024:873, § 45). The fact that the goods and services designated by the marks at issue belong to distant sectors of trade is not, in itself, sufficient to exclude the possibility of the existence of a link. The specific reputation of the earlier mark (including qualitative aspects, such as

a particular image, lifestyle, or particular circumstances of marketing that have become associated with the reputation of the mark) and the degree of similarity between the marks could make it possible for the image of the reputed mark to be transferred to the contested mark notwithstanding the distance between the relevant market sectors. However, where the goods and services designated by the marks address the general public on the one hand, and a specialised public on the other, the mere fact that members of the specialised public are necessarily part of the general public is not conclusive as to the existence of a link. The fact that a specialised public may be familiar with the earlier mark covering goods or services aimed at the general public, is not sufficient to demonstrate that that specialised public will establish a link between the marks at issue (26/09/2018, T‑62/16, PUMA (fig.) / PUMA (fig.) et al., EU:T:2018:604, § 45-46). If the earlier mark is an EUTM, it is true that reputation shown in the territory of a single Member State may suffice to prove the reputation of an EUTM (06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 29-30). This does not amount, however, to conferring the EUTM with reputation throughout the EU (as opposed to in the EU) and, consequently, conferring the EUTM with its full scope of protection throughout the EU. The link has to be assessed from the perception of the actual public for which the earlier EUTM has been found to be reputed because only this public, which is familiar with the EUTM, can possibly make a connection between the marks (03/09/2015, C‑125/14, Be impulsive / Impulse, EU:C:2015:539, § 29, 34). In any event, if a link cannot be established in a part of the EU where the earlier EUTM is known by a commercially pertinent part of the relevant public, it would be incorrect to find a link in another part of the EU where the earlier mark is not known merely, for example, on the basis that the marks would be perceived to be more similar (e.g. due to linguistic reasons, leading to lack of conceptual differences or to a higher degree of distinctive character of the overlapping element). The existence of a family of marks is also a factor to be taken into account in assessing the establishment, on the part of the relevant public, of a link between the marks at issue (05/07/2016, T‑518/13, MACCOFFEE, EU:T:2016:389, § 73). Examples where a link was found between the signs The following are examples where it was found that the degree of similarity between the signs (together with further factors) was sufficient to conclude that consumers would establish a link between them.

Earlier mark Contested mark Case No

VERLEIHT FLÜGEL RED BULL VERLEIHT FLÜGEL 28/04/2021, T‑509/19, Flügel / ... FLÜÜÜGEL Verleiht Flügel et al, EU:T:2021:225, § 109, 111, 115 Reputed for energy drinks in Classes 32, 33 Class 32 The Court found that there is proximity between the goods (§ 114, 115), but also weighed up all other factors such as taking into account the inherent distinctiveness of the earlier mark (§ 117, 125 ... it cannot be ruled out that the consumer will establish a link between, on the one hand, a slogan and, on the other hand, a single word of that slogan which is used as a trade mark by a third party, as in the present case between the slogan ‘… verleiht flügel’ and the word ‘flügel’ covered by the contested mark).

Earlier mark Contested mark Case No

21/12/2022, T‑44/22, DEVICE OF A PACK OF CIGARETTES (fig.)/ Marlboro (fig.) et al., EU:T:2022:843

Reputed for goods in Class 34 Class 34 Although the signs have a low degree of visual similarity, the earlier mark has a substantial reputation and enhanced distinctiveness acquired through use (§ 53); considering the identity or similarity of the goods at issue and the identity of the public concerned as well, there is a link between the marks (§ 54-55). The visual aspects are significant, since the goods at issue are not only identified by name, but also need to be inspected visually during a purchase (§ 55). Consequently, all factors were weighed up in the assessment of the link.

Earlier mark Contested mark Case No

TWITTER 16/03/2012, R 1074/2011‑5 , Twitter (fig.) / TWITTER

Reputed for services in Classes 14, 18 and 25 Classes 38, 42 and 45, inter alia,

a website for social networking

The contested goods such as t-shirts, key chains, watches, hand bags, jewellery, caps, etc., are very frequently used for marketing means or merchandising products bearing trade marks that relate to entirely distinct goods and services. Due to the strong reputation of the earlier mark, the relevant consumer would inevitably make a mental connection with it upon encountering that mark being used on a watch, a scarf or a t-shirt (§ 40).

Earlier mark Contested mark Case No

ZARA

11/04/2019, T-655/17, ZARA TANZANIA ADVENTURES (fig.) / ZARA et al., EU:T:2019:241

Reputed for clothing, footwear Classes 39, 41 and 43 [and] headgear in Class 25 and for store services in Class 35 The signs were found visually highly similar, aurally similar and conceptually similar for the part of the public that would recognise ‘ZARA’ as a female first name (§ 20-32). Taking into account the reputation of the earlier mark and the applicant’s submissions concerning the goods and services, the Court reasoned that there is a current trend for trade marks in the fashion market to evolve towards other markets and business sectors such as those under the contested mark. As such, despite the differences between the goods and services, the contested mark may bring the earlier marks to the mind of the relevant public, particularly because the goods and services are intended for, inter alia, the general public (§ 40 and 51).

Earlier mark Contested mark Case No

16/12/2010, T‑345/08 & BOTOX BOTOLIST and BOTOCYL T‑357/08, Botolist / Botocyl, EU:T:2010:529, confirmed by 10/05/2012, C‑100/11 P, Botolist / Botocyl, EU:C:2012:285 There is a low degree of similarity between the opponent’s pharmaceutical preparations for the treatment of wrinkles for which the earlier mark is reputed and the contested cosmetics among other creams. The remaining contested goods, namely perfumes, sun-tanning milks, shampoos, bath salts, etc., are dissimilar. Nevertheless, the goods at issue concern related market sectors. The relevant public – practitioners as well as the general public – would not fail to notice that both contested marks begin with ‘BOTO-’, which comprises almost the whole of the earlier mark BOTOX. ‘BOTO-’ is not a common prefix, either in the pharmaceutical field or in the cosmetic field and it has no descriptive meaning. The relevant public would establish a link between the marks at issue (§ 65-79).

Earlier mark Contested mark Case No

11/01/2010, R 70/2009‑1, RED RED BULL DOG (fig.) / RED BULL et al.

The relevant public would establish a link between the marks because (i) the marks have some relevant common features, (ii) the conflicting goods in Classes 32-33 are identical, (iii) the earlier mark is reputed, (iv) the earlier mark has acquired a strong distinctive character through use and (v) there might be a possibility of confusion (§ 19, 24).

Earlier mark Contested mark Case No

25/01/2012, T‑332/10, Viaguara, Viagra Viaguara EU:T:2012:26

The earlier mark is reputed for pharmaceuticals for the treatment of erectile dysfunctions in Class 5, whereas the contested mark covers non-alcoholic and alcoholic drinks in Classes 32 and 33. Although the goods at issue are dissimilar, a link is likely to be established between the marks due to their high degree of similarity and the strong reputation of the earlier mark (§ 52).

Earlier mark Contested mark Case No

RSC-ROYAL SHAKESPEARE 06/07/2012, T‑60/10, Royal Royal Shakespeare COMPANY Shakespeare, EU:T:2012:348

The earlier mark is reputed for theatre productions , whereas the contested mark covers non-alcoholic and alcoholic drinks and providing of food and drink, restaurants, bars, pubs, hotels; temporary accommodation. There is a certain proximity between the contested goods and the opponent’s theatre productions . It is common practice in theatres to offer bar and catering services either alongside or during the interval of a performance. In view of the exceptional reputation of the earlier mark and the similarity between the marks, the relevant UK public would make a link with the earlier mark when confronted with the contested goods bearing the contested mark in a supermarket or in a bar (§ 60).

Examples where no link was found between the signs

The following are examples where an overall assessment of all of the relevant factors showed that it was unlikely that a link would be established between the signs.

Earlier mark Contested mark Case No

Conguitos 07/06/2023, T-339/22, Conguitos (fig.) / Conguitos LA CASA (fig.) Reputed for chocolate-covered et al., EU:T:2023:308 Classes 3, 14, 18 peanuts in Class 30 Taking into account all factors, BoA correctly established that no link could be found because the relevant markets were far apart. The cancellation applicant did not evidence how the relevant public, even with knowledge of the exceptional reputation of the earlier mark, would make a link between products as diverse as these (§ 32-36).

Earlier mark Contested mark Case No

Puma

Class 11: Lighting, heating, steam generation, cooking, refrigeration, 07/12/2022, T‑623/21, Puma / drying, ventilation and water Puma (fig.), EU:T:2022:77 Class 25: Clothing, footwear and supply devices, water heaters, headgear thermal solar collectors [heating], heat pumps, particularly with environmental heat sources, boilers and burners.

Earlier mark Contested mark Case No

The goods at issue essentially belong to different economic sectors and markets (§ 100). Even if there is an overlap in the relevant public, the relevant goods or services are so different that the contested mark is not capable of bringing the earlier mark to mind by the relevant public (§ 82). There is no evidence that, irrespective of the commercial context, consumers will think of the applicant when confronted with the word ‘Puma’ (§ 96). There is also no evidence that the goods at issue have certain characteristics that will lead to an image transfer between the marks in conflict (§ 97).

Earlier mark Contested mark Case No

VERTI VertiLight 28/04/2021, T-644/19, VertiLight / Reputed for insurance services in Class 11: Lighting and lighting VERTI, EU:T:2021:222, § 101 Class 36 reflectors, vehicle headlamps It follows that, in the context of an average degree of repute of the earlier mark and having regard to the average degree of similarity between the marks at issue, the different nature of the goods and services at issue, the high level of attention of the public targeted by the mark applied for and the average distinctiveness of the earlier mark, it cannot be concluded that the relevant public would establish a link between the marks at issue, in accordance with the case-law referred to in paragraphs 26 and 85 above (§ 101).

Earlier mark Contested mark Case No

11/11/2020, T‑820/19, Lottoland / LOTTO (fig.) et al., EU:T:2020:538, § 64, 66

Notwithstanding the strong reputation of the earlier figurative mark and the above-average degree of similarity between the marks, the lack of any link between the services (relating to gambling in Class 41 of the earlier mark and scientific and technological services in Class 42 of the contested mark) and the difference between the relevant publics, one of which is a specialist public with a high level of attention, are such that the existence of a link between the marks can be ruled out (§ 66).

Earlier mark Contested mark Case No

JAUME SERRA JAUME CODORNÍU Reputed for wine in Class 33 Class 33: Alcoholic beverages, 08/05/2019, T‑358/18, except beers; wines; sparkling EU:T:2019:304, § 53, 55, 97 wines; liquors; spirits; brandy The relevant public will identify the two signs Jaume Codorniu and Jaume Serra as first name and surname. The Spanish public in the wine sector is accustomed to differentiating the business origin of two signs composed of first name and surname due to the difference in the surname, consequently, the coincidence of the first name ‘Jaume’ in the conflicting signs is not sufficient to prove this link (§ 53, 55, 97).

Earlier mark Contested mark Case No

G-STAR and 21/01/2010, T‑309/08, G Stor, EU:T:2010:22

Visually, the signs have a different overall impression due to the figurative element of a Chinese dragon’s head placed at the beginning of the mark applied for. Aurally, the marks are highly similar. Conceptually, the element ‘star’ of the earlier marks will be perceived as referring to a star or a famous person throughout the EU. It is possible that a part of the relevant public will attribute to the element ‘stor’ of the contested mark the sense of the Danish and Swedish word ‘stor’, meaning ‘big, large’, or will regard it as a reference to the English word ‘store’ meaning ‘shop, storage’. It is, however, more likely that the majority of the relevant public will not attribute any particular meaning to that element. Therefore, the relevant public will perceive the marks at issue as conceptually different inasmuch as the earlier marks have a clear meaning throughout the EU, while the mark applied for has either a different meaning for part of the relevant public or no meaning. According to settled case-law, where the meaning of at least one of the two signs at issue is clear and specific so that it can be grasped immediately by the relevant public, the conceptual differences between those signs may counteract the visual and aural similarities between them. Thereforce, the visual and conceptual differences between the marks prevent any possible link to be made between them (§ 25-36).

Earlier mark Contested mark Case No

07/10/2010, R 1556/2009‑2, only givenchy (fig.) / ONLY et al. ONLY (confirmed 08/12/2011, T‑586/10, Only Givenchy, EU:T:2011:722)

The goods at issue are identical (Class 3). Even if the earlier mark had a reputation, the differences between the marks, in particular due to the conceptual unit created by the combination of the element ‘only’ and the distinctive dominant element ‘givenchy’, would be significant enough for the public not to make any connection between them (§ 65, 66).

Earlier mark Contested mark Case No

30/09/2016, T‑430/15, Silvania SYLVANIA Food (fig.) / SYLVANIA et al., EU:T:2016:590

The lack of any similarity between the goods and services combined with the fact that the earlier mark does not have a strong reputation rule out any link between the marks at issue. It is unlikely that the quality image of the earlier mark associated with lights and lamps might be transferred to the foodstuffs or food industry services covered by the contested mark (§ 46).

Based on the above, the following non-exhaustive and interrelated circumstances are to be taken into account in the assessment of the link under Article 8(5) EUTMR: The reputation of a trade mark, even if high, does not automatically lead to the

existence of a link between the trade marks. A faint similarity between the signs can be sufficient for establishing a link, even

where it may not suffice for a likelihood of confusion under Article 8(1)(b) EUTMR. The degree of proximity between the goods and services is a factor in the

assessment of the link: a link can be found when the goods and services in conflict belong to quite different market sectors; yet, where the essential qualities, characteristics, purpose, use, distribution and origin of the goods and services applied for differ fundamentally from those for which the earlier mark is reputed, this is one of the factors to ascertain whether the consumer would make a link. In any event, the absence of a link cannot be based solely on the difference between the goods or services in conflict or on the distance between the relevant market sectors. A link is more likely to occur when the similarity relates to an earlier reputed

mark comprising words that are meaningless or novel combinations than when they relate to earlier marks comprising words or combinations with established semantic content.

3.4 The risk of injury ( )

3.4.1 Protected subject matter

Article 8(5) EUTMR does not protect the reputation of the earlier mark as such, in the sense that it does not intend to prevent the registration of all marks identical with or similar to a mark with reputation. Once the condition as to the existence of reputation is fulfilled and a link has been established, it must be assessed whether the earlier mark would be detrimentally affected. A proven link between the marks is not sufficient, in itself, to establish that there may be one of the forms of injury referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96, and the case-law cited therein). Apart from indicating origin, a trade mark may also fulfil other functions worthy of protection. In particular, a trade mark can offer a guarantee that all the goods coming from a single undertaking have the same quality (guarantee function) and it can serve as an advertising instrument by reflecting back the goodwill and prestige it has acquired in the market (advertising function) (17/10/1990, C‑10/89, Hag II, EU:C:1990:359; 11/07/1996, C‑427/93, C‑429/93 & C‑436/93, Bristol-Myers Squibb and Others / Paranova, EU:C:1996:282; 11/11/1997, C‑349/95, Ballantine, EU:C:1997:530; 04/11/1997, C‑337/95, Dior, EU:C:1997:517; 23/02/1999, C‑63/97, BMW, EU:C:1999:82). It follows that trade marks serve not only to indicate the origin of a product, but also to convey a certain message or image to the consumer, which is incorporated in the sign mostly through use and, once acquired, forms part of its distinctiveness and repute. In most cases of reputation these features of the trade mark will be particularly developed, as the commercial success of a brand is usually based on product quality, successful promotion, or both, and, for this reason, will be especially valuable to the trade mark owner. This added value of a mark with reputation is precisely what Article 8(5) EUTMR intends to protect against undue detriment or unfair advantage. Hence, the protection under Article 8(5) EUTMR extends to all cases where use of the contested mark is likely to have an adverse effect on the earlier mark, in the sense that it would diminish its attractiveness (detriment to distinctiveness) or devalue the image it has acquired among the public (detriment to repute), or where use of the contested mark is likely to result in misappropriation of the powers of attraction or exploitation of the image and prestige of the earlier mark (taking unfair advantage of its distinctive character or repute). Given that a very strong reputation is both easier to harm and more tempting to take advantage of, owing to its great value, the Court underlined that ‘the stronger the earlier mark’s distinctive character and reputation the easier it will be to accept that detriment has been caused to it’ (27/11/2008, C‑252/07, Intel, EU:C:2008:655,

§ 67, 74; 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 41). The same must be accepted as regards the unfair advantage the applicant might enjoy at the expense of the earlier mark.

3.4.2 Assessment of the risk of injury

As stated in paragraph 3.3, any type of injury under Article 8(5) EUTMR is the consequence of an association between the conflicting marks in the minds of the public, made possible by the similarities between the marks, their distinctiveness, the reputation and other factors. The more immediately and stronger the earlier mark is brought to mind by the later sign, the greater the likelihood that current or future use of the sign is taking, or will take, unfair advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to it (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 67-69; 18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 41, 43). Therefore, the evaluation of detriment or unfair advantage must be based on an overall assessment of all the factors relevant to the case (including in particular the similarity of signs, the reputation of the earlier mark, and the respective consumer groups and market sectors), to determine whether the marks may be associated in a way that may adversely affect the earlier trade mark.

3.4.3 Types of injury

Article 8(5) EUTMR refers to the following types of injury: ‘take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark’. Therefore, Article 8(5) EUTMR applies if any of the following three alternative requirements is fulfilled, namely if use of the contested mark would: take unfair advantage of the distinctiveness, or the repute of the earlier mark;

cause detriment to the distinctiveness;

cause detriment to the repute.

As regards the first type of injury, the wording of Article 8(5) EUTMR suggests the existence of two kinds of unfair advantage, but settled case-law treats both as a single injury under Article 8(5) EUTMR (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 47). For the sake of completeness, both aspects of the same injury will be dealt with under paragraph 3.4.3.1. As demonstrated in the Guidelines Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, likelihood of confusion relates only to confusion about the commercial origin of goods and services. Article 8(5) EUTMR, in contrast, protects earlier reputed marks in cases of association or confusion that does not necessarily relate to the commercial origin of goods/services. Article 8(5) EUTMR protects the heightened effort and financial investment that is involved in creating and promoting trade marks to the extent that they become reputed by protecting these marks against later similar marks taking unfair advantage of, or being detrimental to, the distinctive

character or the repute of the earlier trade mark. There is a rich lexicon of vocabulary that is used in relation to this area of trade mark law. The most common terms are set out below.

Unfair advantage Free-riding, riding on the coat-tails Detriment to distinctiveness Dilution by blurring, dilution, blurring, watering down, debilitating, whittling away Detriment to repute Dilution by tarnishing, tarnishment, degradation

3.4.3.1 Taking unfair advantage of distinctiveness or repute

The nature of the injury The notion of taking unfair advantage of distinctiveness or repute covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on its goods/services a sign that is similar (or identical) to one widely known in the market and, thus, misappropriating its attractive powers and advertising value or exploiting its reputation, image and prestige. This may lead to unacceptable situations of commercial parasitism, where the applicant is allowed to take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark, as it may stimulate sales of the applicant’s products to a disproportionately high extent in comparison with the size of its promotional investment. Unfair advantage exists where there is a transfer of the image of the mark or of the characteristics that it projects to the goods identified by the identical or similar sign. By riding on the coat-tails of the reputed mark, the applicant benefits from the power of attraction, reputation and prestige of the reputed mark. The applicant also exploits, without paying any financial compensation, the marketing effort expended by the proprietor of the mark to create and maintain the image of that mark (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 41, 49). It concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that marketing of those goods is made easier by that association with the earlier mark with a reputation (19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215, § 40; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40; 30/01/2008, T‑128/06, Camelo, EU:T:2008:22, § 46). The relevant consumer The concept of ‘unfair advantage’ focuses on benefit to the later mark rather than harm to the earlier mark; what is prohibited is the exploitation of the earlier mark by the proprietor of the later mark. Accordingly, the existence of the injury consisting of unfair advantage obtained from the distinctive character or repute of the earlier mark must be assessed by reference to average consumers of the goods or services for which the later mark is applied for (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 35-36;

12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146, § 46-48; 07/12/2010, T‑59/08, Nimei La Perla Modern Classic, EU:T:2010:500, § 35). Assessing unfair advantage To determine whether the use of a sign takes unfair advantage of the distinctive character or repute of the mark, it is necessary to undertake an overall assessment, which takes into account all the factors relevant to the circumstances of the case (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 53, confirmed 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; see also 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 30, 38; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 57, 58, 66; 24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 53). The misappropriation of the distinctiveness and repute of the earlier mark presupposes an association between the respective marks, which makes possible the transfer of attractiveness and prestige to the sign applied for. The more immediately and strongly the earlier reputed mark is brought to mind by the contested mark, the greater the likelihood that the current or future use of the mark would take unfair advantage of the distinctiveness or repute of the earlier mark. An association of this kind will be more likely in the following circumstances. 1. Where the earlier mark possesses a strong reputation or a very strong (inherent) distinctive character, because in such a case it will be both more tempting for the applicant to try to benefit from its value and easier to associate it with the sign applied for. Such marks will be recognised in almost any context, exactly because of their outstanding distinctiveness or ‘good’ or ‘special’ reputation, in the sense that it reflects an image of excellence, reliability or quality, or some other positive message, which could positively influence the choice of the consumer as regards goods of other producers (12/07/2011, C‑324/09, L’Oréal-eBay, EU:C:2011:474, § 44). The stronger the distinctive character of the earlier mark, the more likely it is that, when encountering a later identical or similar mark, the relevant public will associate it with that earlier mark (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 27). 2. The more similar the marks are, the more likely the risk of taking unfair advantage. 3. Where there is a special connection between the goods/services, which allows for some of the qualities of the opponent’s goods/services to be attributed to those of the applicant. This will be particularly so in the case of neighbouring markets, where a ‘brand extension’ would seem more natural, as in the example of pharmaceuticals and cosmetics; the healing properties of the former may be presumed in the latter when it bears the same mark. Similarly, the Court has held that certain drinks (Classes 32 and 33) commercialised as improving sexual performance were linked to the properties of the goods in Class 5 (pharmaceutical and veterinary products and substances) for which the earlier mark, Viagra, was registered (25/01/2012, T‑332/10, Viaguara, EU:T:2012:26, § 74). Conversely, such a link was not found between credit card services and cosmetics, as it was thought that the image of the former is not transferable to the latter, even though their respective users largely coincide.

4. Where, in view of its special attractiveness and prestige, the earlier mark may be exploited even outside its natural market sector, for example, by licensing or merchandising. In this case, if the applicant uses a sign that is identical or similar to the earlier mark for goods for which the latter is already exploited, it will obviously profit from its de facto value in that sector (16/03/2012, R 1074/2011‑5, Twitter (fig.) / TWITTER). 5. Although likelihood of confusion between the two marks at issue is not required to demonstrate that the later mark takes unfair advantage of the earlier mark, where such likelihood is established on the basis of facts, this will be taken as proof that unfair advantage has been taken or that, at least, there is a serious risk of such injury in the future (07/12/2010, T‑59/08, Nimei La Perla Modern Classic, EU:T:2010:500, § 57, 58). 6. The existence of a family of marks may also be a relevant factor for assessing whether unfair advantage is being taken (05/07/2016, T‑518/13, MACCOFFEE, EU:T:2016:389, § 103). Taking unfair advantage of the distinctiveness or repute of a trade mark may be a deliberate decision, for example where there is clear exploitation and riding on the coat-tails of a famous mark, or an attempt to trade upon the reputation of a famous mark. However, taking unfair advantage does not necessarily require a deliberate intention to exploit the goodwill attached to someone else’s trade mark. Therefore, bad faith is not in itself a condition for the application of Article 8(5) EUTMR, which only requires that the advantage be ‘unfair’, in that there is no justification for the applicant’s profit. However, where the evidence shows that the applicant is clearly acting in bad faith, there will be a strong indication of unfair advantage. The existence of bad faith may be inferred from various factors, such as an obvious attempt by the applicant to imitate an earlier sign of great distinctiveness as closely as possible, or where there is no apparent reason why it chose for its goods a mark that includes such a sign. Moreover, instances of actual use of the mark applied for (even outside the EU) may serve as basis for a logical inference relating to the likely commercial use of the mark applied for in the EU, in order to establish whether a risk of unfair advantage exists (07/12/2017, T‑61/16, MASTER (fig.) / COCA-COLA (fig.) et al., EU:T:2017:877, § 88). Finally, the concept of unfair advantage in Article 8(5) EUTMR does not relate to the detriment caused to the reputed mark. Accordingly, advantage taken by a third party of the distinctive character or repute of the mark may be unfair even if the use of the identical or similar sign is not detrimental to the distinctive character or repute of the mark or, more generally, to its proprietor. It is, therefore, not necessary for the opponent to show that the applicant’s benefit is detrimental to its economic interests or to the image of its mark (unlike with tarnishing, see below), as in most cases the ‘borrowed’ distinctiveness/prestige of the sign will principally affect the applicant’s competitors, that is, traders dealing in identical/similar/neighbouring markets, by putting them at a competitive disadvantage. However, the possibility of simultaneous detriment to the opponent’s interests should not be ruled out completely, especially in instances where

use of the sign applied for could affect the opponent’s merchandising schemes, or would hinder its plans to penetrate a new market sector.

Cases on unfair advantage

Risk of unfair advantage established

Earlier mark Contested mark Case No

26/06/2008, C‑252/07, INTEL INTELMARK EU:C:2008:370

In her opinion in the Intel preliminary ruling, Advocate General Sharpston referred to unfair advantage as follows: ‘The concepts of taking unfair advantage of the distinctive character or repute of the mark in contrast must be intended to encompass “instances where there is clear exploitation and free-riding on the coattails of a famous mark or an attempt to trade upon its reputation”. Thus by way of example Rolls Royce would be entitled to prevent a manufacturer of whisky from exploiting the reputation of the Rolls Royce mark in order to promote his brand. It is not obvious that there is any real difference between taking advantage of a mark’s distinctive character and taking advantage of its repute; since however nothing turns on any such difference in the present case, I shall refer to both as free-riding’ (para. 33).

Earlier mark Contested mark Case No

16/04/2008, T‑181/05, CITIBANK et al. EU:T:2008:112

‘… the reputation of the trade mark CITIBANK in the European Community in regard to banking services is not disputed. That reputation is associated with features of the banking sector, namely, solvency, probity and financial support to private and commercial clients in their professional and investment activities.’ ‘…there is a clear relationship … between the services of customs agencies and the financial services offered by banks such as the applicants, in that clients who are involved in international trade and in the import and export of goods also use the financial and banking services, which such transactions require. It follows that there is a probability that such clients will be familiar with the applicants’ bank given its extensive reputation at international level.’ ‘In those circumstances, the Court holds that there is a high probability that the use of the trade mark applied for, CITI, by customs agencies, and therefore for financial agency activities in the management of money and real estate for clients, may lead to free-riding, that is to say, it would take unfair advantage of the well-established reputation of the trade mark CITIBANK and the considerable investments undertaken by the applicants to achieve that reputation. That use of the trade mark applied for, CITI, could also lead to the perception that the intervener is associated with or belongs to the applicants and, therefore, could facilitate the marketing of services covered by the trade mark applied for. That risk is further increased because the applicants are the holders of several trade marks containing the component “citi”’ (paras 81 to 83).

Earlier mark Contested mark Case No

19/06/2008, T‑93/06, Spa Mineral Spa EU:T:2008:215

MINERAL SPA (for soaps, perfumeries, essential oils, preparations for body and beauty care, preparations for the hair, dentifrices in Class 3) could take unfair advantage of the image of the earlier trade mark SPA and the message conveyed by it in that the goods covered by the contested application would be perceived by the relevant public as supplying health, beauty and purity. It is not a question of whether toothpaste and perfume contain mineral water, but whether the public may think that the goods concerned are produced from or with mineral water (paras 43 and 44).

Earlier mark Case No

L’Oréal et al. 12/07/2011, C‑324/09, EU:C:2011:474

According to L’Oréal et al., the defendants manufactured and imported perfume that was a ‘smellalike’ of L’Oréal’s fragrances but sold at a considerably lower price, using packaging that was reminiscent of the get-up covered by L’Oréal’s marks. The defendants used comparison lists to present the perfumes, which they marketed as being imitations or replicas of goods bearing a trade mark with repute. Under Council Directive 84/450/EEC, comparative advertising that presents the advertiser’s products as an imitation of a product bearing a trade mark is inconsistent with fair competition and thus unlawful. Therefore, any advantage gained by the advertiser through such advertising will have been achieved as a result of unfair competition and must be regarded as taking unfair advantage of the reputation of that mark).

Earlier mark Contested mark Case No

10/05/2007, T‑47/06, Nasdaq EU:T:2007:131

‘Taking account of the fact that the financial and stock market listing services supplied by the intervener under its trade mark Nasdaq and, therefore, the trade mark Nasdaq itself, undeniably present a certain image of modernity [the link between the signs] enables the transfer of that image to sports equipment and, in particular, to the high-tech composite materials which would be marketed by the applicant under the mark applied for, which the applicant appears to recognise implicitly by stating that the word ‘nasdaq’ is descriptive of its main activities. Therefore, in light of that evidence, and taking account of the similarity of the marks at issue, the importance of the reputation and the highly distinctive character of the trade mark Nasdaq, it must be held that the intervener has established prima facie the existence of a future risk, which is not hypothetical, of unfair advantage being drawn by the applicant, by the use of the mark applied for, from the reputation of the trade mark Nasdaq. There is therefore no need to set aside the contested decision on that point’ (paras 60 and 61).

Earlier mark Contested mark Case No

06/07/2012, T‑60/10, Royal Shakespeare EU:T:2012:348

There is a certain proximity and link between entertainment services and beer, even a certain similarity due to their complementarity. The public in the United Kingdom would be able to make a link with the Royal Shakespeare Company (RSC) when seeing a beer with the contested mark Royal Shakespeare in a supermarket or in a bar. The contested mark would benefit from the power of attraction, the reputation and the prestige of the earlier mark for its own goods and services, which would attract the consumers’ attention thanks to the association with RSC, thereby gaining a commercial advantage over its competitors’ goods. The economic advantage would consist of exploiting the effort expended by RSC to establish the reputation and the image of its earlier mark without paying any compensation in exchange. That equates to an unfair advantage (para. 61).

Earlier mark Contested mark Case No

25/01/2012, T‑332/10, Viagra Viaguara EU:T:2012:26

While recognising that the primary function of a trade mark was as an indicator of origin, the General Court held that a mark could also serve to transmit other messages, concerning particular qualities or characteristics of the designated goods or services, or the images and sensations projected by the mark itself, such as luxury, lifestyle, exclusivity, adventure or youth. In this sense, a trade mark possessed an intrinsic economic value that was autonomous and distinct to that of the goods or services for which it was registered (para. 57). The risk of taking unfair advantage encompasses cases of manifest exploitation or parasitism of a mark with reputation, namely the risk of transferring the image of the mark with reputation or the characteristics projected by it to the goods covered by the mark applied for, thus facilitating the marketing of those goods through association with the earlier mark with reputation (para. 59). The Court concluded that, even if the drinks claimed by the mark applied for would not in reality produce the same benefit as the ‘immensely well-known’ pharmaceutical for the treatment of erectile dysfunction, what was important was that the consumer, because of the transfer of positive associations projected by the image of the earlier mark, would be inclined to purchase such drinks in the expectation of finding similar qualities, such as an increase in libido (paras 52 and 67).

Earlier mark Contested mark Case No

27/09/2012, T‑373/09, Emidio EMILIO PUCCI Tucci, EU:T:2012:500 (18/06/2009, R 770/2008‑2 & R 826/2008‑2, EMIDIO TUCCI (fig.) / EMILIO PUCCI (fig.))

Although the applicant’s cosmetic products are dissimilar to the opponent’s clothes, they both fall squarely within the realm of products that are often sold as luxury items under famous marks of wellknown designers and manufacturers. Taking into account that the earlier mark is very well known and that the commercial contexts in which the goods are promoted are relatively close, BoA concluded that consumers of luxury clothes will make a connection between the applicant’s mark for soaps, perfumery, essential oils, cosmetics and hair lotions in Class 3 and the famous mark ‘EMILIO PUCCI’, an association that will produce a commercial benefit as per the Board’s findings (BoA para. 129). BoA concluded that there was a strong likelihood that the applicant could exploit the reputation of the opponent’s mark for its own benefit. The use of the mark applied for in connection with the goods and services mentioned above will almost certainly draw the relevant consumer’s attention to the opponent’s highly similar and very well-known mark. The applicant will become associated with the aura of luxury that surrounds the ‘EMILIO PUCCI’ brand. Many consumers are likely to think that there is a direct connection between the applicant’s goods on the one hand, and the famous Italian fashion house on the other, perhaps in the form of a licensing agreement. The applicant could take unfair advantage of the fact that the public knows the trade mark ‘EMILIO PUCCI’ well in order to introduce its own highly similar trade mark without incurring any great risk or the costs of introducing a totally unknown trade mark onto the market (BoA para. 130). The General Court confirmed the BoA findings.

Earlier mark Contested mark Case No

10/10/2019, T‑428/18, mc dreams hotels Träumen McDONALD’S et al zum kleinen Preis! (fig.) / McDONALD’S et al., EU:T:2019:738 The prefix ‘mc’ of the opponent’s family of marks has acquired a high degree of distinctiveness through its use on the fast-food market. Given the exceptional nature of the reputation of the earlier mark, the average level of attention of the relevant public, the existence of a degree of similarity between the marks and the significant degree of similarity between the services, as well as the existence of a family of marks, the structure of which is reproduced, at least in part, by the mark applied for, the relevant public would establish a link between the marks, even though the opponent did not offer any form of accommodation or hotel services. The relevant public would associate the mark applied for with the image of reliability, efficiency, low-cost services and, on that account, choose it instead of the services provided by its competitors. The mark applied for would therefore ride on the coat-tails of the earlier mark to benefit from the power of attraction, the reputation and the prestige of that mark. The economic advantage would consist, for the applicant, of exploiting the effort expended by the opponent to establish the reputation and the image of its earlier mark, without paying any compensation in exchange (paras 71, 85, 90 and 98).

Risk of unfair advantage denied

Earlier mark Contested mark Case No

20/02/2018, T‑118/16, BEPOST / BEPOST ePOST (fig.) et al., EU:T:2018:86

Due to the significant differences between the marks and the weak distinctive character of the common element ‘post’, the relevant public will not make any link between the mark applied for and the earlier national word mark POST, since the term ‘post’, in the context of the mark applied for, is likely to be perceived merely as a reference to postal services (para. 115).

Earlier mark Contested mark Case No

22/03/2007, T‑215/03, Vips Vips EU:T:2007:93

The earlier mark Vips has a reputation for restaurants, in particular fast-food chains. However, it was not proven that it also enjoys any particular prestige. The term Vips is laudatory in itself and extensively used in this manner. There is no explanation as to how the sales of software products under the mark Vips could possibly benefit from their association with a fast-food chain, even if a link were made. Therefore, the Court rules out the risk that use of the mark applied for would take unfair advantage of the distinctive character or repute of the earlier mark.

Earlier mark Contested mark Case No

25/05/2005, T‑67/04, Spa Spa-Finders EU:T:2005:179

Spa has a reputation for mineral water in the Benelux. The contested mark, Spa-Finders, covers publications, catalogues, magazines, newsletters, travel agency services. The General Court declared that there was no detrimental link between the signs. The sign Spa is also used to denote the town of Spa and the racing circuit of the same name. There is no evidence of unfair advantage or any kind of exploitation of the fame of the earlier mark. The word Spa in the mark applied for only denotes the kind of publication concerned.

Earlier mark Contested mark Case No

19/12/2014, R 2090/2013‑2, TDK TDK / TDK-EPC (fig.) et al.

The earlier mark ‘TDK’ has a reputation within the European Union for ‘audio and videotape goods’. The opponent argued that ‘[b]uilding and construction is a specific commercial area in which use of a TDK could diminish a reputation of the sort and nature of a company such as the opponent’. The Board found that this argument, which seems to be a mixture of allegations that there is detriment to the reputation and detriment to the distinctive character of the earlier mark, is no more than a mere statement, which is not corroborated by any evidence that would demonstrate prima facie a serious risk of change in economic behaviour or of a reduction in the trade mark’s power of attraction.

3.4.3.2 Detriment to distinctiveness

The nature of the injury Detriment to the distinctive character of an earlier reputed mark (also referred to as ‘dilution’, ‘whittling away’ or ‘blurring’) is caused when that mark’s ability to identify the goods/services for which it is registered and used as coming from its proprietor is weakened because use of a later similar mark leads to dispersion of the identity of the earlier reputed mark by making it less distinctive or unique (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 29). Article 8(5) EUTMR states that a proprietor of a reputed mark may oppose EUTM applications that, without due cause, would be detrimental to the distinctive character of earlier reputed marks. Clearly, therefore, the object of protection is the distinctiveness of the earlier reputed mark. As demonstrated in the Guidelines, Part C, Opposition, Section 2, Double Identity and Likelihood of Confusion, Chapter 5, Distinctiveness of the Earlier Mark, ‘distinctiveness’ refers to the greater or lesser capacity of a mark to identify the goods/services for which it has been registered as coming from a particular undertaking. Therefore, Article 8(5) EUTMR protects reputed marks against a reduction of their distinctive quality by a later similar mark even where the later mark relates to dissimilar goods/services. Although the former wording of Article 8(5) EUTMR only referred to conflicts between dissimilar goods/services, in its judgments of 09/01/2003, C‑292/00, Davidoff, EU:C:2003:9; 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, the Court held that this Article also covers similar or identical goods/services. The protection provided in Article 8(5) EUTMR, therefore, acknowledges that unrestrained use of a reputed mark by third parties, even on dissimilar goods, will eventually reduce the distinctive quality or uniqueness of that reputed mark. For example, if Rolls Royce were used on restaurants, pants, candy, plastic pens, yard brushes, etc., its distinctiveness would eventually be dispersed and its special hold upon the public would be reduced — even in relation to cars, for which it is reputed. Consequently, the Rolls Royce mark’s ability to identify the goods/services for which it is registered and used as coming from its proprietor would be weakened in the sense that consumers of the goods for which the reputed mark is protected and reputed will be less inclined to associate it immediately with the owner that has built up the trade

mark’s reputation. This is because, for those consumers, the mark now has several or many ‘other’ associations, where it previously had only one. Relevant consumer Detriment to the distinctive character of the earlier reputed mark must be assessed by reference to the average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 35). The assessment of detriment to distinctiveness Detriment to the distinctiveness of the earlier reputed mark occurs where use of a later similar mark reduces the distinctive quality of the earlier reputed mark. However, this cannot be found to occur merely because the earlier mark has a reputation and is identical with or similar to the mark applied for — such an approach would apply an automatic and indiscriminate finding of likelihood of dilution against all marks that are similar to reputed trade marks and would negate the requirement of proving detriment. The Court held in Intel that Article 4(4)(a) of the First Council Directive 89/104/EEC (the equivalent of Article 8(5) EUTMR) must be interpreted as meaning that proof that use of the later mark would be detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour’ of the average consumer of the goods/services for which the earlier mark was registered, or a serious likelihood that such a change will occur in the future. The Court has further elaborated on the concept of ‘change in the economic behaviour of the average consumers’ in its judgment of 14/11/2013, C‑383/12 P, Répresentation d’une tête de loup, EU:C:2013:741. It indicated that it is an autonomous objective condition, which cannot be deduced solely from subjective elements such as how consumers perceive the dispersion of the reputed mark’s image and identity. The mere fact that consumers note the presence of a new similar sign that is likely to undermine the earlier mark’s ability to identify the goods for which it is registered as coming from the mark’s proprietor, is not sufficient by itself to establish the existence of detriment or a risk of detriment to the distinctive character of the reputed mark (paras 35 to 40). The Court insists on a ‘higher standard’ for establishing dilution. The following two autonomous conditions must be substantiated by the opponent and reasoned by the Office. Dispersion of the reputed mark’s image and identity in the relevant public’s

perception (subjective condition). A change in the economic behaviour of this public (objective condition).

Whilst the opponent does not need to submit evidence of actual detriment, it must convince the Office by adducing evidence of a serious future risk — which is not merely hypothetical — of detriment. The opponent may do this by submitting evidence that proves a likelihood of detriment on the basis of logical deductions made from an analysis of the probabilities (and not mere suppositions), and by taking account of normal practice in the relevant commercial sector as well as of all the other circumstances of the case (16/04/2008, T‑181/05, Citi, EU:T:2008:112, § 78, as cited

in 22/05/2012, T‑570/10, Répresentation d’une tête de loup, EU:T:2012:250, § 52; confirmed 14/11/2013, C‑383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43). First use Detriment to distinctive character is characterised by an ‘avalanche effect’, meaning that the first use of a similar mark in a distinct market may not, in itself, dilute the identity or ‘uniqueness’ of the reputed mark but, over time, this would be the result, because this first use may trigger further acts of use by different operators, thus leading to its dilution or detriment to its distinctive character. The Court has held that the first use of an identical or similar mark may suffice, in some circumstances, to cause actual and present detriment to the distinctive character of the earlier mark or to give rise to a serious likelihood that such detriment will occur in the future (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 75). In opposition proceedings before the Office, use of the contested sign may not have occurred at all. In this regard, the Office takes into account that future use of the contested sign, even if it were first use, may trigger further acts of use by different operators, under particular circumstances that are to be provided by the opponent, therefore leading to dilution by blurring. As seen above, the wording of Article 8(5) EUTMR provides for this by stating that use of the mark applied for without due cause ‘would … be detrimental to … the distinctive character or the repute of the earlier trade mark’. Nevertheless, as set out above, the opponent bears the burden of showing that actual or future use causes, or is likely to cause, detriment to the distinctiveness of the earlier reputed mark. Inherent distinctiveness of the earlier mark The Court has stated that ‘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; 28/10/2010, T‑131/09, Botumax, EU:T:2010:458). Indeed, the earlier mark must possess an exclusive character in the sense that it should be associated by the consumers with a single source of origin — since it is only in this case that a likelihood of detriment to distinctiveness may be envisaged. If the same sign, or a variation thereof, is already in use in connection with a range of different goods, there can be no immediate link with any of the goods it distinguishes and, thus, there will be little or no room for further dilution. Accordingly, ‘… 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. In such a case, reuse of the term in question by the mark applied for is less likely to result in a dilution of the earlier mark’ (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 38). If, therefore, the mark is suggestive of a characteristic shared by a wide range of goods, the consumer is more likely to associate it with the specific feature of the product that it alludes to rather than with another mark.

In its judgment of 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, the General Court confirmed the finding that the use of the mark Spa-Finders for publications and travel agency services would neither blur the distinctiveness nor tarnish the reputation of the mark Spa for mineral water: The term ‘spa’ in Spa-Finders may be used otherwise than in a trade mark context since it ‘is frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as hammams or saunas, [and consequently] the risk of detriment to the distinctive character of the mark SPA seems to be limited’ (para. 44). Thus, if the applicant shows that the earlier sign or the element that gives rise to similarity is commonplace and is already used by different undertakings in various sectors of the market, it may successfully refute the existence of a likelihood of dilution, because it will be difficult to accept that the attractiveness of the earlier mark risks being diluted if it is not particularly unique. Cases on dilution by blurring

Dilution established

Earlier mark Contested mark Case No

R 69/2013‑4

Foodstuffs in Classes 29, 30 and Reputed for tobacco products 32

First of all, taking into account the very high similarity between the conflicting marks and the high reputation of the earlier mark, there is a risk that the public will be led to believe that the CAMEL food products originate from, or that the mark is used with the consent of, the opponent. Moreover, the capacity of the reputed CAMEL mark to arouse immediate association with the opponent’s business will be diminished by the use of the contested mark. The use of a highly similar mark for food products would be detrimental to the distinctive character of the reputed CAMEL trade mark for tobacco products, making this mark ordinary, which is in essence a diminution of the power of attraction of the mark. This will lead to dispersion of the identity and hold upon the public’s mind of the earlier mark. The earlier mark, used to arouse immediate association with the goods for which it is registered, will no longer be capable of doing so. It follows that there is a clear probability of damage to the earlier mark’s advertising function as a vehicle for building up and retaining brand loyalty, and that the economic value of the earlier reputed mark will be impaired, in the medium or long term, as a consequence of the use of the contested mark, in the sense that consumers of the goods for which the reputed mark is protected and known will be less inclined to associate it immediately with the undertaking that has built up the trade mark’s reputation; this must be considered a change in their economic behaviour (para. 41).

Dilution denied

Earlier mark Contested mark Case No

Vips Vips T‑215/03 Reputed for fast food restaurant Computer programming for hotel chain in Class 42 services in Class 42

‘So far as concerns, first, detriment to the distinctive character of the earlier mark by the use without due cause of the mark applied for, that detriment can occur where the earlier mark is no longer capable of arousing immediate association with the goods for which it is registered and used (SPA-FINDERS, paragraph 34 above, paragraph 43). That risk thus refers to the “dilution” or “gradual whittling away” of the earlier mark through the dispersion of its identity and its hold upon the public mind (Opinion of Advocate General Jacobs in Adidas-Salomon and Adidas-Benelux, paragraph 36 above, point 37)’ (para. 37). ‘As far as concerns, first, the risk that the use of the mark applied for would be detrimental to the distinctive character of the earlier mark, in other words the risk of “dilution” and “gradual whittling away” of that mark, as explained in paragraphs 37 and 38 above, it must be pointed out that the term “VIPS” is the plural form, in English, of the abbreviation VIP (“Very Important Person”), which is widely and frequently used both internationally and nationally to describe famous personalities. In those circumstances, the risk that the use of the mark applied for would be detrimental to the distinctive character of the earlier mark is limited’ (para. 62). ‘That same risk is also even less probable in the present case as the mark applied for covers the services “Computer programming relating to hotel services, restaurants, cafés”, which are directed at a special and necessarily more limited public, namely the owners of those establishments. The consequence is that the mark applied for, if registration is allowed, will probably be known, through use, only by that relatively limited public, a factor that certainly reduces the risk of dilution or gradual whittling away of the earlier mark through the dispersion of its identity and its hold upon the public mind’ (para. 63).

Earlier mark Contested mark Case No

Spa Spa-Finders

Printed publications including

T‑67/04 Reputed for mineral waters in catalogues, magazines, Class 32 newsletters in Class 16, Travel agency in Class 39

‘In the present case, the Court finds that the applicant does not put forward any evidence to support the conclusion that there is a risk of detriment to the distinctive character of the mark SPA by the use of the mark SPA-FINDERS. The applicant stresses the alleged immediate link that the public will establish between SPA and SPA-FINDERS. It infers from that link that there is detriment to the distinctive character. As the applicant acknowledged at the hearing, the existence of such a link is not sufficient to demonstrate the risk of detriment to the distinctive character. The Court notes, moreover, that since the term “spa” is frequently used to designate, for example, the Belgian town of Spa and the Belgian racing circuit of Spa-Francorchamps or, in general, places for hydrotherapy such as hammams or saunas, the risk of detriment to the distinctive character of the mark SPA seems to be limited’ (para. 44).

Earlier mark Contested mark Case No

C‑383/12 P

Machines for professional and

industrial processing of wood

Reputed for machine tools in

and green waste; professional

Class 7

and industrial wood chippers and

shredders in Class 7

In the present case, the Court of Justice annuls the judgment of the General Court by stating that the detriment or the risk of detriment to the distinctive character of the earlier marks cannot be established without adducing the evidence of ‘change in the economic behaviour of the average consumer’ (para. 36). While the dispersion of the reputed mark’s image and identity in the public’s perception is a subjective condition, the change in the economic behaviour of this public is objective. It cannot be deduced from the mere fact that consumers note the presence of a new similar sign in a way that is likely to undermine the earlier mark’s ability to identify the goods for which it is registered as coming from the proprietor of that mark (paras 37 and 39). The General Court should have examined whether any actual change in economic behaviour had occurred, or was likely to occur, on the basis of ‘an analysis of the probabilities and by taking account of the normal practice in the relevant commercial sector as well as all the other circumstances of the case’ (para. 43). Since it failed to do so, the General Court violated Article 8(5) EUTMR.

3.4.3.3 Detriment to repute

The nature of the injury

The final type of damage under Article 8(5) EUTMR concerns harming the earlier mark by way of detriment to its repute. It can be seen as a step beyond blurring in that the mark is not merely weakened but actually degraded by the link that the public makes with the later mark. Detriment to repute, also often referred to as ‘dilution by tarnishing’ or simply as ‘tarnishing’, relates to situations where use of the contested mark without due cause is likely to devalue the image or the prestige that a mark with reputation has acquired among the public.

The reputation of the earlier trade mark may be tainted or debased in this way, either when it is reproduced in an obscene, degrading or inappropriate context, or in a context that is not inherently unpleasant but that proves to be incompatible with a particular image the earlier trade mark has acquired in the eyes of the public due

to the promotional efforts of its owner. The likelihood of such detriment may arise in particular from the fact that the goods or services offered by the third party possess a characteristic or a quality that is liable to have a negative impact on the image of the mark (18/06/2009, C‑487/07, L’Oréal, EU:C:2009:378, § 40). For example, if a reputed mark for gin were used by a third party on liquid detergent, this would reverberate negatively on the reputed mark in a way that makes it less attractive. In short, tarnishment occurs where there is an association between the earlier reputed mark, at the level of either the signs or the goods, that is injurious to the earlier trade mark’s repute. Relevant consumer As with dilution by blurring, detriment to the reputation of the earlier mark must be assessed by reference to average consumers of the goods and services for which that mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 35; 07/12/2010, T‑59/08, Nimei La Perla Modern Classic, EU:T:2010:500, § 35). The assessment of tarnishment In order to establish detriment to the repute of an earlier mark, the mere existence of a connection in the mind of the consumer between the marks is neither sufficient nor determinative. Such a connection must certainly exist, but, in addition, either the signs or the goods/services covered by the later mark must provoke a negative or detrimental impact when associated with the reputed mark. For example, if a mark that is associated in the minds of the public with an image of health, dynamism and youth is used for tobacco products, the negative connotation conveyed by the latter would contrast strikingly with the image of the former (see further examples below). For tarnishment to occur, therefore, the goods/services on which the contested mark is used must have characteristics or qualities that are potentially detrimental to the reputation of the earlier mark (22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 67). Frequently, opponents argue that the applicant’s goods/services are of inferior quality or that the opponent cannot control the quality of such goods/services. The Office does not accept such an argument, per se, as a means of demonstrating detriment. Proceedings before the Office do not provide for assessing the quality of goods and services, which, apart from being highly subjective, would not be feasible in cases where the goods and services are not identical or in situations where the contested sign has not yet been put to use. Therefore, when assessing whether use of the contested trade mark is likely to damage the reputation of an earlier trade mark, the Office can only consider the goods and services as indicated in the specification of each trade mark. Consequently, for the purposes of the Office’s analysis, the harmful effects of use of the contested sign in connection with the goods and services applied for must derive from the nature and usual characteristics of the goods at issue in general, not their quality in particular instances. This approach does not leave the opponent without protection, because, where a later mark is used on low-quality goods/services in a manner that calls to

mind an earlier reputed mark, this would in any case normally take unfair advantage of the distinctive character or repute of the earlier trade mark or be detrimental to its distinctiveness.

Cases on dilution by tarnishing

Tarnishment established

Earlier mark Contested mark Case No

KAPPA KAPPA 12/03/2012, R 297/2011‑5, KAPPA / KAPPA et al. Reputed for sports clothing and tobacco products, cigarettes, footwear cigars, amongst others

The contested application was filed for tobacco and related goods in Class 34. Smoking tobacco is universally considered to be an extremely unhealthy habit. For this reason, use of the sign KAPPA for tobacco and related goods is likely to prompt negative mental associations with the respondent’s earlier marks or associations, conflicting with and being detrimental to their image of a healthy lifestyle (para. 38).

Earlier mark Contested mark Case No

22/07/2010, R 417/2008‑1,

Scouring and polishing

SPACE NK (fig.) / SPA, LES

preparations and substances; pot

THERMES DE SPA et al. Reputed for mineral waters pourri; incense; incense sticks;

room fragrances and articles for perfuming rooms

The pleasant notions conveyed generally by mineral water do not mix seamlessly with detergents and scouring preparations. Use of marks that contain the word SPA for goods conveying such different connotations is likely to damage, or tarnish, the distinctive character of the earlier mark (para. 101). ‘Mineral water is not pleasantly associated by most consumers with incense or pots pourris. The use, in order to distinguish fragrances and incense, of a mark containing a word (SPA) that Belgian consumers strongly associate to bottled drinking water is therefore likely to damage the attractive and suggestive power that the brand, according to the evidence, currently enjoys’ (para. 103).

Earlier mark Contested mark Case No

06/10/2011, R 2124/2010‑1, LN (fig.) / LV (fig.) et al. Scientific, nautical, surveying, weighing, measuring, signalling, Reputed for goods in Classes 18

checking (supervision), life-saving

and 25

and teaching apparatus and

instruments; amongst others.

The opponent demonstrated that the prestigious image of its trade marks is linked to the traditional manufacturing method of its fine leather goods, which are handmade by master craftsmen who work only with top-quality raw materials. It is this image of luxury, glamour and exclusivity, combined with the exceptional quality of the product, that the opponent has always striven to convey to the public, as the evidence adduced testifies. This image would be quite incompatible with goods of a strongly industrial and technological nature, such as electric meters, scientific microscopes, batteries, supermarket cash registers, fire-extinguishing apparatus or other instruments, for which the applicant intends to use its trade mark (para. 28). What would be detrimental to the image of its trade marks, which the opponent has carefully fostered for decades, is the use of a trade mark that recalls its own and is applied to goods characterised, in the public’s perception, by a significant technological content (whereas a fine-leather article is rarely associated with technology) or as having an industrial origin (whereas fine leather goods are traditionally associated with craftsmanship) (para. 29). The use of a trade mark that is practically identical to a trade mark that the public has come to perceive as synonymous with fine leather goods of excellent manufacture for technical apparatus or electrical tools of all kinds will diminish its attraction, that is, its reputation, amongst the public that knows and values the earlier trade marks (para. 30).

Earlier mark Contested mark Case No

EMILIO PUCCI

Class 3: Bleaching preparations

and other substances for laundry

27/09/2012, T‑373/09, Emidio

use; cleaning, polishing, scouring

Tucci, EU:T:2012:500 and abrasive preparations; (R 770/2008‑2 & R 826/2008‑2) Reputed for clothing and footwear (abrasive preparations) soaps; for women perfumery, essential oils, cosmetics, hair lotions; dentifrices. Class 21: Materials for cleaning

purposes and steelwool

In its decisions of 18/06/2009 in R 770/2008‑2 & R 826/2008‑2, the Board stated that the risk of detriment to repute can occur where the goods and services covered by the mark applied for have a characteristic or a quality that may have a negative influence on the image of an earlier mark with a reputation on account of the mark applied for being identical or similar to the earlier mark with reputation. The General Court confirmed the Board’s finding, adding that due to the great similarity between the signs at issue, the strong distinctive character of the Italian mark and its repute in the Italian market, it can be concluded that there is a link between the signs in conflict, a link that could damage the idea of exclusivity, luxury and high quality and therefore be detrimental to the repute of the Italian mark (para. 68).

Tarnishment denied

Earlier mark Contested mark Case No

17/12/2010, T‑192/09, Seve Trophy, EU:T:2010:553 Reputed for organisation of Class 9

sports competitions

The Court noted that the opponent had not demonstrated any risk of injury to the reputation of the earlier marks, since it had not indicated how the attractiveness of the earlier marks would be diminished by use of the contested mark on the contested goods. Specifically, it did not allege that the contested goods have any characteristic or quality that could have a negative influence on the image of the earlier marks (para. 68).

Earlier mark Contested mark Case No

Spa Spa-Finders

Printed publications including

25/05/2005, T‑67/04, Spa- Reputed for mineral waters in catalogues, magazines, Finders, EU:T:2005:179 Class 32 newsletters in Class 16, Travel agency in Class 39

‘In the present case, SPA and SPA-FINDERS designate very different goods consisting, on the one hand, in mineral waters and, on the other, in publications and travel agency services. The Court finds that it is therefore unlikely that the goods and services covered by the mark SPA-FINDERS, even if they turn out to be of lower quality, would diminish the power of attraction of the mark SPA’ (para. 49).

Earlier mark Contested mark Case No

Vips Vips T‑215/03 Reputed for fast food restaurant Computer programming for hotel chain in Class 42 services in Class 42

The Court pointed out that, ‘although some fast food chain marks have an indisputable reputation, they do not, in principle and failing evidence to the contrary, convey a particularly prestigious or high-quality image, the fast food sector being associated with other qualities, such as speed or availability and, to a certain extent, youth, since many young people frequent that type of establishment’ (para. 57) The Court further stated that ‘the services covered by the mark applied for do not have any characteristic or quality capable of establishing the likelihood of detriment of that type to the earlier mark. The applicant neither cited, nor a fortiori proved, any characteristic or quality of that kind. The mere existence of a connection between the services covered by the conflicting marks is neither sufficient nor determinative. It is true that the existence of such a connection strengthens the probability that the public, faced with the mark applied for, would also think of the earlier mark. However, that factor is not, in itself, sufficient to diminish the earlier mark’s power of attraction. Such an outcome can arise only if it is established that the services covered by the mark applied for have characteristics or qualities that are potentially detrimental to the reputation of the earlier mark. Such evidence has not been adduced in the present case’ (para. 67).

Earlier mark Contested mark Case No

WATERFORD 23/11/2010, R 240/2004‑2, WATERFORD STELLENBOSCH Alcoholic beverages, namely (fig.) / WATERFORD Reputed for crystal products, wines produced in the including glassware in Class 21 Stellenbosch district, South Africa in Class 33

‘In the present case, on the one hand, it is not possible to attribute from the outset either any specific image to the reputed trade mark or any prima facie evidence of its tarnishment. On the other hand, the opponent has confined itself to pleading that “use and registration of the [contested] trade mark will take unfair advantage of the opponent’s trade mark”, without giving any evidence or prima facie evidence, even only by way of logical deductions, of such tarnishment. On the contrary, the Board finds no antagonism between either the nature or the way of using glassware and wine, such as that the use of the contested mark might tarnish the earlier mark’s image.’ (para. 91).

3.4.4 Proving the risk of injury

As stated in paragraph 3.4.1, any risk of injury to the earlier reputed mark must be proven separately. In opposition proceedings detriment or unfair advantage may be only potential, as confirmed by the conditional wording of Article 8(5) EUTMR, which requires that the use without due cause of the mark applied for ‘would take unfair advantage of, or be detrimental to the distinctiveness or repute of the earlier mark’. However, the fact that detriment or unfair advantage may be only potential does not mean that a mere possibility is sufficient for the purposes of Article 8(5) EUTMR. The risk of detriment or unfair advantage must be serious, in the sense that it is foreseeable (i.e. not merely hypothetical) in the ordinary course of events. Therefore, it is not enough to merely show that detriment or unfair advantage cannot be excluded in general, or that it is only remotely possible. The proprietor of the earlier mark must adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or of detriment (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53). Such a finding may be established, in particular, on the basis of logical deductions made from an analysis of the probabilities and by taking account of normal practice in the relevant commercial sector as well as of all the other circumstances of the case (10/05/2007, T‑47/06, Nasdaq, EU:T:2007:131, § 54, upheld on appeal 12/03/2009, C‑320/07 P, Nasdaq, EU:C:2009:146; 16/04/2008, T‑181/05, Citi, EU:T:2008:112, § 78; 14/11/2013, C‑383/12 P, Répresentation d’une tête de loup, EU:C:2013:741, § 42-43). As a rule, general allegations (such as merely citing the relevant EUTMR wording) of detriment or unfair advantage will not be sufficient in themselves for proving potential

detriment or unfair advantage: the opponent must adduce evidence and/or develop a cogent line of argument to demonstrate specifically how the alleged injury might occur, taking into account both marks, the goods and services in question and all the relevant circumstances. As such, the opponent cannot merely contend that detriment or unfair advantage would be a necessary consequence flowing automatically from use of the sign applied for, owing to the strong reputation of the earlier mark, since, otherwise, marks with reputation would enjoy blanket protection against identical or similar signs for virtually any kind of product. This would be clearly inconsistent with the wording and spirit of Article 8(5) EUTMR, because otherwise reputation would become the sole requirement, rather than being only one of several conditions. In any event, the precise threshold of proving the risk of injury will be determined case by case. For example, where there is a claim of taking unfair advantage, it cannot be ruled out that if the mark has a high reputation and there is a proven link, the risk of injury can be more readily established.

3.5 Use without due cause

The last condition for the application of Article 8(5) EUTMR is that use of the sign applied for should be without due cause. However, due cause is to be examined only if the other conditions of Article 8(5) EUTMR are fulfilled. Therefore, if it is established that none of the three types of injury exists, the registration and use of the mark applied for cannot be prevented, as the existence or absence of due cause for use of the mark applied for is, in those circumstances, irrelevant (22/03/2007, T-215/03, Vips, EU:T:2007:93, § 60; 07/07/2010, T-124/09, Carlo Roncato, EU:T:2010:290, § 51). The concept of ‘due cause’ is not defined in the EUTMR or in the TM Directive and must therefore be interpreted in the light of the overall scheme and objectives of the EUTM system (06/02/2014, C-65/12, Leidseplein Beheer and de Vries, EU:C:2014:49, § 27-28). In this regard, the purpose of the EUTMR is, inter alia, to balance the interest of the proprietor of a trade mark in safeguarding the essential function of its mark with the interests of other economic operators in having signs capable of denoting their goods or services. To maintain this balance, the more extensive protection afforded to trade marks with reputation under Article 8(5) EUTMR is not unconditional, and the interests of a third party in using a sign identical or similar to a reputed mark must be considered in the light of the possibility of claiming ‘due cause’. Where the proprietor of the mark with a reputation has demonstrated the existence of one of the risks of injury under Article 8(5) EUTMR, the onus is on the third party using a sign identical or similar to the reputed mark to establish that it has due cause for using such a sign (06/02/2014, C-65/12, Leidseplein Beheer and de Vries, EU:C:2014:49, § 39-44). Accordingly, the existence of a cause justifying use of the trade mark applied for is a defence that the applicant may raise. Therefore, it is up to the applicant to show

that it has due cause to use the mark applied for (see, to this effect, 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 39). In the absence of any indications in the evidence providing an apparent justification for the applicant’s use of the contested mark, lack of due cause must be generally presumed (29/03/2012, T-369/10, Beatle, EU:T:2012:177, § 76 and case-law cited therein; 14/05/2013, C-294/12 P, Beatle, EU:C:2013:300, dismissing the appeal). However, the applicant may avail itself of the possibility of rebutting such a presumption by showing that it has a legitimate justification that entitles it to use the mark. The concept of ‘due cause’ may not only include objectively overriding reasons but may also relate to the subjective interests of a third party using a sign that is identical or similar to the mark with a reputation (10/09/2025, T-425/24, pasta ZARA Sublime (fig.) / ZARA et al., EU:T:2025:849, § 97; 06/02/2014, C-65/12, Leidseplein Beheer and de Vries, EU:C:2014:49, § 45). When assessing if use by a third party of a sign identical or similar to a mark with reputation may constitute ‘due cause’, it is necessary to consider the intention of the person using the sign and if that use was in good faith. In particular, it must be established whether the use of the sign does not amount to an attempt to take advantage of the reputation of the earlier mark, but instead reflects a genuine extension of the range of goods or services offered by a third party who had already been using that sign prior to the filing date of the reputed trade mark (Opinion of Advocate General Szpunar of 13/11/2025, C‑298/23, Inter IKEA Systems, EU:C:2025:886, § 114; 06/02/2014, C-65/12, Leidseplein Beheer and de Vries, EU:C:2014:49, § 53-60). In the judgement of 10/09/2025, T-425/24, pasta ZARA Sublime (fig.) / ZARA (EU:T:2025:849, § 99), in view of the specific circumstances of the case, the General Court indicated that the use by a third party of a sign identical or similar to a reputed mark may, inter alia, constitute ‘due cause’ under Article 8(5) EUTMR in a situation where: 1. the contested sign had been used before the filing date of the reputed trade mark; and 2. such use was in good faith. Whether the use of the sign was in good faith is assessed by taking into account, in particular: how the sign has been accepted by, and what its reputation is with, the relevant

public; the degree of proximity between the goods or services for which the contested sign

had been used and the goods or services for which the reputed mark is registered; the economic and commercial significance of the use of the sign for the goods or

services in question. The General Court has further clarified that due cause is not conditional on a finding as to a specific degree of recognition, nor on a given level of investment, promotional effort or the enjoyment of a market share. It is part of an overall examination of all the relevant factors which seeks to determine whether the sign was actually being used on

the market before the reputed mark was filed and whether that use was in good faith (10/09/2025, T-425/24, pasta ZARA Sublime (fig.) / ZARA, EU:T:2025:849, § 111). Additionally, due cause may be found where the applicant establishes and proves that the use of the sign, or of an element thereof, is of a generic nature and is descriptive of the type of goods and services — whether by generic word or figurative elements. In such circumstances, it should be established that the sign, or the element thereof, is necessary for the marketing of the goods or services and that the applicant could not reasonably be required to refrain from the using it. The condition of due cause is not fulfilled merely by the fact that (a) the sign is particularly suitable for identifying the products for which it is used, (b) the applicant has already used this sign for these products or similar products within and/or outside the relevant territory of the European Union, or (c) the applicant invokes a right with a filing date which is prior to the earlier trade mark (inter alia 23/11/2010, R 240/2004-2, WATERFORD STELLENBOSCH (fig.) / WATERFORD; 15/06/2009, R 1142/2005-2, (fig.) MARIE CLAIRE (fig.) / MARIE CLAIRE et al.). Mere use of the sign is not sufficient — what must be shown is a valid reason justifying that use.

3.5.1 Examples of due cause

3.5.1.1 Due cause was accepted

Case No Comment

The General Court established due cause via an overall assessment of the facts and evidence to determine whether the sign was used on the market before the mark with a reputation was filed and if that use was in good faith. The Court took into account the earlier trade marks owned by the applicant in a significant number of territories in the EU, all of which were filed before any of the opponent’s marks. There was further proof that the applicant actively defended its trade marks, thus attesting the applicant’s efforts to protect its use of the signs. Moreover, the invoices, packaging, catalogues and leaflets submitted by the applicant 10/09/2025, T-425/24, pasta ZARA Sublime (fig.) / showed the marketing of pasta under the contested ZARA et al., EU:T:2025:849 sign in territories of the EU, which demonstrated a high degree of acceptance of the applicant’s marks in a significant part of the EU. The absence of closeness between the goods and services was also highlighted. In this regard, the Court reasoned that it is not necessary to have a specific degree of recognition on a given level of investment and promotional effort or on the enjoyment of a market share. Moreover, the applicant demonstrated that the use of ZARA was linked to its identity and history, given that this was the name of the city where the applicant established a pasta factory in the 1930s. The applicant had a due cause within the meaning of Article 8(5) EUTMR for inserting the term FLEX in the mark applied for, holding that this term was 02/06/2010, R 1000/2009‑1, GigaFlex / FLEX (fig.) free from monopolies, since nobody holds exclusive et al., § 72 rights in it and it is a suitable abbreviation, in many languages of the EU, to indicate that beds and mattresses are flexible.

Case No Comment

The applicant had two good reasons to use the name MARTINI in the mark applied for: (i) MARTINI 30/07/2007, R 1244/2006‑1, MARTINI FRATELLI is the family name of the founder of the applicant’s (fig.) / MARTINI company; and (ii) a coexistence agreement was signed in 1990.

The applicant had due cause to use the term SPAS as it corresponds to one of the generic uses of 20/04/2007, R 710/2006‑2, SPA et al. / CAL SPAS the term ‘spa’, as indicated in the judgment of 19/06/2008, T‑93/06, Mineral Spa, EU:T:2008:215.

The applicant had due cause to use the figurative element of a postal horn since that device is widely used as a long-standing and historical 25/08/2011, B 1 708 398, Posten AB v Česká pošta symbol of postal services (trade mark registrations s.p. and internet evidence were submitted showing 29 European countries use the postal horn as a symbol for their postal services).

3.5.1.2 Due cause was not accepted

Case No Comment

The earlier mark has an average degree of distinctiveness and may therefore be regarded as being neither descriptive nor devoid of distinctive character. Consequently, the word ‘joy’ has not become so necessary to the marketing of cosmetic 24/04/2024, T‑157/23, Joyful by nature / JOY et al., products that the EUTM applicant could not EU:T:2024:267 reasonably be required to refrain from using the mark applied for. There is no due cause for the use of the mark applied for, at the risk that its use could take advantage of the repute of the earlier mark (§ 91-93).

Case No Comment

In order to establish due cause, it is not use per se of the contested trade mark that is required, but a reason justifying use of the trade mark. In this case, the applicant merely claimed to have ‘demonstrated how and for which product the 06/07/2012, T‑60/10, Royal Shakespeare contested trade mark has been used in the past’ but, even assuming that that aspect is relevant, provided no additional indication or explanation. Accordingly, the applicant had not established due cause for such use.

There was no due cause, since it had not been shown that the word ‘spa’ had become so necessary to the marketing of cosmetic products that the applicant could not reasonably be required to refrain from use of the mark applied for. 25/03/2009, T‑21/07, Spaline, EU:T:2009:80 The argument that ‘spa’ was of descriptive and generic character for cosmetic products was rejected, since such character does not extend to cosmetic products ‘but only to one of their uses or destinations’.

The use of the trade mark Citi in just one EU Member State (Spain) could not constitute due cause because, first, the extent of geographical protection of the national trade mark did not correspond to the territory covered by the trade 16/04/2008, T‑181/05, Citi mark applied for, and, second, the legal validity of that national registration was subject to dispute before the national courts. By the same token, the ownership of the domain ‘citi.es’ was held to be irrelevant.

The only argument put forward before the Board of Appeal in respect of due cause (namely, that the 10/05/2007, T‑47/06, Nasdaq; confirmed word Nasdaq had been chosen because it is an 12/03/2009, C‑320/07 P, Nasdaq acronym for ‘Nuovi Articoli Sportivi Di Alta Qualità’) was not convincing, noting that prepositions are not generally included in acronyms.

Case No Comment

Contrary to the applicant’s arguments that there was due cause because the term WATERFORD was allegedly very common in names and trade marks, the Board held that the applicant had failed to give any evidence of market coexistence of WATERFORD marks or to submit any element from which it would be possible to infer that the relevant general public (in the UK) considers Waterford as a commonplace geographical name. To the extent that such arguments play a role in assessing the uniqueness of a sign in order to establish whether the necessary link exists in the 23/11/2010, R 240/2004‑2, WATERFORD mind of the relevant public between the signs at STELLENBOSCH (fig.) / WATERFORD issue, the Board held that, nevertheless, once such uniqueness had been established, such arguments cannot serve as due cause. The condition of due cause is not fulfilled merely by the fact that (a) the sign is particularly suitable for identifying the products for which it is used, (b) the applicant has already used the sign for these products or similar products within and/or outside the relevant territory of the European Union, or (c) the applicant invokes a right ensuing from a filing over which the filing of the opponent’s trade mark takes precedence.

The fact that the applicant’s forename is Kenzo is not enough, for the purposes of Article 8(5) 22/01/2015, T‑322/13, KENZO EUTMR, to constitute due cause for use of the mark applied for.

Case No Comment

The applicant’s claim (unsubstantiated by any evidence) that the sign TISSOT is derived from the name of a trading company associated with the applicant’s company since the early 1970s, would, even if proven, not amount, on its own, to ‘due cause’ within the meaning of Article 8(5) EUTMR. 06/10/2006, R 428/2005‑2, TISSOT / TISSOT People who inherit a surname that happens to coincide with a famous trade mark should not assume that they are entitled to use it in business in a manner that would unfairly take advantage of the reputation that has been built up by the efforts of the brand owner.

The argument that GRAMMY is an easy and nice-sounding abbreviation of the applicant’s family 18/08/2005, R 1062/2000‑4, GRAMMY / GRAMMY name (Grammatikopoulos) was insufficient to establish due cause.

Case No Comment

Due cause under Article 8(5) EUTMR means that, notwithstanding the detriment caused to, or unfair advantage taken of, the distinctive character or reputation of the earlier trade mark, registration and use by the applicant of the mark for the goods applied for may be justified if the applicant cannot be reasonably required to abstain from using the contested mark, or if the applicant has a specific right to use the mark for such goods that takes precedence over the earlier trade mark invoked in the opposition proceedings. In particular, the condition of due cause is not fulfilled merely by the fact that (a) the sign is particularly suitable for identifying the products for which it is used, (b) the applicant has already used the sign for these products or similar products within and/or outside 15/06/2009, R 1142/2005‑2, MARIE CLAIRE (fig.) / the relevant territory of the EU, or (c) the applicant MARIE CLAIRE et al. invokes a trade mark with a filing date that is earlier than the opponent’s trade mark (decision of 25/04/2001, R 283/1999‑3, HOLLYWOOD). As regards the tolerance of the proprietor of the earlier mark, the Board held that such tolerance was merely for magazines and not for goods closer to its market sector (i.e. textiles). It noted that national case-law showed that while protection exists for each party within its own field of business, extension should be refused when they come closer to the other party’s field of activities and could infringe upon their rights. In light of these factors, the Board held that the coexistence did not constitute due cause permitting registration of a EUTM.

Case No Comment

Regarding the applicant’s argument that it has due cause to use the mark applied for (Citigate), because it has used a variety of marks consisting of or containing Citigate in relation to the goods and services for which registration is sought, the Court stated the following: it should be noted that the documents produced by the applicant simply show that there are various companies whose business name contains the word Citigate and a number of domain names that also contain that word. That evidence is not sufficient to establish due cause, because it does not demonstrate actual use of the Citigate mark. 26/09/2012, T‑301/09, Citigate, § 116, 125 and 126 As regards the applicant’s argument that it has due cause to use the mark applied for since

the interveners have acquiesced to the use

of Citigate in relation to the goods and services covered by the application for registration, the Court stated that the possibility cannot be

excluded that, in certain cases, the coexistence of earlier marks on the market could reduce (…) the likelihood of a connection being made between two marks in accordance with Case No Comment

The applicant argued that the marks at issue have, with the opponent’s acquiescence, coexisted for a number of decades. However, in order to constitute due cause, the use of the mark applied for must satisfy a number of conditions. The applicant´s argument cannot succeed where 01/03/2018, T‑629/16, DEVICE OF TWO the contested mark has not been used: PARALLEL STRIPES (other) / DEVICE OF THREE (i) throughout the relevant territory, (ii) peacefully PARALLEL STRIPES (fig.) et al., EU:T:2018:108, and (iii) in good faith. § 192, 207‑212 In the present case the use of the slogan ‘two stripes are enough’ reveals that the use of the contested mark has already given rise to at least one attempt to take advantage of the repute of the earlier mark. Therefore, the use of the contested mark could not be regarded as having always been in good faith.