Trade Marks With Reputation

Trade marks with reputation
OPPOSITION GUIDELINES
Part 5

Article 8(5) CTMR
Opposition Guidelines, Part 5, Article 8(5) CTMR - Status: March 2004 Page 1
INDEX
PART 5: TRADE MARKS WITH REPUTATION ......................................................... 3
I. INTRODUCTION........................................................................................... 3
1. Relevant provisions ....................................................................................... 3

2. The state of case-law .................................................................................... 4
II. SCOPE OF APPLICATION ........................................................................... 5
1. Applicability to registered marks ................................................................... 5

1.1. The requirement of registration............................................................... 5
1.2. Borders with Article 8(2)(c) CTMR.......................................................... 6
2. Applicability to similar goods & services........................................................ 7
III. CONDITIONS OF APPLICATION ................................................................. 9
1. Earlier mark with reputation .......................................................................... 9

1.1. Nature of reputation ................................................................................ 9
1.2. Scope of reputation............................................................................... 11
1.2.1. Degree of recognition.................................................................. 11
1.2.2. Relevant public ........................................................................... 12
1.2.3. Goods and services covered ...................................................... 13
1.2.4. Relevant territory......................................................................... 13
1.2.5. Relevant point in time ................................................................. 15
1.3. Assessment of reputation Relevant factors ....................................... 16
1.3.1. Trade mark awareness ............................................................... 17
1.3.2. Market share ............................................................................... 18
1.3.3. Intensity of use............................................................................ 19
1.3.4. Geographical extent of use ......................................................... 20
1.3.5. Duration of use............................................................................ 21
1.3.6. Promotional activities .................................................................. 21
1.3.7. Other factors ............................................................................... 22
1.4. Proof of reputation ................................................................................ 24
1.4.1. Standard of proof ........................................................................ 24
1.4.2. Burden of proof ........................................................................... 24
1.4.3. Evaluation of the evidence.......................................................... 25
1.4.4. Means of evidence...................................................................... 26
2. Identity similarity of signs ......................................................................... 33
3. Detriment Unfair advantage ..................................................................... 35
3.1. Protected subject-matter....................................................................... 35
3.2. Assessment of detriment unfair advantage ....................................... 36
3.3. Forms of detriment unfair advantage................................................. 37
3.3.1. Detriment to distinctiveness ........................................................ 37
3.3.2. Detriment to repute ..................................................................... 38
3.3.3. Taking unfair advantage of distinctiveness ................................. 40
3.3.4. Taking unfair advantage of repute .............................................. 41
3.4. Proof of detriment unfair advantage .................................................. 42
3.4.1. Standard of proof ........................................................................ 42
3.4.2. Burden of proof ........................................................................... 43
3.4.3. Means of evidence...................................................................... 44
4. Use without due cause................................................................................ 44
PART 5: TRADE MARKS WITH REPUTATION
I. INTRODUCTION
1. Relevant provisions
According to Article 8(5) CTMR upon opposition by the proprietor of an earlier

trade mark, within the meaning of paragraph 2, the trade mark applied for
shall not be registered:
where it is identical with or similar to the earlier trade mark and is to be
registered for goods or services which are not similar to those for which
the earlier trade mark is registered, where in the case of an earlier
Community trade mark the trade mark has a reputation in the
Community and, 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 provisions of the Trade Mark
Directive (First Council Directive 89/104/EEC of 21 December 1988 to
approximate the laws of the Member States relating to trade marks, TMD),
namely Article 4(3) TMD, which deals with the protection of Community trade
marks with reputation, and Article 4(4)(a) TMD, the equivalent provision for
national marks. Even though the implementation of Article 4(4)(a) TMD was
optional, all the Member States have in fact adopted provisions granting
enlarged protection to national marks with reputation.
However, even in the hypothetical case that an acceding Country decides not
to enact an equivalent provision in its trade mark law, the independent
reference to national marks with reputation in Article 8(5) CTMR means that
they are directly protected at Community level, i.e. irrespective of whether the
national law grants them enlarged protection.
The wording of Article 8(5) CTMR is also very similar to the one used in
Articles 9(1)(c) CTMR and 5(2) TMD, i.e. the provisions determining the
exclusive rights of a trade mark proprietor, with a slight difference in the way
these refer to the condition of detriment: unlike the conditional form used by
Article 8(5), which applies where use of the application would take unfair
advantage of, or be detrimental to the distinctiveness or repute of the earlier
mark, Articles 9(1)(c) CTMR and 5(2) TMD read takes unfair advantage of
or is detrimental to. The reason for this difference is that in the first case
Article 8(5) CTMR registrability is at issue which may have to be decided
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 section

III.3.3.1. below.
2. The state of case-law
The European Court of Justice has dealt so far with the protection of marks
with reputation in two preliminary rulings delivered in the context of the TM
Directive. In case C-375/97, General Motors v Yplon S.A., (General Motors),
the question put to the Court concerned the meaning of the term
reputation in the context of Article 5(2) TMD, whereas in case C-292/2000,
Davidoff & Cie SA, Zino Davidoff SA v Gofkid Ltd. (Davidoff), it concerned
the scope of protection afforded to marks with reputation and, more
particularly, the applicability of Article 5(2) TMD to similar goods and
services.
In view of the limited scope of the questions referred to the Court, the above
judgements did not proceed to a full-scale interpretation of Article 5(2) TMD,
saying little or nothing about similarity, detriment, unfair advantage or due
cause. Thus, they are authority only for the issues they directly address,
namely the nature, scope, territorial extent and way of assessment of
reputation.
Furthermore, there are the two opinions of Advocate General Jacobs in the
above cases, as well as the opinion of Advocate General Ruiz-Jarabo
Colomer in case C-206/2001, Arsenal Football Club plc v Mathew Reed
(Arsenal), which go somewhat further in the analysis of Article 5(2) TMD.
Even though opinions of Advocates General are not binding, they are useful
to the extent they provide a source of arguments and suggestions for the
interpretation and further development of the law.
Also the decisions of the Boards of Appeal are still limited in number. Only
a few decisions have dealt with the interpretation of Article 8(5) thoroughly,
whereas others only deal with specific aspects of the protection afforded to
marks with reputation.
Thus, these Guidelines are supported by authority only in some aspects,

whereas in others the current practice is developed by following standard
rules of statutory interpretation. The position taken in the text as regards the
latter issues will be adapted as the case law of the Boards of Appeal, the CFI
and ECJ develop.
II. SCOPE OF APPLICATION
The wording of Article 8(5) CTMR has given rise to some controversy as
regards its applicability exclusively to (a) earlier registered marks and (b)
dissimilar goods and services. As these issues directly affect the scope of its
application, it should be clarified at the outset whether it is possible to also
apply Article 8(5) to (a) unregistered/well-known marks and (b) similar goods
and services.
1. Applicability to registered marks
1.1. The requirement of registration
Article 8(5) specifies the kinds of earlier rights on which an opposition may
be based by reference to paragraph 2 of the same Article, which, apart from
Community, international, Benelux and national registrations or applications,
includes earlier well-known marks within the meaning of Article 6bis of the
Paris Convention, that is, marks that may, or may not be registered.
It has been argued that, as a consequence of this reference, Article 8(5)

should also apply to unregistered marks, at least to the extent that these have
become well-known in the relevant territory, all the more so since the
protection of well-known marks against dissimilar goods and services is
favoured both by the WIPO Joint Recommendation Concerning Provisions on
the Protection of Well-Known Marks (WIPO Recommendations) and by Article
16(3) TRIPS.
However, such an interpretation cannot be sustained by the wording of Article

8(5) which indirectly but clearly restricts its applicability to earlier registered
marks, by prohibiting registration where [the application] is identical or similar
to the earlier trade mark and is to be registered for goods and services that
are not similar to those for which the earlier trade mark is registered. It
follows that the existence of an earlier registration is a necessary condition
for the application of Article 8(5) and that, as a consequence, the reference to
Article 8(2) should be limited to earlier registrations and to earlier applications
subject to their registration.
Such a restrictive approach is not incompatible with Article 16(3) TRIPS, the
wording of which also refers to an earlier registration in a very similar manner:
Article 6bis PC shall apply, mutatis mutandis, to goods or services which are
not similar to those in respect of which a trademark is registered, provided
that use of the of that trademark would indicate a connection between
those goods or services and the owner of the registered trademark and
provided that the interests of the owner of the registered trade mark are
likely to be damaged by such use.
Nor can this view be excluded by the fact that the WIPO Recommendations
do not impose any conditions for granting extended protection to earlier well-
known marks as they are not binding for the interpretation of the CTM
Regulation.
Therefore, Article 8(5) CTMR only applies to earlier Community, international,

Benelux and national registrations, as well as to earlier applications, subject to
their registration.
1.2. Borders with Article 8(2)(c) CTMR
The requirement of registration thus serves to mark the borders between

Articles 8(5) and 8(2)(c) CTMR in the following manner:
On the one hand, well-known marks which are not registered in the
relevant territory, cannot be protected under Article 8(5) against dissimilar
goods. They can only be protected against identical or similar goods
pursuant to Article 8(1)(b), to which Article 8(2)(c) refers for determining the
scope of protection.
However, this is without prejudice to the fact that well-known marks, to the
extent they are not registered, are also protected under Article 8(4) CTMR.
Thus, if the relevant national law affords protection to them against dissimilar
goods and services, such enhanced protection may also be invoked under
Article 8 (4).
On the other hand, where well-known marks have been registered, either as
CTMs, or as national marks in one of the member States, they can be
invoked under Article 8 (5), 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, as shown by a comparison of the way
well-known marks are defined in the WIPO Recommendations, with the way
reputation has been described by the Court in General Motors.
Thus, it will not be unusual for a mark which has acquired well-known
character, to have also reached the threshold laid down by the Court in
General Motors as regards 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 at the relevant sector of the public1 for well-known marks, as against
known by a significant part of the relevant public as regards marks with
reputation).
The overlap between marks with reputation and registered well-known marks
has a repercussion on the raising of the ground of opposition, in the sense
that it should not matter for the applicability of Article 8(5) if the opponent calls
1
Article 2(2)(b) and 2(2)(c) of the WIPO Recommendations.
his 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.
For example, if the opponent bases the opposition (a) on an earlier

registration and (b) on an identical earlier well-known mark in the same
territory and grounds it on Articles 8(1)(b), 8(2)(c) and 8(5) CTMR, the earlier
right must be examined (a) under Article 8(1)(b) as an earlier registration with
enhanced distinctiveness (in view of its well-known character) (b) under
8(2)(c) as an earlier well-known mark (which will only be useful if registration
is not proved, as otherwise the outcome is the same) and (c) under Article
8(5), as a mark with reputation, even if reputation was not claimed expressly.
R 799/1999-1 RODIO / RHODIA (FIG MARK) (EN)
Even if the opponent has not expressly grounded his opposition on Article 8(5)
CTMR, the contents of the notice (especially as regards the relationship
between the goods) and of the explanation of grounds must be carefully
analysed with a view to ascertaining whether the real intention of the
opponent was to also rely on this ground.
2. Applicability to similar goods & services
The literal interpretation of Article 8(5) leads to the prima facie conclusion
that it only applies to dissimilar goods and services, as its wording
provides that the mark applied for will not be registered where it is identical
with, or similar to, the earlier trade mark and is to be registered for goods and
services which are not similar to those for which the earlier trade mark is
registered. Based on such an interpretation, a number of decisions of the
Opposition Division have regarded the dissimilarity of goods and services as a
necessary condition for the application of Article 8(5).
2096/2001 BUKO/BUKO (EN), 1458/2001 DB(fig)/db SYSTEME (EN),

1490/2001 EXIT/XITE (EN), 2094/2001 DALSY DAYSIR (EN), 1844/2001 JP
JESUS DEL POZO/JP JEAN PASCALE (EN)
However, the above interpretation has been strongly criticised for leaving a
gap in the protection of marks with reputation, because if protection may be
granted under Article 8(5) where the goods are not similar, it would seem
inconsistent to deny its application to similar goods where the rest of its
requirements are fulfilled and Article 8(1)(b) does not apply because there is
no likelihood of confusion. In such a case trade mark owners would get more
protection in the less dangerous case. For this reason, it has been suggested
that Article 8(5) should also apply, directly or by analogy, where the goods are
identical or similar.
This question was referred to the Court of Justice for a preliminary ruling in
the context of the Davidoff case, cited above.
The Opinion of Advocate General Jacobs gave the principal arguments in

support of each view and suggested to limit the protection afforded by Articles
4(4)(a) and 5(2) TMD only to cases where the goods and services of the
later mark are not similar to those of the earlier mark. The Advocate General
considered that it was the intention of the legislator to limit the special
protection granted to marks with reputation to dissimilar goods and that there
is no real gap in the law worthy of interpreting the text in a manner contrary
to its express wording.
Even though he admitted that there might be isolated instances where it will
not be possible to apply Article 8(1)(b), he argues that in the great majority of
cases there will also be likelihood of confusion, at least in the broad sense of
the term (belief that an economic link exists between the undertakings
producing the goods). He also feared that the application of Article 8(5) to
similar goods would blur the clear outlines of the protection afforded by Article
8(1)(b), which is based essentially on the existence of likelihood of confusion,
by allowing in certain circumstances a concurrent or alternative protection
based on other criteria and thus entailing legal uncertainty.
However, the Court did not follow the suggestions of the Advocate General
and came to the conclusion that Articles 4(4)(a) and 5(2) TMD should be
interpreted as entitling the Member States to provide specific protection for
trade marks with a reputation in cases where the later mark is intended to
be used or is used for goods or services identical with or similar to those
covered by the earlier mark.
In reaching this conclusion, the Court observed that Article 5(2) TMD must not
be interpreted solely on the basis of its wording, but also in the light of the
overall scheme and objectives of the system of which it is a part. Thus, it
cannot be interpreted in a manner which would lead to marks with a reputation
having less protection where a sign is used for identical or similar goods or
services. The Court justified this approach as the only one consistent with its
interpretation of Articles 4(1)(b) and 5(1)(b) TMD, by referring to its findings in
Sabel and Marca Mode, where it excluded a broad interpretation of the notion
of confusion.
So far, the Opposition Division has not dealt with cases where the signs were
similar, the goods were identical or similar, the earlier mark had a reputation,
but a likelihood of confusion could not be established. Indeed, as the
Advocate General also pointed out, such a scenario will be quite exceptional.
However, as this possibility cannot be ruled out completely, if such a case

arises the principles laid down in Davidoff must be followed, by examining
whether the proprietor of the earlier mark may have a legitimate interest in
protecting the distinctiveness and the repute of his mark under Article 8(5).
III. CONDITIONS OF APPLICATION
The following conditions need be met for Article 8(5) to apply:
(1) Earlier registered mark with reputation in the relevant territory;

(2) Identity or similarity between the contested CTM 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 a use must be without due cause.
This also reflects the order the relevant requirements are usually examined in
the decisions of the Opposition Division. However, the examination often
starts with the assessment of the similarities between the signs, especially in
cases where there is little or nothing to say about it, either because the marks
are identical, or because they are patently similar or dissimilar.
105/1999 HOLLYWOOD / HOLLYWOOD (FR), 1108/1999 SNICKERS /

SNACCOS (EN), 1142/1999 CAPTAIN BIRDS EYE / EL CAPITAN
PESCANOVA (EN), 1224/1999 (fig. DEUTSCHE BANK LOGO) / ARMATIC
(fig.) (EN), 314/2000 SEMCO / Semco (EN)
1. Earlier mark with reputation
1.1. Nature of reputation
The nature and scope of reputation are not defined by either the CTM
Regulation, or the TM Directive. Furthermore, the terms used in the different
language versions of these texts are not fully equivalent to each other, which
has led to considerable confusion as to the true meaning of the term
reputation, as admitted in paragraphs 34-36 of the Opinion of Advocate
General Jacobs in General Motors.
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 TM Directive
implies a sufficient degree of knowledge of the earlier mark among the
public and explained that it is only where there is a sufficient degree of
knowledge of the mark that the public, when confronted with a later trade
mark, may possibly make an association between the two marks, and the
earlier mark may consequently be damaged.
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 (General Motors, paragraphs

22, 23).
2333-2000 TELEFONICA ON LINE / T-ONLINE (EN)
Such an interpretation of reputation diverges from what was supported by the

case-law and jurisprudence of several Member States under the regime that
preceded the adoption of the TM Directive (in addition to the mark being
known among the public at large, it was often required that the mark should
also enjoy a high degree of inherent distinctiveness, uniqueness, prestige,
quality image etc.). Thus, by exclusively focusing on the degree of
knowledge of the mark, the Court has in fact simplified the test of
reputation, compared to what was often needed in the past for accepting that
a mark enjoys a reputation.
Moreover, if reputation is to be assessed on the basis of quantitative criteria,

arguments or evidence relating to the esteem that the public might have for
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). However, as the economic value of reputation is also
the protected subject-matter of this provision, any qualitative aspects
thereof are of relevance when assessing the possibility of detriment or unfair
advantage (see also section III.3.3.1. below).
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC/FAMILY

CLUB BELMONT OLYMPIC (EN), 278/2000 SEPHORA/SEPHORA (fig.) (EN)
Article 8(5) 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, e.g. simply because it refers to a renowned
person or event, but only in connection with the goods and services it
designates and the use that has been made of it.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN)
For example, the fact that the famous pop artist Andy Warhol saw some
artistic value in the packaging of Campbells soup, is not sufficient in itself for
establishing that the mark enjoys reputation within the meaning of 8(5), and
this irrespective of the success and renown of the painting as a work of art.
1243/2000 CAMPBELLS et al./CAMPBELL CATERING (EN)
It should also be noted that the kind of market recognition required for marks
which have acquired enhanced distinctiveness through use in the context
of Article 8(1)(b), and for well-known marks within the meaning of Article 6bis
PC, is of the same character as reputation, in that it is principally based on
quantitative considerations regarding the degree of knowledge the mark has
acquired among the public, without prejudice of course to the level of
threshold required in each case. This is supported both by the case-law of the
Court (in particular the judgments in Lloyds and Chiemsee), and by the WIPO
Recommendations on the protection of well-known marks, which describe the

nature of the respective notions in very similar terms.
1.2. Scope of reputation
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 Court held in
this respect that 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 and added that it cannot be inferred either from the letter or the spirit
of Article 5(2) of the TM Directive that the trade mark must be known by a
given percentage of the public (General Motors, paragraphs 25, 26).
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 section III.1.3. below.
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), 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
necessary condition for the application of Article 8(5) and enhanced
distinctiveness through use as factor for the evaluation of likelihood of
confusion for the purposes of Article 8(1)(b).
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 such a threshold is absent. 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). Thus, a finding of reputation
under Article 8(1)(b) will not necessarily be conclusive for the purposes of
Article 8(5).
1509/2001 CAPTAIN BIRDS EYE/ CAPTAIN BYRD APERO (fig) (EN),

1807/2001 BREEZE/ARIZONA BREEZE (EN)
1.2.2. Relevant public
In defining the kind of public that should be taken into account for the
assessment of reputation, the Court held that the public amongst which the
earlier trade mark must have acquired a reputation is the public that is
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. (General Motors, paragraph 24).
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 are
exclusively destined to professional or industrial use, the relevant public will
be limited to the specific purchasers of the products in question.
66/2000 MAGEFESA(fig)/MAGEFESA(fig) (ES), 726/2001 LA MOLINERA/LA

MOLISANA (EN), 2096/2001 BUKO/BUKO (EN)
In addition to the actual buyers of the relevant goods, the notion of relevant
public also 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, as for example sports fans in relation to athletic gear, or regular air-
travellers as regards the various air carriers etc.
102/1999 NIKE /NIKE (ES), 1381/1999 AIR ONE/AIR ONE (IT), R 472/2001-1
BIBA/BIBA (FR)
Quite often, a given product will concern various purchaser groups with
different profiles, as in the case of multipurpose goods, or of goods that are
handled by several intermediates before they reach their final destination
(distributors, retailers, end-users). In such cases the question arises whether
reputation has to be assessed within each separate group, or if it should cover
all different types of purchaser. The example given by the Court (traders in a
specific sector) implies that reputation within one single group may suffice. It
should also be noted that the same approach is taken in the WIPO
Recommendations as regards well-known marks.
Likewise, if the earlier trade mark is registered for quite heterogeneous goods
and services, different kinds of public might be concerned by each type of
goods, and, thus, the overall reputation of the mark will have to be assessed
separately for each category of goods involved.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC(fig.) (EN),

621/2001 F1 FORMULA 1(fig.)/F1 FORMULA 1 (fig.) (EN)
It should be stressed that the foregoing only deal with the kind of public to be
taken into account in assessing whether the earlier mark has reached the
threshold of reputation laid down by the Court in 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 section III.3.2 below.
1.2.3. Goods and services covered
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 in relation to all of them, as for some of these goods it may
not have been used at all, whereas for others it may not have reached the
degree of knowledge necessary for the application of Article 8(5).
Hence, if the evidence shows that the earlier mark enjoys partial reputation,
i.e. 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), and consequently, it is only these goods that may be taken into
account for the purposes of the examination.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC(fig.) (EN),

621/2001 F1 FORMULA 1(fig.)/F1 FORMULA 1 (fig.) (EN)
1.2.4. Relevant territory
According to Article 8(5) CTMR, the relevant territory for establishing the
reputation of the earlier mark is determined by reference to 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 CTMs the relevant territory is the
European Union.
In 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 it.
For the Benelux territory in particular, the Court held that a substantial part
thereof may consist of a part of one of the Benelux countries (General
Motors, paragraphs 28-29).However, the Court has not elaborated on what
may be considered as a substantial part of the relevant territory.
In the absence of a more detailed definition, 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.
Even though earlier CTMs are not directly covered by the above judgment,
the rule that the earlier mark cannot be required to have a reputation
throughout the entire territory in which it is registered must equally apply to
them, as there seems to be no reason why Community trade marks should be
treated differently in this respect. Thus, a reputation in a substantial part of
the Community should be sufficient.
However, it is not yet clear whether the territory of one Member State or a
substantial part thereof may be considered as a substantial part of the
Community, as the proportions change considerably between the Benelux
countries and the whole of the European Union, rendering thus the drawing of
analogies less appropriate.
On the other hand, there are two strong policy arguments in favour of the
proposition that at least the territory of a Member State should suffice,
namely the need to ensure at least the same level of protection for CTMs as
for national marks (otherwise the CTM system would be less attractive to
trade mark owners), and the necessity of giving Article 8(5) the same territorial
scope as Article 8(1)(b) (if confusion in one Member State suffices for the
rejection of a CTM application, reputation should not be treated any
differently). This approach will be followed until this issue is further clarified by
higher instances.
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
opponents claim must be examined with regard to the relevant territory.
102/1999 NIKE /NIKE (ES), 1762/2001 NIKKEI/NIKKEI (EN)
Similarly, the submitted evidence must specifically concern the relevant

territory. For example, if the evidence relates to Japan for instance, or to
regions not specifically defined, it will not be able to show reputation in the
Community or in a Member State. Thus, figures concerning sales in the
Community as a whole, or world-wide sales, are not apt 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
proved for the relevant territory if it is to be taken into account.
R 799/1999-1 RODIO / RHODIA (FIG MARK) (EN), 81/2000 OLYMPIC /

FAMILY CLUB BELMONT OLYMPIC (EN), 373/2000 INDIGO / INDIGO (EN),
516/2000 AQUARIUS / AQUARIUS (EN), 1762/2001 NIKKEI / NIKKEI (EN),
1112/2001 CHAMPION USA / CHAMP (EN)
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 re-enforce the finding of reputation in the territory of
protection.
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 CTM application, taking account, where
appropriate, of any priority claimed, on condition of course that such a claim
has been accepted by the Office.
1807/2001 BREEZE/ARIZONA BREEZE (EN); 2096/2001 BUKO/BUKO (EN)
In addition, the reputation of the earlier mark must subsist until the decision on
the opposition is taken. However, it will be in principle sufficient for the
opponent to show that his mark already had a reputation on the filing/priority
date of the CTM 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), which encompasses earlier
applications by reference to Article 8(2). 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 is reached in
an exceptionally rapid way. Also, the application may be for a mark which was
already in use long before the application was filed, and has had sufficient
time to acquire a reputation. In any event, as the effects of the registration are
retroactive, the applicability of Article 8(5) to earlier applications cannot be
regarded as a deviation from the rule that Article 8(5) only applies to earlier
registrations, as concluded in section II.1.1.1 above.
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. For
this reason, the materials filed with a view to proving reputation must be
dated, or at least clearly indicate when the facts attested therein took place.
It follows that undated documents, or documents bearing a date added
afterwards (e.g. hand-written dates on printed documents) will not be apt for
giving reliable information about the material time.
2195/2000 TC (FIG) / TC (FIG) (EN)
If the period elapsed between the latest evidence of use and the filing of the
CTM 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 issued every quarter, and this factor 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 knows rapid growth, as well as rapid demise, which
means that reputation in this area may be diluted faster than in other market
sectors.
62-2001 NEXT/NEXT EYE (EN), 1562/2002 LINEONE/Link One (EN)
A similar question arises in the case of evidence that post-dates the filing
date of the CTM application. Even though such evidence will not usually be
sufficient on its own to prove that the mark had acquired a reputation when
the CTM 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 level of sales and
advertising expenditure was maintained before such opinion poll was carried
out).
531/2001 TELETHON/TELETOON (EN), 2101/2001 PYLORISET/Pyloritek,

1272/2002 TODS(fig.)/TODS (EN)
1.3. Assessment of reputation Relevant factors
Apart from indicating that it cannot be inferred either from the letter or the
spirit of Article 5(2) of the TM Directive that the trade mark must be known by
a given percentage of the public, the Court also held that all relevant facts
must be taken into consideration in assessing the reputation of the earlier
mark, and in particular the market share held by the mark, the intensity,
geographical extent and duration of its use, and the size of investment
made by the undertaking in promoting it (General Motors, paragraphs 25 and
27).
If these two statements are taken together, it follows that the level of
knowledge required for the purposes of Article 8(5) 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.
Moreover, the relevant factors should be assessed not only with a view to
establishing the degree of recognition of the mark by the relevant public, but
also in order to ascertain 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 CTM
application.
It should also be noted that the same kind of test is applied for ascertaining
whether the trade mark has acquired enhanced distinctiveness through use
for the purposes of Article 8(1)(b), or whether the mark is well-known within
the meaning of Article 6bis of the Paris Convention, since the subject-matter of
proof in all these cases is in substance the same, namely the degree to which
the mark is known by the relevant public.
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 for, or that they should be
given a lower probative value in, the assessment of reputation. It only implies
that percentages of awareness defined in the abstract may not be appropriate
for all cases and that, as a consequence, 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.
Thus, even though not expressly listed by the Court among the factors to be
taken into account for the assessment of reputation, the degree of
recognition of the mark by 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), 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 however 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 for the proof of reputation. For example, percentages showing a
degree of awareness between 87% and 97% of the interviewed persons, have
been regarded as decisive for a finding of reputation, without this meaning
that the relevant threshold should always be set so high.
R 802/1999-1 DUPLO/DUPLO, 1389/1999 YVES ROCHER/YVES ROCHE

(FR), 531/2000 GALP / GALP FOR INIMITABLE PEOPLE (FIG) (EN),
3215/2000 MON CHERI/MONTXERI (EN), 531/2001 TELETHON/TELETOON
(EN), 1082/2001 KINDER/KINDER EM-EUKAL (EN)
Where the evidence shows that the mark only enjoys a lesser degree of
recognition, it should not be automatically assumed that the mark is reputed,
which means that, most of the time, mere percentages will not be
conclusive in themselves. In such cases, only if the evidence of awareness is
coupled with sufficient indications as to 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.
1243/2000 CAMPBELLS/CAMPBELL CATERING (EN), 1246/2000

MONTE/MONTE VERITAS (EN), 1756/2000 EUROBAIT/EUROBAITS (EN),
1969/2000 Club Med /Euro Med (EN), 1509/2001 CAPTAIN BIRDS
EYE/CAPTAIN BYRD APERO (EN), 1527/2001 VIA DIGITAL/VIA PLUS (ES),
441/2002 BEBE/BB (EN), 1272/2002 TODS(fig.)/TODS (EN)
1.3.2. Market share
The market share enjoyed by the products offered or sold under the mark
and the position it occupies in the market, are valuable indications for the
assessment of 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 competitive products.
By market share is understood 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 such goods and services are narrower than those for
which the mark has been registered, a situation of partial reputation arises,
similar to the one existing 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 been actually
used and acquired a reputation will be taken into account for the purposes
of the examination.
Thus, 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 which suffice on their own to support such a claim.
2273/2000 BeachLife (fig) / BEACHLIFE (EN), 638/2001 MENTADENT /

MEDIDENT (EN)
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 actual buyers of the
relevant goods, as for example in the case of goods that are normally used by
more than one user (e.g. family magazines or newspapers), or of 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 given in the evidence should be
assessed taking into account the particularities of the specific market.
R 472/2001-1 BIBA/BIBA (FR)
In certain cases it will not be easy to define the market share of the earlier
mark, as for example when the exact size of the relevant market cannot be
measured accurately, owing to peculiarities of the products or services
concerned. In such cases, other similar indications may be of relevance,
such as TV audience rates, as in the case of car-racing events and other

spectacles of athletic or cultural nature.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN), 621/2001 F1

FORMULA 1 (fig.)/ F1 FORMULA 1 (fig.) (EN)
1.3.3. Intensity of use
The intensity of use of a mark may be shown by reference to the volume of

sales (i.e. the number of units sold) and the 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 effected in one year, but there may be
cases where the time unit used is different.
In evaluating the importance of a given turnover or volume of sales, 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.
66/2000 MAGEFESA(fig)/MAGEFESA(fig) (ES)
Moreover, whether or not a given volume of sales or amount of turnover is

substantial will depend on the kind of product concerned. For example, it is
much easier to achieve a high volume in the case of every-day, mass-
consumption goods, than in the case of luxurious 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 volume of sales or
amount of turnover.
Figures of turnover and sales will be more useful as indirect indications that
should be assessed in conjunction with the rest of the evidence, rather 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.
On the other hand, 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 terms of money, so that his percentage in it may be
inferred.
958/1999 GRANTS/JOHN GRANT (EN), 1433/1999 OCEAN PEARL/OCEAN

PEARL (EN)
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 volume of
sales may, in certain cases, be decisive for a finding of reputation, either
alone, or in conjunction with very little other evidence.
However, as this would be a deviation 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 that would really
justify such an assumption.
R 303/2000-2 MAGEFESA/MAGEFESA (ES), R 472/2001-1 BIBA/BIBA (FR)
1.3.4. Geographical extent of use
Indications about 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, in the sense given in section 1.2.3
above. In this exercise, account should also be taken of the density of
population in the respective areas, as the ultimate criterion is the proportion of
consumers knowing the mark, rather than the size of the geographical area as
such. Similarly, what is important is awareness of the public of the mark rather
than availability of products or services. A mark may therefore have a
territorially wide-spread 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 sign in
the direction 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.
726/2001 LA MOLINERA/LA MOLISANA (EN)
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 a
knowledge may be generated by e.g. intensive advertising prior to the
launching of a new product, or in the case of important cross-border shopping
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 in fact demonstrate this. For
example, it cannot be assumed, merely because of the principle of free trade

in the European Union, that goods put in the market in Member State X have
also penetrated the market of Member State Y in significant numbers.
1407/2001 IBUTOP/IBUSOL (EN)
1.3.5. Duration of use
Indications as to 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
bigger will be the number of consumers that is likely to have come into contact
with it, and the more likely it is that such consumers will have been exposed to
the mark more than once. For example, a market presence of 45, 50 or +100
years has been considered a strong indication of reputation.
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 2/2000 PLANETA/PLANET-X

(ES), 81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN)
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.
Thus, where the opponent invokes actual use, going beyond the term of
registration, he must prove that such use had indeed started before his mark
was applied for.
Nevertheless, a long registration period may sometimes serve as an indirect

indication of a long presence on the market, as it would be unusual for the
opponent to maintain a mark in force for many decades without any economic
interest behind it.
In the end, the decisive element is whether the earlier mark had acquired 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. Thus,
evidence of continuous use up to the filing date of the application will be a
positive indication in the direction of reputation.
On the other hand, if the use of the mark was suspended over a significant
period of time, or if the period elapsed between the latest evidence of use and
the filing of the CTM application is quite long, it will be more difficult to
conclude that the reputation of the mark survived the interruption of use, or
that it subsisted until the filing date of the application (see also section 1.2.4.
above).
1.3.6. Promotional activities
The nature and size of the promotional activities undertaken by the

opponent are useful indications in 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 Thus, 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

such goods, and may actually have become known beyond the circle of the
actual purchasers of the goods.
Even though it cannot be ruled out that a mark acquires a reputation ahead of
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
also section III.1.3.4. above). For example, it will be difficult to prove
knowledge by 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 is opinion polls and similar
instruments, the probative value of which may vary depending of the reliability
of the method used, the size of the statistical sample etc. (for the probative
value of opinion polls, see also section III.1.4.4.iv. below).
The impact of the opponents promotional activities may be shown either

directly, by reference to the size of promotional expenditure, or indirectly,
by way of inference from the nature of promotional strategy adopted by the
opponent and the kind of medium used for the advertising of the mark.
For example, advertising on a nation-wide 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 rates. Likewise,
the sponsoring of prestigious athletic or cultural events may be a further
indication of intensive promotion, as such schemes often involve a quite
considerable investment.
531/2000 GALP / GALP FOR INIMITABLE PEOPLE (FIG)(EN), 2096/2001

BUKO/BUKO (EN), 105/1999 HOLLYWOOD/HOLLYWOOD (FR)
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 build-up for his brand. This may be of particular importance when assessing
the possibility of detriment to, or of taking unfair advantage 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 also section III.3. below).
R 283/1999-3 HOLLYWOOD / HOLLYWOOD (EN), 81/2000 OLYMPIC /

FAMILY CLUB BELMONT OLYMPIC (EN)
1.3.7. Other factors
The Court has made clear that the above list of the factors is only indicative
and underlined that all facts relevant to the particular case must be taken into
consideration in assessing the reputation of the earlier mark (General Motors,
paragraph 27). Other factors may be found in the case-law of the Court
dealing with enhanced distinctiveness through use, or in the WIPO
Recommendations on the protection of well-known marks. Thus, depending

on their relevance in each case, the following may be added to the above
factors:
(i) Record of successful enforcement
Records of successful enforcement of a mark against dissimilar goods or

services are of importance 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 successful prosecution of complaints outside the

courts, such as acceptance of cease and desist requests, delimitation
agreements in trade mark cases, and the like.
Furthermore, evidence showing that the reputation of the opponents 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 indeed enjoys a reputation in the relevant territory,
especially where such decisions are recent. That effect may be re-enforced
when the decisions of this kind are substantial in number (on the probative
value of decisions, see section 1.4.4 below). This factor is mentioned in Article
2(1)(b)(5) of the WIPO Recommendations.
(ii) Number of registrations
The number and duration of registrations and applications of the mark

around Europe or the world, is also relevant, but in itself it is a much weaker
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 an international circulation of the brand, but cannot be
decisive in itself as to the existence of a reputation. This factor is mentioned in
Article 2(1)(b)(4) of the WIPO Recommendations, where the need of 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.
2195/2000 TC (FIG)/TC (FIG) (EN)
(iii) Certifications and Awards
Certifications, awards, and similar public recognition instruments usually

provide information about the history of the mark, or reveal certain quality
aspects of the opponents products, but as a rule they will not be sufficient in
themselves for establishing reputation and will be more useful as indirect
indications. For example, the fact that the opponent is 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, their relevance will be much higher. This factor has
been mentioned by the Court in Lloyd and Windsurfing Chiemsee in relation to

the assessment of enhanced distinctiveness through use.
435/2001 FLORIS/FLORIS (EN)
(iv) 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. Thus, the extent to which the mark is exploited through
licensing, merchandising and sponsoring, as well as the importance of the
respective schemes, are useful indications in assessing reputation. This factor
is mentioned in Article 2(1)(b)(6) of the WIPO Recommendations.
621/2001 F1 FORMULA 1 (fig.)/ F1 FORMULA 1 (fig.) (EN)
1.4. Proof of reputation
1.4.1. Standard of proof
The opponent must file evidence enabling the Office to reach a positive
finding that the earlier mark has indeed acquired a reputation in the relevant
territory. The wording used in Article 8(5) CTMR and Rule 16(2) IR is quite
clear in this respect: the earlier mark deserves enlarged protection only if it is
has a reputation.
It follows that the evidence must be clear and convincing, in the sense that
the opponent must clearly establish all facts necessary for concluding with
safety 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.
1.4.2. Burden of proof
According to the second sentence of Article 74(1) CTMR, in inter partes

proceedings the Office is restricted in its examination to the facts, evidence
and arguments provided by the parties. It follows that, in assessing whether
the earlier mark enjoys reputation, the Office may not take into account facts
known to it as a result of its own private knowledge of the market, or conduct
an ex-officio investigation, but should exclusively base its findings on the
information and evidence submitted by the opponent.
842/2000 KOALA/KOALA (ES), 2270-2000 KINDER / TIMI

KINDERJOGHURT (EN)
Exceptions to this rule apply where particular facts are so well-established that
they can be considered as universally known, and thus are also presumed to
be known to the Office (e.g., the fact that a particular country has a certain
number of consumers, or the fact that food products target the general public).
However, whether or not a mark has passed the threshold of reputation

established by the Court in General Motors is not in itself a pure question of
fact, since it requires the legal evaluation of several factual indications, and,
as such, the reputation of the earlier mark may not be simply assumed to be a
universally known fact.
Rule 16(2) IR provides that the burden of putting forward and proving the
relevant facts lies with the opponent, by expressly requiring him to provide
evidence attesting that the earlier mark has a reputation. According to
Rules 16(3) and 20(2) IR and the practice of the Opposition Division, such
evidence may be submitted either together with the notice of opposition, or
subsequent thereto, or, at the latest, within a period of four months from the
date of notification of the opposition to the applicant. The opponent may also
refer to facts and evidence submitted in the course of another opposition,
provided that the relevant materials are indicated in a clear and unambiguous
way, and that the language of proceedings is the same in both cases.
If the evidence of reputation is not in the correct language, it will have to be

translated into the language of the proceedings within the same period of four
months, as required by Rules 17(2), 16(3) and 20(2) IR. However, in view of
the volume of documents often needed for proving reputation, it is sufficient to
translate only the material parts of long documents or publications. Similarly, it
is not necessary to translate in their entirety documents or parts of documents
that contain mainly figures or statistics the meaning of which is evident, as is
often the case with invoices, order forms, diagrams, brochures, catalogues
etc.
1.4.3. Evaluation of the evidence
The basic rules on the evaluation of evidence are also applicable here: the
evidence should be assessed as a whole i.e. each indication should be
weighed-up against the others, whereas information confirmed by more than
one source will generally be more reliable than facts derived from isolated
references. Moreover, the more independent, reliable and well-informed the
source of the information is, the higher the probative value of the evidence will
be.
Thus, 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, as for example when the opponent submits internal memoranda
or tables with data and figures of unknown origin.
1509/2001 CAPTAIN BIRDS EYE/CAPTAIN BYRD APERO(fig) (EN),

559/2001 PRINCESS MARCELLA BORGHESE/CATHERINE BORGHESE
(fig) (IT), 1978/2001 and 1977/2001 BENJAMIN/BENJAMIN(fig) (ES),
638/2001 MENTADENT/MEDIDENT (EN), 1433/1999 OCEANS
PEARL/OCEAN PEARL (EN), 586/2000 ADIG/ADEC (EN), 1296/2000
TWIX/TWIX (EN), 441/2002 BEBE/BB (EN), 435/2001 FLORIS/FLORIS
(EN), 1246/2000 MONTE/MONTE VERITAS (EN), 1243/2000 CAMPBELLS

et al./CAMPBELL CATERING (EN)
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.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) 314/2000

SEMCO/SEMCO (EN)
As regards 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 which as a whole gives little or no
quantitative data and information will not be apt to provide 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.
586/2001 INFOVIA/VIA PLUS (ES), 1527/2001 VIA DIGITAL/VIA PLUS (ES),

1531/2001 LLOYD/EURO LLOYDS (EN), 1661/2001 ARCOIRIS/RAINBOW
(EN), 1978/2001 and 1977/2001 BENJAMIN/BENJAMIN (ES), 2080/2001
TELDAT/TELDACON (EN),
1.4.4. Means of evidence
There is no direct indication in the Regulations as to which kind of evidence is

more appropriate for proving reputation, as for instance the one in Rule 22(3)
IR about evidence of use. The opponent may avail himself of all the means
of evidence of Article 76 CTMR, provided they are capable of showing that
the mark has indeed the required reputation.
The following means of evidence are more frequently submitted by opponents

in Opposition proceedings before the Office2:
(i) Sworn or affirmed statements;

(ii) Decisions of Courts or Administrative authorities;
(iii) Decisions of the Office;
(iv) Opinion polls and market surveys;
(v) Audits and inspections;
(vi) Certifications and awards;
(vii) Articles in the press or in specialised publications;
(viii) Annual reports on economic results and company profiles;
(ix) Invoices and other commercial documents;
(x) Advertising and promotional material.
Evidence of this kind may also be submitted under Article 8(1)(b) CTMR in
order to prove that the earlier mark has obtained a higher degree of
distinctiveness, or under Article 8(2)(c) in relation to well-known marks.
the listing order does not reflect their relative importance or probative value.
2
(i) Sworn or affirmed statements.
Pursuant to Article 76(1)(f) CTMR, statements in writing, sworn or affirmed or

having a similar effect under the law of the State in which they are drawn up,
are valid means of evidence. Therefore, such evidence is admissible if it
fulfils the formal requirements laid down by the relevant national law, and this
regardless of the term used by the opponent for their description or translation
(Affidavit, Statutory Declaration, Sworn Statement etc.). Thus, if the
national law does not make its admissibility dependent on the capacity in
which the person gives the evidence, statements of this kind are admissible
independently of whether the declaration is made by the opponent himself, or
by a director of his company, or by one of his employees.
The weight and probative value to be attached to statutory declarations is

determined by the general rules applied by the Office to the assessment of
such evidence. In particular, both the capacity of the person giving the
evidence and the relevance of the contents of the statement to the
particular case must be taken into account.
R 601/2000-3 LIFE/ITS A WONDERFUL LIFE, R 1164/2000-3

THERMOVISION/THERMAL VISION LAIRD
As a rule, affidavits will be of greater value if the information they contain is

clear, it relates to specific facts and is supported by objective exhibits or
attachments, the veracity of which is also affirmed. Conversely, if the
declaration merely contains vague or unsupported statements, or
subjective evaluations and opinions, or if the source of the information is
not revealed, its probative value will be much lower.
1433/1999 OCEANS PEARL/OCEAN PEARL (EN), 1296/2000 TWIX/TWIX

(EN), 441/2002 BEBE/BB (EN), 435/2001 FLORIS/FLORIS (EN),
1509/2001 CAPTAIN BIRDS EYES/CAPTAIN BYRD APERO (EN),
1756/2000 EUROBAIT/EUROBAITS (EN) 1446/2000 X-CEL/XCELL
TECHNOLOGY (EN), 1458/2001 DB/DB SYSTEME (EN), 1135/2001
SOFTLAN/SOFTLAN (DE)
(ii) Decisions of national Authorities and Courts
Opponents often invoke decisions of national authorities or Courts which 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 the territory of which is also relevant for the
opposition at hand, they are not binding for the Office, in the sense that it is
not mandatory to follow their conclusion.
R 34/1998-3 LASTING PERFORMANCE (EN)
Since such decisions may serve as indications of the existence of reputation

and of the record of successful enforcement of the mark, their relevance
should be addressed and examined. Relevance should be given to the type of

proceedings involved, to whether the issue was in fact reputation in the sense
of Article 8 (5), to the level of the court, as well as to the number of such
decisions.
730/2002 BIO/BIO CLESA (ES)
It should be borne in mind that 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 the Office may not, pursuant to Article
74 CTMR.
435/2001 FLORIS/FLORIS (EN)
For these reasons, the probative value of national decisions will be

considerably enhanced if the conditions of law and fact on the basis of
which they were taken are made abundantly clear. This is because, in the
absence of these elements, it will be more difficult both for the applicant to
exercise his right of defence and for the Office to assess its relevance with a
reasonable degree of certainty. Similarly, if the decision has not yet become
final, or if it is outdated due to the time that has lapsed between the two
cases, its probative value will be diminished accordingly.
842/2000 KOALA/KOALA (ES), 2337/2001 BREITLING/(FIG) (ES).
Consequently, the probative value of national decisions should be assessed

on the basis of their contents and it may vary depending on the case. In one
case an opinion poll showing a high degree of knowledge of the mark
amongst the public, together with two decisions of national courts were
considered sufficient to show reputation, as was in another case one decision
of a national office on its own. Conversely, in a third case two decisions of a
national trade mark office were not considered persuasive enough.
1389/1999 YVES ROCHER/YVES ROCHE (FR), 102/1999 NIKE/NIKE (ES),

2688/2000 JOHN SMITH/BETTY SMITH (EN).
(iii) Office decisions
The opponent may also refer to earlier decisions of the Office, on condition
that such a reference is clear and unambiguous, and that the language of
the proceedings is the same. Otherwise, the opponent must also file a
translation of the decision within the four-month period to file further facts,
evidence and arguments, in order to allow to the applicant exercise his right of
defence.
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.
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 reference of the opponent does not extend to the
materials filed in the first case, i.e. where the applicant has never had a
chance to comment on them, or where the time that has elapsed between the
two cases is quite long.
(iv) 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
competitive products.
The probative value of opinion polls and market surveys is determined by the
status and degree of independence of the entity conducting it, by the
relevance and the accuracy of the information it provides, and by the reliability
of the applied method.
More particularly, in evaluating the credibility of an opinion poll or market

survey, the Office needs to know:
(a) Whether or not it has been conducted by an independent and

recognised research institute or company, in order to determine the
reliability of the source of the evidence.
(b) The number and profile (sex, age, occupation and background) of
the interviewees, in order to evaluate whether the results of the
survey are representative of the different kinds of potential consumers
of the products in question. In principle, samples of 1000 2000
interviewees are considered sufficient, provided they are
representative for the class of consumer concerned.
(c) The method and circumstances under which the survey was carried
out and the complete list of questions included in the questionnaire.
It is also important to know how and in which order the questions
were formulated, in order to ascertain whether the respondents have
been confronted with leading questions.
(d) Whether the percentage reflected in the survey corresponds to the
total amount of persons questioned or only to those who actually
replied.
1360/1999 CHARM/CHARMS (EN), 441/2002 BEBE/BB (EN), 531/2001

TELETHON/TELETOON (EN), 1082/2001 KINDER/KINDER EM-EUKAL
(EN), 1272/2002 TODS(fig.)/TODS (EN)
Unless the above indications are present, the results of a market survey or
opinion poll should not be considered of high probative value, and will not be
in principle sufficient on their own to support a finding of reputation.
Likewise, if the above indications are given, but the reliability of source and
method are questionable or the statistical sample is too small, or the
questions were leading, the credibility of the evidence will be diminished
accordingly. For example, a statistical sample consisting of 157 respondents,
concerning swimwear in the Netherlands, has been considered quite small in
relation to the overall population of that country.
2273/2000 BEACHLIFE/BEACHLIFE (EN)
Conversely, opinion polls and market surveys that fulfil the above
requirements (independence and trustworthiness of source, reasonably large
and widespread sample and reliable method) will be a strong indication of
reputation, especially if they show a high degree of trade mark awareness.
531/2000 GALP/GALP (EN), 1389/1999 YVES ROCHER/YVES ROCHE (FR),

314/2000 SEMCO/SEMCO (EN), 3215/2000 MON CHERI/MONTXERI (EN)
(v) Audits and inspections
Audits and inspections of the opponents undertaking may provide useful

information about the intensity of use of the mark, as they usually comprise
data on financial results, volumes of sales, turnovers, profits etc. However,
such evidence will be pertinent only if it specifically refers to the goods sold
under the mark in question, rather than to the opponents activities in general.
Audits and inspections may be carried out on the initiative of the opponent
himself, or may be required by company law and/or financial regulations. In
the former case, the same rules as for opinion polls and market surveys apply,
i.e. the status of the entity conducting the audit and the reliability of the
applied method will be of essence for determining its credibility, whereas the
probative value of official audits and inspections will be as a rule much
higher, since they are usually conducted by a state authority or by a
recognised body of auditors, on the basis of generally accepted standards
and rules.
(vi) Certifications and awards
This kind of evidence includes certifications and awards by public authorities

or official institutions, such as chambers of commerce and industry,
professional associations and societies, consumer organisations etc.
The reliability of certifications by authorities is generally high, as they

emanate from independent and specialised sources, which attest facts in the
course of their official tasks. For example, the average circulation figures for
periodicals issued by the competent press-distribution associations is
conclusive evidence about the performance of a mark in the sector.
R 472/2001-1 BIBA/BIBA (FR)
The same applies to quality certifications and awards granted by such

authorities, as the opponent usually has to meet objective standards in order
to receive the award. Conversely, prizes and awards offered by unknown
entities, or on the basis of unspecified or subjective criteria, should be given
very little weight.
The relevance of a certification or award to the specific case largely depends

on its contents. For example, the fact that the opponent is a holder of an ISO
9001 quality certificate, or of a royal warrant, does not automatically mean that
the sign is known to the public. It only means that the opponents goods meet
certain quality or technical standards or that he is a supplier of a royal house.
However, if such evidence is coupled with other indications of quality and
market success, it may lead to the conclusion that the earlier mark has a
reputation.
2080/2001 TELDAT/TELDACON (EN), 435/2001 FLORIS/FLORIS (EN),

2/2000 PLANETA/PLANETA X (ES)
(vii) Articles in the press or in specialised publications
The probative value of press articles and other publications concerning the
opponents mark mainly depends on whether such publications are covert
promotional matter, or if, on the contrary, they are the result of independent
and objective research.
Hence, if such articles appear in publications of a high status or are written

by independent professionals, they will have a quite high value, as for
example when the success of a specific brand becomes the object of a case
study in specialised journals or in scientific publications.
2/2000 PLANETA/PLANETA X (ES) 1203/2001 SAS/SAS & EUROBONUS

(EN), 1509/2001 CAPTAIN BIRDS EYES/CAPTAIN BYRD APERO (EN),
314/2000 SEMCO/SEMCO (EN)
(viii) Annual reports and company profiles
This type of evidence encompasses all kinds of internal publications giving

varied information about the history, activities and perspectives of the
opponents company, or more detailed figures about turnovers, sales,
advertising etc.
To the extent that such evidence derives from the opponent and is mainly
intended to promote his image, its probative value will mostly depend on
its contents and the relevant information should be treated with caution,
especially if it mainly consists of estimates and subjective evaluations.
However, where such publications are circulated to clients and other

interested circles and contain objectively verifiable information and data,
which may have been compiled or revised by independent auditors (as is
often the case with annual reports), their probative value will be substantially
enhanced.
81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN) 314/2000

SEMCO/SEMCO (EN)
(ix) 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 as to the intensity of use, the
geographical extent and duration of the use of the mark.
Even though the relevance and credibility of commercial documents is not

disputed, it will be generally 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 such as distribution or sponsoring
contracts and commercial correspondence are more apt for giving indications
about the geographical extent or the promotional side of the opponents
activities, than to measure the success of the mark in the market and thus
may only serve as indirect indications of reputation.
516/2000 AQUARIUS/AQUARIUS (EN), 531/2000 GALP/GALP (EN),

1246/2000 MONTE/MONTE VERITAS (EN), 2688/2000 JOHN SMITH/BETTY
SMITH (EN)
(x) 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.
586/2001 INFOVIA/VIA PLUS (ES), 1135/2001 SOFTLAN/SOFTLAN (DE),

1527/2001 VIA DIGITAL/VIA PLUS (ES), 1531/2001 LLOYD/EURO LLOYDS
(EN), 1661/2001 ARCOIRIS/RAINBOW (EN), 1978/2001 and 1977/2001
BENJAMIN/BENJAMIN (ES), 2080/2001 TELDAT/TELDACON (EN).
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 the medium used (national, regional, local) and to the audience
rates or circulation figures attained by the relevant spots or publications, if
of course this kind of information is available.
R 472/2001-1 BIBA/BIBA (FR), 2096/2001 BUKO/BUKO (EN)
In addition, such evidence may give useful indications as regards the kind of
goods covered, the form in which the mark is actually used and the kind
of image the opponent is trying to build-up for his brand. For example, if the
evidence shows that the earlier registration for which reputation is claimed
covers a device, but in reality this device is used combined with a word
element, it would not be consistent to accept that the device by itself has a
reputation.
1835/2000 (fig. TIGER)/(fig. PUMA) (EN), 557/2001 SEPHORA

(fig.)/HYDRA FARMACOSMETICI (fig.) (EN)
Conclusion
In general, the more diverse and complete the evidence is, the easier it will be
to accept that the earlier mark has indeed acquired a reputation. For example,
the following materials submitted in a case have been considered largely
sufficient for establishing the reputation of the earlier mark:
1. background information about the history of the trade mark and
the marketing milestones since 1970;
2. an explanation of the advertising strategy with reference to the
medium used and the audience rates reached (TV spots seen by
82% to 92% of the public in the relevant territory);
3. a video showing different publicity spots;
4. an assortment of advertisements in magazines;
5. photos of diverse sales points;
6. samples of packaging;
7. a study showing the development in market share from 1996 to
1998;
8. accounts of the marketing expenditure for the last 5 years;
9. three omnibus surveys (91%, over 1 282 people questioned);
10. an assortment of invoices from various years.
Reputation was considered proved mainly through the combination of the

information given by documents 1, 2, 7, 8 and 9.
2096/2001 BUKO/BUKO (EN)
2. Identity similarity of signs
The Court has dealt with the notion of similarity of signs only in relation to
likelihood of confusion, but at the same time it has indicated that evidence of
confusion is not necessary for the purposes of Article 5(2) of the TMD (and
hence for Article 8(5) CTMR), as likelihood of confusion is not a condition for
its application (Sabel, paragraph 20).
As regards protection against dissimilar goods, the Court suggested in

General Motors that a possible association of the two signs, enhanced by
the reputation of the earlier mark, may suffice for its distinctiveness or repute
to be detrimentally affected, by stating that it is where there is a sufficient
degree of knowledge of that mark that the public, when confronted with the
later trade mark, may possibly make an association between the two trade
marks, and the earlier mark may consequently be damaged. (General
Motors, paragraph 23). It follows that an association of this kind may suffice
for damaging the earlier mark and, thus, may entail the application of Article
8(5), even if it is not enough for giving rise to confusion.
2726/2000 PRINCE(fig)/PRINCESSE ROUGE (ES), 2687/2000

TORRES(fig)/TORRE ORIA(fig), 1602/2001 DIABLO/TEAM CLUDIO
CHIAPUCCI EL DIABLO(fig) (IT)
In view of these assumptions the following practice rules can be established

as regards the issue of similarity of signs in the context of Article 8(5):
Firstly, the ordinary test applied in the comparison of signs under Article
8(1)(b) for determining the extent to which the marks in dispute are similar,
visually, phonetically and conceptually, must also be used in the context of
Article 8(5).
If the signs are identical or similar, the examination thereafter is not directed to
determine whether there is a likelihood of confusion, but rather to the finding
of whether or not there is detriment or unfair advantage to the distinctiveness
or reputation. Hence, any evaluation of the various points of resemblance
between the signs carried out in the global assessment of likelihood of
confusion, is not pertinent for the purposes of Article 8(5). For example,
saying that there are enough differences between the signs to prevent the
public from being confused is not a valid assumption under 8(5), simply
because confusion is not relevant in this context.
Of course, where the marks are so similar that may be confused, they are
necessarily similar enough to also be associated with each other.
On the other hand, where the dissimilarities are such that there is no risk
that the public will associate or otherwise make a link between the two
signs, the application of Article 8(5) can be safely excluded.
Thus, the only grey area that appears to result from the reference to
association as the cause of detriment or unfair advantage, is the case where
although confusion per se is excluded, the marks are similar enough to be
associated, in the sense that perception of the one will bring to mind the
memory of the other. However, since such an association may suffice for
damaging the earlier mark, it should not be excluded that, under certain
circumstances, a similarity that is not enough for the application of Article
8(1)(b), may nonetheless be sufficient for the purposes of Article 8(5).
3. Detriment Unfair advantage
3.1. Protected subject-matter
Article 8(5) 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. In addition, there must be a
likelihood that use of the mark subject to opposition without due cause would
take unfair advantage of, or would be detrimental to, the distinctive character
or the repute of the earlier mark. The Court confirmed this by stating that
once the condition as to the existence of reputation is fulfilled, the
examination has to proceed with the condition that the earlier mark must
be detrimentally affected without due cause. (General Motors, paragraph
30).
The Court did not set out in more detail exactly what would count as detriment
or unfair advantage, even though it stated in Sabel that Article 8(5) does not
require evidence of likelihood of confusion, thereby stating the obvious,
namely that the enlarged protection afforded to marks with reputation is not
concerned with their origin function (Sabel, paragraph 20).
However, in a series of previous decisions3 the Court stated that, apart from
indicating origin, a trade mark may also exercise other functions worthy of
protection. More particularly, it confirmed that a trade mark can offer a
guarantee that all the goods coming from a single undertaking have the same
quality (guarantee function) and that it can serve as an advertising
instrument by reflecting back the goodwill and prestige it has acquired in the
market (advertising function).
It follows that trade marks do not only serve 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, they will be especially valuable to the trade mark owner. This
added value of a mark with reputation is precisely what Article 8(5) intends to
protect against undue detriment or unfair advantage.
Hence, the notion of unfair detriment extends to all cases where the use of
the application is likely to have an adverse effect on the earlier mark, in the
sense that it would diminish its attractiveness (detriment to distinctiveness), or
would devalue the image it has acquired among the public (detriment to
C-10/89 SA CNL-SUCAL NV v. HAG GF AG, C-427,429,436/93 Bristol-Myers Squibb v.

3
Paranova A/S, C-349/95 Frits Loendersloet Internationale v. George Ballantine & Son
Ltd., C-337/95 Parfums Christian Dior SA v. Evora and C-63/97 Bayerische
Motorenwerke AG v. Ronald Karel Deenik.
repute), whereas the notion of unfair advantage covers cases where use of
the opposed mark is likely to result in a misappropriation of its attractive
powers (unfair advantage of distinctiveness) or an exploitation of its image
and prestige (unfair advantage of repute).
Given also that a very strong reputation is both easier to harm and more
tempting to take advantage of, owing to the great value it incorporates, the
Court underlined that the stronger the earlier marks distinctive character and
reputation, the easier it will be to accept that detriment has been caused to it
(General Motors, paragraph 30). Even if the Court did not say so expressly,
the same must be accepted as regards the unfair advantage that the applicant
might enjoy at the expense of the earlier mark.
3.2. Assessment of detriment unfair advantage
The Court did not deal in General Motors with the assessment of detriment
and unfair advantage in great detail, as this issue was not part of the question
referred to it. It only stated that it is where there is a sufficient degree of
knowledge of that mark that the public, when confronted with the later trade
mark, may possibly make an association between the two trade marks,
and the earlier mark may consequently be damaged. (General Motors,
paragraph 23).
Even though this statement is too limited to serve as a basis for a full-scale
analysis of the condition of detriment, it gives at least an important indication,
namely that detriment or unfair advantage must be the consequence of an
association of the conflicting marks in the minds of the public, made possible
by the similarities between the marks and enhanced by the reputation of the
earlier sign.
The need for an association capable of causing detriment, has a two-fold

consequence for the assessment of detriment or unfair advantage: Firstly, if
the alleged detriment or unfair advantage is not the result of an
association between the marks, but is due to other, extraneous reasons, it is
not actionable under 8(5). Secondly, if in view of the overall circumstances of
the case, an association between the marks is not likely, the necessary link
between the use of the later mark and the detrimental effect will be missing.
Thus, the similarities between the signs and the reputation of the earlier
mark must be of such a nature and degree, as to allow for an association of
the two by the consumer, in the sense that perception of the one will bring to
mind the memory of the other.
Furthermore, as the Court observed, an association between the marks

requires that the part of the public which is already familiar with the earlier
mark is also exposed to the later mark. This will be easier to establish
where the earlier mark is known to the public at large, or where the
purchasers of the respective goods largely overlap. However, in cases where
the goods are further removed from each other and such a connection
between the respective publics is not obvious, the opponent must justify why
the marks will be associated, by reference to some other link between his
activities and those of the applicant, as for example where the earlier mark is
exploited outside its natural market sector, e.g. by licensing or merchandising.
621/2001 F1 FORMULA 1/F1 FORMULA 1 (EN)
From the foregoing it follows that 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, the respective consumer groups and market sectors), with a view
to determining whether the marks may be associated in a way which may
prove injurious to the earlier trade mark, or which may allow the application to
unduly profit from it.
Until more detailed principles are developed by higher instances, the above
will provide the framework for the assessment of detriment and unfair
advantage in the context of Article 8(5) CTMR, taking also into account the
peculiarities of the various possible forms of detriment and unfair advantage
discussed below.
3.3. Forms of detriment unfair advantage
Thus, Article 8(5) applies if any of the following four alternative

requirements is fulfilled, namely if use of the application would (a) cause
unfair detriment to the distinctiveness (b) cause unfair detriment to the repute
(c) take unfair advantage of the distinctiveness, or (d) take unfair advantage of
the repute, of the earlier mark.
3.3.1. Detriment to distinctiveness
The distinctiveness of the earlier trade mark will be detrimentally affected if

the public ceases to associate it with a given range of goods or services
originating from a single source and starts associating it with different goods,
having distinct origins. Such an association can dilute the trade marks
ability to identify a single undertaking, without this necessarily resulting in
confusion as to origin, and is likely to diminish its capacity to stimulate the
desire of the public to buy the products for which it is registered.
Such a situation is commonly known as dilution by blurring, and occurs

when the trade mark is no longer capable of evoking in the mind of the
public an immediate association with the products it covers. This capacity
may be reduced or lost by the fact that persons other than the proprietor use
the same or a similar sign for products other than those for which it is
registered. This leads to an erosion of distinctive character caused by the
proliferation of parasitic marks which, although not debasing the original
trade mark, are so numerous that they may deprive the trade mark of its
distinctive character and hence of its attractiveness.
Such an erosion of distinctiveness cannot simply occur where the earlier mark
has a reputation and is identical with or similar to the mark applied for, as this
would involve an automatic and indiscriminate recognition of a likelihood of
dilution for all trade marks of repute and would negate the purpose of the
condition of proving detriment. In addition, 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 plethora of
different goods, there can be no immediate link with any of the products it
distinguishes, and thus there will be little or no room for further dilution. Zero
or virtually zero dilution does not suffice to establish a likelihood of dilution
within the meaning of Article 8(5) CTMR, because in such a case the
detriment would not be likely, as required by the law, but mere speculation.
R 283/1999-3 HOLLYWOOD/HOLLYWOOD (FR)
Thus, if the applicant shows that the earlier sign is commonplace and is
already used by different undertakings in various sectors of the market, he
will also have successfully refuted the existence of a likelihood of dilution.
Even the fact that the opponent did not react to other registrations of the same
or a similar sign in different classes may indicate that he is not too concerned
about whether consumers will no longer associate the mark exclusively with
his product.
Similarly, it will be difficult to accept that the attractiveness of the earlier mark
risks being diluted if its inherent distinctiveness is not very strong. If, for
example, 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 it alludes to, rather than with another mark. This will be particularly
true where the respective goods are so far removed from each other that a
possibility of association between them is even less probable.
R 802/1999-1 DUPLO/DUPLO, R 303/2000-2 MAGEFESA/MAGEFESA (ES)
3.3.2. Detriment to repute
The notion of unfair detriment to repute, also often referred to as dilution

by tarnishing relates to situations where use of the application 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 which is not
inherently unpleasant, but which proves to be incompatible with a special
image the earlier trade mark has acquired in the eyes of the public, due to the
promotional efforts of its owner.
Thus, the opponent must show, or at least convincingly argue, that use of the
applicants trade mark would prompt such inappropriate or negative mental
associations with the earlier trade mark, or associations conflicting with the
image it has acquired in the market. However, in the case of detriment to a
special image vested in the mark, the opponent will also have to prove that,
apart from being known by a significant part of the public, his mark has indeed
acquired this special image by virtue of its use and promotion, which is
likely to be harmed if the application is used for the goods applied for.
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC / FAMILY

CLUB BELMONT OLYMPIC (EN) R 283/1999-3 HOLLYWOOD /
HOLLYWOOD (FR)
In all such cases, there is an association, either at the level of signs, or at the
level of goods, which is injurious to the earlier trade mark and may take the
following forms:
(a) The application sign reproduces the earlier mark in such a fashion that
its word or figurative element is amended or altered in a negative or
offensive way.
(b) The application is used in relation to offensive goods, or covers goods
which evoke negative or unpleasant mental associations, which
conflict with those generated by the legitimate use of the earlier mark.
(c) The application is used for goods of poor quality, or which are
incompatible with a special quality or image associated with the
earlier trade mark.
For example, it has been held that use of a famous publishers mark in
connection with adult material can seriously harm its prestige, especially since
the earlier mark was reproduced in the application sign in combination with
the letter X, i.e. together with an indication which is in itself allusive to adult
content. Likewise, it has been held that use of a mark which is reputed in the
field of pharmaceuticals in connection with substances having a corrosive
effect, such as bleaching, polishing and abrasive preparations, could have a
negative influence on its perception by the public, by creating unpleasant
associations.
2/2000 PLANETA/PLANET-X (ES), R 1007/2000-1 LIPOSTATIN/LIPOSTAT

(EN)
As regards use which is incompatible with a special image of the earlier mark,
it has been held that if a mark that is associated in the minds of the public with
an image of health, dynamism and youth is used by the applicant for tobacco
products, the negative connotation conveyed by the latter would contrast
strikingly with the image of the former. Thus, it is likely to damage the earlier
marks repute.
On the other hand, the tarnishing of the image of the earlier mark has not
been considered probable where the goods are so different from each other
that an association between the signs would seem highly unlikely and the
distinctive character of the earlier mark is quite low. For example, it has been
held that use of the word DUPLO for office equipment could not tarnish the
image of chocolate bars of the same brand. Similarly, the use of the word
VISA for cosmetics could not harm in any way the repute of the same sign
with regard to financial services.
R 802/1999-1 DUPLO/DUPLO, 725/2001 VISA/VISA (EN)
3.3.3. Taking unfair advantage of distinctiveness
The notion of unfair advantage of distinctiveness covers cases where the

applicant benefits from the attractiveness of the earlier right by affixing on his
goods a sign which is widely known in the market, misappropriating thus its
attractive powers and advertising value. This may lead to unacceptable
situations of commercial parasitism where the applicant is allowed to take a
free-ride on the investment of the opponent in promoting and building-up a
goodwill for his mark, as it may stimulate the sales of the applicants products
to an extent which is disproportionately high in comparison with the size of his
promotional investment.
Such a misappropriation of the distinctiveness of the earlier mark

presupposes an association between the respective marks, which renders
possible the transfer of attractiveness to the applications sign. An
association of this kind will be more likely in the following circumstances:
(a) Where the earlier mark possesses a very strong 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 application sign, as such marks will be recognised in almost any
context, exactly because of their outstanding distinctiveness.
(b) Where there is a special connection between the goods which allows
for some of the qualities of the opponents goods 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 the healing properties of
which may be presumed for example in cosmetics bearing the same
mark. Conversely, such a link was not found to exist between credit
card services and cosmetics, as it was thought that the image of the
former is not transferable to the latter, despite the fact that their
respective users largely coincide.
R 1007/2000-1 LIPOSTATIN/LIPOSTAT (EN), 725/2001 VISA/VISA

(EN)
(c) Where, in view of its special attractiveness, the earlier mark may be
exploited even outside its natural market sector, e.g. by licensing or
merchandising. In this case, if the applicant uses a sign identical or
similar to the earlier mark, for goods for which the latter is already
exploited, he will obviously profit from its de facto value in that sector.
It should be noted that the applicants benefit does not have to be

intentional to be sanctioned. Bad faith is not in itself a condition for the
application of Article 8(5), which only requires that the advantage be unfair,
in that there is no justification for the applicants 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 by 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 he chose for his goods a mark which
includes such a sign.
R 303/2000-2 MAGEFESA/MAGEFESA (ES), 102/1999 NIKE/NIKE (ES),

1381/1999 AIR ONE/AIR ONE (IT), 81/2000 OLYMPIC/FAMILY CLUB
BELMONT OLYMPIC (EN)
Nor is it necessary for the opponent to show that the applicants benefit is
detrimental to his economic interests, as in most cases the borrowed
distinctiveness of the applications sign will principally affect the applicants
direct competitors, i.e. traders dealing in identical or similar goods as him, by
putting them at a competitive disadvantage. However, the possibility of
simultaneous detriment to the opponents interests should not be ruled out
completely, especially in instances where use of the applications sign could
affect the opponents merchandising schemes, or would hinder his plans to
penetrate a new market sector.
3.3.4. Taking unfair advantage of repute
The notion of unfair advantage of repute covers situations where the

application may profit from the renown of the opponents brand by unduly
exploiting its prestige. The difference from unfair advantage of distinctiveness
is that this kind of misappropriation is more concerned with the quality image
of the mark and less with its attractive force.
Such a risk will be particularly high where the earlier mark has acquired not
only a high degree of recognition amongst consumers, but also a 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.
Such an added value to the marks reputation has to be abundantly clear from
the evidence on file and should not be merely assumed.
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC/FAMILY

CLUB BELMONT OLYMPIC (EN) R 283/1999-3
HOLLYWOOD/HOLLYWOOD (FR)
The applicant may benefit from the quality aspects of the opponents
reputation without actually harming the image of the earlier mark. Thus,
contrary to what applies to dilution by tarnishing, the applicants goods do not
need be of poor quality, or of an offensive character. For example, if the
earlier mark is a synonym of excellence, even the use of the application in
respect of ordinary quality products could take unfair advantage of its repute,
provided of course that the relationship between the goods is such that allows
for an association to be made between the two signs.
Finally, the statements made in the previous section in the context of unfair
advantage of distinctiveness as regards the enhanced likelihood of advantage
in cases of (a) an exceptional distinctiveness of the earlier sign, (b)
neighbouring markets, (c) exploitation through merchandising, and (d)
intentional imitation, are also pertinent here, as the mechanism for gaining
advantage is basically the same in both situations.
3.4. Proof of detriment unfair advantage
3.4.1. Standard of proof
In opposition proceedings detriment or unfair advantage may be only

potential, as confirmed by the conditional wording of Article 8 (5), which
requires that the use of the application without due cause would take unfair
advantage of, or be detrimental to the distinctiveness or repute of the earlier
mark. In contrast, Article 9 (1) (c) CTMR, which uses the more positive
wording takes unfair advantage of or is detrimental to, does not appear to
be satisfied with a potential risk of fulfilment of the conditions envisaged. The
same discrepancy between provisions dealing with registration and provisions
regulating use can also be seen in Articles 4(3) and 5(2) of the TM Directive.
The above difference is only natural and can be easily explained from the fact
that, in opposition proceedings, actual detriment or unfair advantage will
occur only exceptionally, given that in most cases the applicant will not have
put his mark to effective use when the dispute arises. Nevertheless, such a
possibility should not be ruled out completely, and if there is evidence of
actual use or damage, it will have to be considered and given appropriate
weight.
On the other hand, 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). Detriment or unfair advantage must be probable, in the sense
that it is foreseeable in the ordinary course of events. Thus, it is not
enough to merely show that detriment or unfair advantage cannot be excluded
in general, or that it is only remotely possible.
105/1999 HOLLYWOOD/HOLLYWOOD (FR), 1358/1999 BLANCO Y

NEGRO/BLANCO Y NEGRO (ES) 2/2000 PLANETA/PLANETA X (ES)
3.4.2. Burden of proof
As also mentioned in section III.1.4.2. above, Article 74(1) CTMR requires the
opponent to put forward and prove all the facts on which his opposition is
based. Thus, the opponent bears the burden to show, within the period he
has for completing the substantiation of his opposition, that the actual or future
use of the application has caused, or is likely to cause, detriment to the
distinctiveness or the repute of the earlier mark, or that it has taken, or is likely
to take, unfair advantage thereof.
In doing so, the opponent cannot merely contend that detriment or unfair
advantage would be a necessary consequence flowing automatically from the
use of the sign applied for, in view of the strong reputation of his mark. Even
where the earlier mark is highly reputed, the taking of unfair advantage or the
suffering of detriment must be properly substantiated since otherwise,
marks with reputation would enjoy blanket protection against identical or
similar signs in relation to virtually any kind of product. However, this would be
clearly inconsistent with the wording and spirit of Article 8(5), as in such a
case reputation would become the sole requirement for its application, rather
than being only one of the several conditions provided for therein.
R 802/1999-1 DUPLO/DUPLO, 1082/2001 KINDER/KINDER EM-EUKAL (EN)
Thus, where the opponent claims actual detriment or unfair advantage, he

must give indications and evidence of the kind of detriment suffered, or of the
unfair advantage taken by the applicant, as well as to show that it resulted
from the use of the sign applied for. To this effect, the opponent may rely on
a variety of indications, depending on the kind of detriment or unfair
advantage argued, such as a considerable decrease in sales of the goods
bearing the mark, or a loss of clientele, or a decline of the degree of
recognition of his mark among the public.
On the other hand, in the case of potential detriment or unfair advantage the
exercise will necessarily be of a somewhat speculative nature, as the
detrimental or beneficial impact has to be evaluated ex ante. Thus, the
opponent should at least put forward a coherent line of argument, showing
what the detriment or unfair advantage would consist of and how it
would occur, which could lead to the prima facie conclusion that such an
event is indeed likely in the ordinary course of events.
R 802/1999-1 DUPLO/DUPLO, 105/1999 HOLLYWOOD/HOLLYWOOD (FR),

1358/1999 BLANCO Y NEGRO/BLANCO Y NEGRO (ES)
It follows that, as a rule, general allegations of detriment or unfair advantage

will not be sufficient in themselves for proving potential detriment or unfair
advantage. However, considering that in such cases the subject-matter of

proof is the likelihood of a future event, and that, by definition, the opponents
arguments cannot in themselves amount to evidence, it will often be
necessary to base certain conclusions on legal presumptions, that is on
logical assumptions or deductions resulting from the application of the rules of
probability to the facts of the specific case. One such presumption has been
mentioned by the Court, when it stated that the stronger the earlier marks
distinctive character and reputation, the easier it will be to accept that
detriment has been caused to it (General Motors, paragraph 30). It should
also be noted that the kind of presumptions relevant here are rebuttable
presumptions (praesumptio juris) the existence of which the applicant may
always disprove by submitting appropriate evidence, and not conclusive
presumptions (praesumptio juris et de jure).
R 1007/2000-1 LIPOSTATIN/LIPOSTAT (EN), 227/1999 ABC/ABC (FR),

437/1999 VITAKRAFT/VITAGRAFT (EN), 2/2000 PLANETA/PLANETA X
(ES), R 472/2001-1 BIBA/BIBA (FR)
In addition, if the type of detriment or unfair advantage argued in the specific

case is of such a nature that presupposes the fulfilment of certain particular
conditions of fact (e.g. exclusive character of the earlier mark, qualitative
aspects of reputation, a given image etc.), these facts will also have to be
proved by the opponent, by the submission of appropriate evidence.
105/1999 HOLLYWOOD/HOLLYWOOD (FR)
3.4.3. Means of evidence
Where the opponent claims actual detriment or unfair advantage, he can use
all the means of evidence provided for in Article 76 CTMR for proving it. For
example, he may prove an actual decrease of trade mark awareness by
reference to opinion polls and other documentary evidence, or a fall in sales
by submitting concrete economic results or extracts from his official
commercial books. The rules governing the evaluation and the probative value
of such evidence are the same as the ones mentioned in sections III.1.4.3 and
4.4 above, in relation to the evidence required for proving reputation.
Even where the detriment or unfair advantage claimed is only potential, the
opponent will have to prove any conditions of fact which might be necessary
in particular cases for giving rise to a probability of detriment or unfair
advantage, by submitting evidence of the kind mentioned above.
R 283/1999-3 HOLLYWOOD/HOLLYWOOD (FR), R 802/1999-1

DUPLO/DUPLO, R 1007/2000-1 LIPOSTATIN/LIPOSTAT (EN)
4. Use without due cause
The last condition for the application of Article 8(5) is that use of the sign
applied for should be without due cause. Even though this is a necessary
condition of protection, the opponent cannot be reasonably expected to

prove a negative fact, such as the absence of due cause. It follows that as
regards this requirement the burden of proof is reversed.
Hence, in the absence of any indications on the face of the evidence

providing an apparent justification for the applicants acts, the lack of due
cause must be generally presumed. However, the applicant may avail himself
of the possibility of rebutting such a presumption by showing that he has a
legitimate justification that entitles him to act in this particular manner.
R 283/1999-3 HOLLYWOOD/HOLLYWOOD (FR), R 303/2000-2

MAGEFESA/MAGEFESA (ES), 81/2000 OLYMPIC/FAMILY CLUB BELMONT
OLYMPIC (EN)
For example, such a situation could be envisaged if the applicant had been
using the sign for dissimilar goods in the relevant territory before the
opponents mark was applied for, or acquired a reputation, especially where
such a coexistence has not in any way affected the distinctiveness and repute
of the earlier mark.
Another instance of legitimate excuse could be where the logo of which the
opponents mark consists was created by the applicant, who only gave the
opponent non-exclusive rights to register and use it for a specific set of goods,
but reserved the right to register and use it himself for the goods applied for.
However, the mere fact that the applicant is a holder of a national registration
for the mark applied for cannot as such provide him with a valid excuse,
where (a) the two marks are not identical, or (b) his registration is not earlier
than the opponents and (c) he has not also put the mark to effective use in
the territory concerned.
102/1999 NIKE /NIKE (ES), 105/1999 HOLLYWOOD/HOLLYWOOD (FR), R

283/1999-3 HOLLYWOOD/HOLLYWOOD (FR)

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PART 5: TRADE MARKS WITH REPUTATION ......................................................... 3

1. Relevant provisions ....................................................................................... 3

II. SCOPE OF APPLICATION ........................................................................... 5

1. Applicability to registered marks ................................................................... 5

III. CONDITIONS OF APPLICATION ................................................................. 9

1. Earlier mark with reputation .......................................................................... 9

PART 5: TRADE MARKS WITH REPUTATION

According to Article 8(5) CTMR upon opposition by the proprietor of an earlier

evidence required for proving detriment in either case is discussed in section

2. The state of case-law

Thus, these Guidelines are supported by authority only in some aspects,

II. SCOPE OF APPLICATION

1. Applicability to registered marks

1.1. The requirement of registration

It has been argued that, as a consequence of this reference, Article 8(5)

However, such an interpretation cannot be sustained by the wording of Article

Therefore, Article 8(5) CTMR only applies to earlier Community, international,

1.2. Borders with Article 8(2)(c) CTMR

The requirement of registration thus serves to mark the borders between

his earlier registration a well-known mark instead of a mark with reputation.

For example, if the opponent bases the opposition (a) on an earlier

R 799/1999-1 RODIO / RHODIA (FIG MARK) (EN)

2. Applicability to similar goods & services

2096/2001 BUKO/BUKO (EN), 1458/2001 DB(fig)/db SYSTEME (EN),

The Opinion of Advocate General Jacobs gave the principal arguments in

However, as this possibility cannot be ruled out completely, if such a case

III. CONDITIONS OF APPLICATION

The following conditions need be met for Article 8(5) to apply:

(1) Earlier registered mark with reputation in the relevant territory;

105/1999 HOLLYWOOD / HOLLYWOOD (FR), 1108/1999 SNICKERS /

1. Earlier mark with reputation

1.1. Nature of reputation

In view of these considerations, the Court concluded that reputation is a

assessed on the basis of quantitative criteria (General Motors, paragraphs

2333-2000 TELEFONICA ON LINE / T-ONLINE (EN)

Such an interpretation of reputation diverges from what was supported by the

Moreover, if reputation is to be assessed on the basis of quantitative criteria,

105/1999 HOLLYWOOD/HOLLYWOOD (FR), 81/2000 OLYMPIC/FAMILY

81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC (EN)

1243/2000 CAMPBELLS et al./CAMPBELL CATERING (EN)

Recommendations on the protection of well-known marks, which describe the

1.2. Scope of reputation

1.2.1. Degree of recognition

Having defined reputation as a knowledge threshold requirement, the

Hence, in determining whether the earlier mark is known by a significant part

However, where goods or services concern quite small groups of consumers,

1509/2001 CAPTAIN BIRDS EYE/ CAPTAIN BYRD APERO (fig) (EN),

1.2.2. Relevant public

66/2000 MAGEFESA(fig)/MAGEFESA(fig) (ES), 726/2001 LA MOLINERA/LA

81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC(fig.) (EN),

1.2.3. Goods and services covered

81/2000 OLYMPIC/FAMILY CLUB BELMONT OLYMPIC(fig.) (EN),

1.2.4. Relevant territory

102/1999 NIKE /NIKE (ES), 1762/2001 NIKKEI/NIKKEI (EN)

Similarly, the submitted evidence must specifically concern the relevant

R 799/1999-1 RODIO / RHODIA (FIG MARK) (EN), 81/2000 OLYMPIC /

However, where reputation is claimed as extending beyond the territory of

1.2.5. Relevant point in time

1807/2001 BREEZE/ARIZONA BREEZE (EN); 2096/2001 BUKO/BUKO (EN)

Where the opposition is based on an earlier application, there is no formal

2195/2000 TC (FIG) / TC (FIG) (EN)

62-2001 NEXT/NEXT EYE (EN), 1562/2002 LINEONE/Link One (EN)