Soho Brewery Ltd | Decision 2544735 - PERNOD RICARD, société anonyme v. Soho Brewery Limited
Date Published: May 1, 2018
OPPOSITION No B 2 544 735
Pernod Ricard, société anonyme, 12, place des Etats-Unis, 75016 Paris, France (opponent), represented by Eve-Marie Wilmann-Courteau, 12 Place des Etats-Unis, 75016 Paris, France (employee representative)
a g a i n s t
Soho Brewery Limited, 94 Melrose Avenue, London NW2 4JT, United Kingdom, (applicant), represented by Dolleymores, 9 Rickmansworth Road, Watford, Hertfordshire WD18 0JU, United Kingdom,(professional representative).
On 12/01/2017, the Opposition Division takes the following
1. Opposition No B 2 544 735 is upheld for all the contested goods.
2. European Union trade mark application No 13 869 896 is rejected in its entirety.
3. The applicant bears the costs, fixed at 350 Euro.
PROOF OF USE
In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.
According to the same provision, in the absence of such proof the opposition must be rejected.
The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 4 660 494.
The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior the publication of the contested application.
The contested application was published on 14/04/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union, from 14/04/2010 to 13/04/2015 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:
Class 33: Alcoholic beverages (except beers).
According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.
On 21/12/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 26/02/2016 to submit evidence of use of the earlier trade mark. On 23/02/2016, the Office prolonged this time until 26/04/2016 and within this prolonged time limit, the opponent submitted evidence of use.
As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
The evidence presented by the opponent is the following:
- Document 1: Screen print from the French Wikipedia page relative to the SOHO liqueur – not dated
- Document 2: Screen prints of the pages relative to the SOHO brand on the website of the opponent.
- Document 3 A to 3 D: A series of invoices issued by the French company Pernond, exclusive licensee of the SOHO trademark and producer, showing sales to mainly supermarket/hypermarket stores like Leclerc, System U or ITM/Intermarche in France. In detail, the opponent submitted:
- Document 3 A: 8 invoices for the year 2012, dated 04/01/2012, 05/01/2012, 13/03/2012, 14/03/2012, 22/03/2012, 23/04/2012, 11/06/2012, 03/07/2012, showing sales of SOHO Litchi, SOHO Gloss, SOHO Caipi Thai in quantities of several 10000 bottles.
- Document 3 B: 3 invoices for the year 2013, dated 07/02/2013, 12/06/2013, 23/07/2013, showing sales of SOHO Litchi in quantities of about 1500 bottles.
- Document 3 C: 8 invoices for the year 2014, dated 13/03/2014, 09/07/2014, 22/09/2014, 16/10/2014, 29/10/2014, 06/11/2014, 12/11/2014, 02/12/2014 showing sales of SOHO Litchi, SOHO Gloss, SOHO Caipi Thai in quantities of several 10000 bottles.
- Document 3 D: 7 invoices for the year 2015, dated 06/01/2015, 16/01/2015, 30/04/2015, 27/05/2015, 09/06/2015, 11/06/2015, 18/06/2015, showing sales of SOHO Litchi, in quantities of about 2000 bottles.
- Document 4: Copy of the domestic volume report 2015 made for the Wine & Spirit Categories in France by the British company IWSR.
- Document 5: Letter of 01/03/2016 from the company Nielsen, confirming the market share of SOHO liqueurs in France. Document 5 A is dated of 22/03/2015 and gives as well a market share.
- Document 6: Copies of undated advertisements for SOHO liqueur in French newspapers which were published according to the opponent during the year 2012.
- Document 7: Pictures of undated news paper advertisements of two new products - SOHO Hanami and SOHO Miso - that were launched according to the opponent in 2013.
- Document 8: 12 invoices for the year 2012 for SOHO sales in Spain, dated 24/01/2012, 06/02/2012, 13/03/2012, 30/03/2012, 18/04/2012, 27/04/2012, 09/07/2012, 31/08/2012, 07/08/2012, 10/09/2012, 16/10/2012, 15/11/2012, showing sales of several thousands of bottles of SOHO.
- Document 9: 12 invoices for the year 2013 for SOHO sales in Spain, dated 15/03/2013,21/03/2013, 26/03/2013, 15/04/2013, 07/05/2013, 14/05/2013, 30/05,2013, 08/07/2013, 26/07/2013, 14/08/2013, 17/09/2013, 05/11/2013 showing sales of several thousands of bottles of SOHO.
- Document 10: 8 invoices for the year 2014 for SOHO sales in Spain, dated 07/02/2014, 17/02/2014, 27/03/2014, 28/03/2014, 04/04/2014, 10/06/2014, 18/07/2014, 05/11/2014 showing sales of about several thousands of bottles of SOHO.
- Document 11: 9 invoices for the year 2014 for SOHO sales in Spain, dated 16/03/2015, 11/02/2015, 27/03/2015, 06/05/2015, 06/05/2015, 27/05/2015, 06/07/2015, 06/08/2015, 27/10/2015, 07/09/2015 showing sales of about several hundreds of bottles of SOHO.
- Document 12: 24 invoices for the period march 2010 to December 2015 for SOHA sales in Italy, dated 31/12/2015, 30/06/2015, 31/08/2015, 16/10/2015, 16/10/2014, 18/08/2014, 17/06/2014, 30/05/2014, 09/10/2013, 28/06/2013, 14/06/2013, 16/05/2013, 31/12/2012, 30/11/2012, 31/08/2012, 17/04/2012, 17/08/2011, 31/08/2011, 21/02/2011, 18/04/2011, 30/04/2010, 17/05/201031/03/2010, 16/04/2010, showing sales of several hundreds of bottles of SOHO.
- Document 13: 4 invoices for the year 2012 for SOHO sales in the United Kingdom, dated 13/07/2012, 25/10/2012, 08/11/2012, 11/12/2012 showing sales of SOHO.
- Document 14: 6 invoices for the year 2013 for SOHO sales in the United Kingdom dated 05/03/2013, 09/05/2013, 24/07/2013, 17/09/2013, 09/10/2013, 03/12/2013 showing sales of SOHO.
- Document 15: 5 invoices for the year 2014 dated 19/03/2014, 28/04/2014, 10/07/2014, 12/09/2014, 26/11/2014 for SOHO sales in the United Kingdom.
- Document 16: 5 invoices for the year 2014 dated 11/02/2015, 14/05/2015, 24/07/2015, 06/11/2015, 04/12/2015 for SOHO sales in the United Kingdom.
- Document 17: Sample of a back label as used for export in some European markets.
The applicant argues that genuine use in terms of time, place, extent, nature and use of the all goods for which the earlier mark is registered is not proven.
The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.
As regards place of use, the evidence shows that the place of use is France, Spain, Italy and the United Kingdom. This can be inferred from the customer-specific information stated on the invoices (namely their addresses) and the languages used. Therefore, the evidence relates to the relevant territory.
In relation to time of use, the Opposition Division finds that, aside from the pieces of evidence that are undated, all of the evidence is dated within the relevant period, or refers to transactions that took place in the relevant period.
As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.
The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.
The documents filed, namely the invoices provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Both the physical volumes and the commercial value of the sales concerning the ‘SOHO’ product range, also the respective market share, are sufficient to prove that the sales were not merely token, but sufficient for establishing a commercial scale of transactions related to the goods at issue. In that regard, it is recalled that use of the mark need not be quantitatively significant for it to be deemed genuine. Moreover, the invoices submitted by the opponent are only samples and do not represent the total sales (which can be inferred from the non-consecutive numbering of the invoices).
The territorial scope is sufficiently indicated by the fact that, as shown in the invoices, the relevant goods were sold to customers that are based in several locations in France, Spain, Italy and the United Kingdom. The sufficient degree of the duration of use is clearly indicated by the fact that the opponent submitted several invoices for each year of the relevant period. With regard to the frequency of use, the invoices leave no doubt that sale transactions under the ‘SOHO’ trade mark were carried out regularly throughout the relevant period. Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.
In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.
With regard to the undated evidence, in particular the images showing the ‘SOHO’ products under Document 1 and 2, the Opposition Division notes that such documents must be assessed in the context of other pieces of the evidence. It is considered that, in conjunction with the documents which are dated (for instance the invoices) the undated images can be taken into account for the purposes of establishing the actual manner of use of the trade mark at issue.
Therefore, it is considered that the opponent’s ‘SOHO’ trade mark is validly used.
In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.
The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).
Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the opponent’s trade mark during the relevant period in the relevant territory.
However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark. As the opponent itself admits, the trade mark is used for ‘fresh and sweet liqueur, that exists in 3 different flavours, that reveal the delicate and flavoured taste of the modern Asia’ (see document 2).
According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.
In the present case the evidence shows genuine use of the trade mark for the following goods:
Class 33: alcoholic beverages (except beers), namely liqueurs.
Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods
The goods on which the opposition is based are the following:
Class 33: alcoholic beverages (except beers), namely liqueurs
The contested goods are the following:
Class 32: Beer, lager, ale, porter and stout, and preparations for making these different beers.
An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.
The term ‘namely’ used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.
As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 32
The contested goods beers, and as well as lager, ale, porter and stout, which are just different types of beers, are similar to alcoholic beverages (except beers), namely liqueurs. Although their production processes are different, these goods all belong to the same category of alcoholic drinks intended for the general public. They can be served in restaurants and in bars and are on sale in supermarkets and grocery stores. These drinks can be found in the same section of supermarkets, although they can also be distinguished to some extent by subcategory. Beers and liqueurs can be mixed and consumed together, for instance in cocktails. Furthermore, they can originate from the same undertakings and can have the same distribution channels.
The contested preparations for making these different beers contain ingredients to produce beer. Therefore they can share the same distribution channels and will be found in the same shelves in supermarkets as beer and other alcoholic beverages such as liqueurs. Furthermore, they can originate from the same undertakings, and can be in competition with the opponent’s goods. Hence they are at least similar to a low degree.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be similar are directed at the public at large. The degree of attention is considered to be average.
- The signs
Earlier trade mark
The relevant territory is European Union.
The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.
The earlier mark is a word mark consisting of the four letters SOHO. In the case of word marks, such as the earlier mark, it is the word that is protected, and not its written form.
The contested sign is a figurative mark. It consists of two words and an abbreviation, namely Soho, Brewery, and Ltd. These three words are depicted against the background of the image of a well-worn, aged and torn tissue of different colours, namely dark and light brown, dark red, dark blue and white. These colours and the geometrical forms of some stripes create the impression of a partial image of the Union Jack flag, and the three verbal elements are placed in the middle lower part of this partial flag.
The earlier mark has a meaning, it refers namely to a certain district in London, but with respect to the relevant goods it is distinctive.
Concerning the contested sign, the stylised partial flag may be recognised as the Union Jack flag and may be understood as a reference to the origin of the beer, namely beer brewed in the United Kingdom. SOHO has no meaning with respect to the relevant goods. Brewery is non-distinctive in relation to the relevant goods, since if refers to the production site of the goods. Ltd refers to ‘limited’ (liability) (http://www.collinsdictionary.com/dictionary(english/ltd). These two latter verbal elements are present only in the contested sign and are non-distinctive for the goods in question. They represent the production site of the goods and the legal form of the producer of such goods, namely a brewery working in the form of a limited liability company.
The earlier mark has no elements that could be considered clearly more distinctive than other elements.
As regards the contested sign, it is composed of a distinctive verbal element, two non-distinctive verbal elements and a less distinctive figurative element for at least part of the public. Therefore, the verbal element SOHO is the most distinctive element of the contested sign for at least part of the public.
The earlier mark has no element that could be considered more dominant (visually eye-catching) than other elements.
The device element of the Union Jack in the contested sign is the visually dominant element as it is the most eye-catching due to its size and colouring.
Visually, the signs coincide in the word SOHO, which is the only element of the earlier right and is identically included at the beginning of the contested sign, where it forms its distinctive element. However, they differ in the device element, and the two non-distinctive word elements brewery and Ltd.
When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).
The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Furthermore, the shared element is also the distinctive element of the contested sign.
Therefore, the signs are similar to an average degree.
Aurally, the pronunciation of the signs coincides in the syllables ‛SO-HO’, present identically in both signs, and where they form the distinctive element of the contested sign. The pronunciation differs in the non-distinctive words ‛brewery’ and ‘Ltd’ of the contested mark, which have no counterparts in the earlier sign.
Therefore, the signs are similar to a high degree.
Conceptually, part of the public in the relevant territory will perceive the earlier sign as referring to a district of central London (well known for upmarket restaurants and media offices), whereas other part of the pubic might not attribute any meaning to SOHO. In the contested sign, brewery and Ltd are non-distinctive for the relevant goods and SOHO will also either be understood by part of the public as referring to this area in London or not have any meaning. The figurative element may be assimilated as referring to the United Kingdom. Therefore the Opposition Division concludes that the signs are conceptually similar to an average degree, at least for part of the relevant consumers, to the extent that they both share the term SOHO, referring to a district in London, a fact which is reinforced in the contested sign by the reference to the British flag. For the other part of the public, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
In the case at hand, even taking into account the additional verbal and figurative elements of the contested sign, there exists a likelihood of confusion. The signs are visually, aurally and for part of the public also conceptually similar and the goods are similar. The earlier sign is completely and identically contained in the contested sign, where it retains an independent distinctive role. In the present case, the relevant public will readily use the word ‘SOHO’, present identically in both marks, to refer to these marks and will pay more attention to this element that it will consider to be the actual indicator of origin. The differences between the signs are linked to a less distinctive figurative element of more decorative nature and two non-distinctive verbal elements.
In addition, it is considered that, when a sign consists of both word and figurative elements, as is the case with the contested mark, the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public will most readily refer to a sign by its verbal elements rather than by describing the elements of stylisation.
The signs have been found to be similar to the extent that they have in common the word element SOHO. This sole element of the earlier right is entirely encompassed at the beginning of the verbal elements of the contested sign. SOHO is furthermore perfectly identifiable in the contested sign where it retains an independent distinctive role. In addition the consumers generally tend to focus on the first element of a sign when confronted with a trade mark, in the present case SOHO. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The differentiating elements ‘brewery’ and ‘Ltd’ are non-distinctive and also at the end of the contested sign, therefore they will most likely be overlooked by the public.
The additional differentiating elements, namely the device element of part of the Union Jack flag, is itself not sufficient to counteract the average degree of visual, the high degree of aural and the partially conceptual similarity due to the identical verbal element SOHO, also taking into account that this device element is less distinctive for at least part of the public. The public will not perceive this device component as particularly relevant information on the commercial origin of the goods. Hence in the Opposition Division’s view, those differences are not sufficient to dispel the likelihood that the relevant public may perceive the marks as variants of each other due to the visually and aurally and conceptually similar aspects of the marks.
Furthermore it is appropriate to take into account the kind of the goods or services in question and the circumstances in which they are marketed (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 27). For instance, when goods are ordered orally - as is the case here – the circumstances of the ordering have to be taken into account. Alcoholic drinks and/or beer or also drinks without alcohol are often ordered in noisy surroundings like bars or pubs, and therefore the aural similarity of signs is more important. Since the goods in question are also consumed after being ordered orally, the aural similarity of the signs in question can in itself be sufficient, to give rise to the likelihood of confusion. (15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48).
Moreover the two signs, in view of the coinciding element, could be perceived as two different product lines coming from the same or economically linked undertakings.
The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Furthermore, while the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.
In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division were to some extent factually similar to the present case, the outcome may not be the same. Concerning the decision of the Board of Appeal R618/2011-1 of 12/07/2012, the factual situation was different as the Board was comparing wine and beer.
The applicant refers to previous national decisions to support its arguments. However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks on the national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system which applies independently of any national system (13/09/2010, T-292/08, Often, EU:T:2010:399).
Even though previous national decisions are not binding, their reasoning and outcome should be duly considered, particularly when the decision has been taken in the Member State that is relevant to the proceedings.
In the present case, the previous cases referred to by the applicant are not relevant to the present proceedings as for instance the UKIPO decision No 96604 of 19/10/2010 deals with the comparison of beer and gin.
Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 4 660 494. It follows that the contested trade mark must be rejected for all the contested goods.
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7) (d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set herein. In the present case, the opponent did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation costs.
The Opposition Division
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.