OPPOSITION No B 2 267 964

International House Trust Limited, 16 Stukeley Street, Covent Garden, London WC2B 5LQ, United Kingdom (opponent), represented by McCarthy Denning Limited, 25 Southampton Buildings, London WC2A 1AL, United Kingdom (professional representative)

a g a i n s t

International Students House, 1 Park Crescent, Regents Park, London W1B 1SH, United Kingdom (applicant), represented by Bircham Dyson Bell LLP, 50 Broadway, London Westminster SW1H 0BL, United Kingdom (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 267 964 is partially upheld, namely for the following contested goods and services:

Class 9: Magnetic data carriers; audio tapes; recording discs; digital and other electronic recordings; sound recordings; video recordings; computer discs; recording discs for visual images and sound; downloadable electronic publications; downloadable website pages.

Class 16: Books; newsletters; printed matter; journals; business cards; stationery; diaries; printed website pages; instructional and teaching material; greetings cards, training materials including overhead projection transparencies; paper, cardboard and goods made from these materials; printed publications; leaflets; booklets; brochures; magazines; posters; cards; postcards; flags; photographs; calendars; pens; pencils; boxes for pens and pencils; maps; stickers; carrier bags.

Class 35: Advertising; and business administration.

Class 41: Educational activities; tuition; Gymnasium club services; provision of Gymnasium facilities ; sports tuition and gymnasium activities; career counselling services for students (training and education advice); information relating to education; vocation guidance (education or training advice); career advisory services; educational advisory services; career information and advisory services (educational and training services)

2. European Union trade mark application No 11 679 611 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 11 679 611. The opposition is based on European Union trade mark registrations No 9 635 376 and 1 756 121, as well as United Kingdom (UK) trade mark registration No 2 238 366 for the word mark ‘International House’. The opponent invoked Article 8(1) (b) and 8(5) EUTMR.

SUBSTANTIATION OF UK TRADE MARK REGISTRATION NO 2 238 366

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall also file proof of the existence, validity and scope of protection of his earlier mark or earlier right, as well as evidence proving his entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier United Kingdom trade mark registration No 2 238 366.

On 03/12/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. Following an extension of the cooling-off period, the time limit to substantiate the earlier right was extended to 08/02/2016.

The opponent did not submit any evidence concerning the substantiation of this earlier trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of his earlier mark or earlier right, as well as his entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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.

1. The goods and services

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

European Union trade mark registration No 9 635 376 (earlier mark 1)

Class 9: Photographic, cinematographic and optical representations and equipment; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; computers and downloadable electronic website pages.

Class 16: Books; booklets; newsletters; printed matter; journals; business cards; stationery; diaries; printed website pages; instructional and teaching material; training materials including overhead projection transparancies; and certification materials.

Class 35: Advertising; Business management; Business administration; Office functions.

European Union trade mark registration No 1 756 121 (earlier mark 2)

Class 41: Educational services relating to the teaching of languages; training of teachers; all educational services and training services included in class 41.

The contested goods and services are the following:

Class 9: Magnetic data carriers; audio tapes; recording discs; digital and other electronic recordings; sound recordings; video recordings; computer discs; recording discs for visual images and sound; downloadable electronic publications; downloadable website pages.

Class 14: Jewellery; lapel pins made from precious metals and/or their alloys or coated with precious metals and/or their alloys; ornamental pins; badges; brooches; pendants; key rings; key fobs; cufflinks; tie clips; tiepins; medals; and lapel pins.

Class 16: Books; newsletters; printed matter; journals; business cards; stationery; diaries; printed website pages; instructional and teaching material; greetings cards, training materials including overhead projection transparencies; paper, cardboard and goods made from these materials; printed publications; leaflets; booklets; brochures; magazines; posters; cards; postcards; flags; photographs; calendars; pens; pencils; boxes for pens and pencils; maps; stickers; carrier bags.

Class 25: Clothing; footwear; headgear; and wristbands to wear.

Class 35: Advertising; and business administration.

Class 36: Financial affairs; charitable fundraising; financial sponsorship; charitable collections; organisation of collections; provision and administration of scholarships and grants; and organisation of fundraising activities and events; provision of financial information; provision of insurance information; providing educational scholarships.

Class 39: Transport and travel arrangements.

Class 41: Educational activities; entertainment activities; tuition; Gymnasium club services; provision of Gymnasium facilities; sports tuition and gymnasium activities; career counselling services for students (training and education advice); information relating to education; vocation guidance (education or training advice); career advisory services; educational advisory services; career information and advisory services (educational and training services).

Class 43: The provision of food and drink; catering services; bar services; accommodation services; the provision of student and academic accommodation; booking accommodation.

Class 45: The provision of personal and social services rendered by others to meet the needs of individuals, carers and dependants by providing and assisting in the provision of information being social welfare services.

The earlier European Union trade mark registration No 9 635 376 (earlier mark 1) is registered for the entire class heading of Class 35 of the Nice Classification. It was filed on 31/12/2010. According to Communication No 2/12 of the President of the Office of 20/06/2012, as regards European Union trade marks filed before 21/06/2012, the Office considers that the intention of the applicant was to cover all the goods or services included in the alphabetical list of the classes concerned in the edition of the Nice Classification in force at the time when the filing was made, in this case the 9^th edition.

Therefore, the Opposition Division considers that the opposition is also based on the following services:

Class 35: Auctioneering; rental of vending machines.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods and services in Class 16, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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 9

The contested Magnetic data carriers; recording discs; downloadable website pages are identically contained in both lists of goods and services (including synonyms).

The contested audio tapes; computer discs; recording discs for visual images and sound are included in the broad category of the opponent’s magnetic data carriers of earlier mark 1. Therefore, they are considered identical.

The contested digital and other electronic recordings; sound recordings; video recordings are similar to the opponent’s magnetic data carriers, since they have the same purpose, namely recording data. They may also have the same producers, relevant public and distribution channels. Furthermore, they are complementary.

The contested downloadable electronic publications are electronic versions of traditional media such as e-books or online newspapers and magazines that can be copied from one system to another or to a storage device. As such, they have the same nature and purpose as the opponent’s downloadable electronic website pages. Moreover, the abovementioned contested goods can have the same origin and come from the same undertakings. In addition, they can have the same consumers and distribution channels. Therefore, they are considered similar.

Contested goods in Class 16

The contested books; newsletters; printed matter; journals; business cards; stationery; diaries; printed website pages; instructional and teaching material; training materials including overhead projection transparancies; booklets are identically contained in both lists of goods.

The contested greetings cards; printed publications; leaflets; brochures; magazines; posters; cards; postcards; photographs; calendars; maps; stickers are included in the broad category of the opponent’s printed matter of the earlier Community trade mark registration. Therefore, they are considered identical.

The contested paper, cardboard and goods made from these materials; pens; pencils; are included in the broad category of the opponent’s stationery. Therefore, they are identical.

The contested flags in this class are usually made of paper. They are related to the opponent’s stationery, since they may target the same consumers and may be distributed through the same channels. Furthermore, they may have the same commercial origin. Therefore, they are similar.

The contested boxes for pens and pencils are similar to the opponent’s stationery. These goods have a similar purpose and are complementary to pens and pencils, which are included in stationery. They may also be produced by the same company and distributed though the same channels. Moreover, they will be found close to one another in the same retail outlets.

The contested carrier bags, which are usually made of paper, are similar to a low degree to the opponent’s stationery, as these goods are sometimes used in a complementary way, have the same distribution channels and points of sale, can target the same consumers and may be produced by the same companies.

Contested services in Class 35

The contested services advertising; and business administration are identically contained in both lists of services.

Contested services in Class 36

The contested services, namely financial affairs; charitable fundraising; financial sponsorship; charitable collections; organisation of collections; provision and administration of scholarships and grants; and organisation of fundraising activities and events; provision of financial information; provision of insurance information; providing educational scholarships encompass a range of services related to financial affairs, scholarships, insurance and fundraising. They are different from all the opponent’s goods and services in nature and purpose. Furthermore, they differ in commercial channels and relevant public and they are provided by different undertakings. Finally, they are neither in competition nor complementary.

In particular, the opponent’s services in Class 35 contain mainly services provided in order to help or enable other businesses to perform their function or purpose. Such services are usually rendered by companies specialised in this specific field, such as business consultants, who gather information and provide tools and expertise to enable their customers to carry out their business, or who provide businesses with the necessary support to develop and expand market share by means of management and administration strategies. Hence, these services will not be provided by the same undertakings as the applicant’s services in Class 36, namely financial, fundraising and/or educational institutions.

Likewise, the opponent’s services in Class 41 concern the providing of any form of education and training. It is true that the contested provision and administration of scholarships and grants; providing educational scholarships relate to the field of education and providing of training as they can target the same end users. However, the nature and purpose of these services are different, as well as the methods of use, distribution channels and providers. Furthermore, these services are neither in competition nor complementary. In addition, the mere fact that some universities may grant scholarships to their students does not automatically imply that the relevant public will regard these services as being necessarily similar.

Therefore all the contested services are considered to be dissimilar.

Contested services in Class 41

The contested educational activities; tuition are included in the broad category of the opponent’s all educational services and training services included in class 41 (earlier mark 2). Therefore, they are considered identical.

The contested career counselling services for students (training and education advice); information relating to education; vocation guidance (education or training advice); career advisory services; educational advisory services; career information and advisory services (educational and training services) have the same distribution channels and the same origin as the opponent’s all educational services and training services included in class 41 (earlier mark 2). They are also rendered in combination and are, therefore, considered similar.

The contested Gymnasium club services; provision of Gymnasium facilities; sports tuition and gymnasium activities are similar to a low degree to the opponent’s all educational services and training services included in class 41 (earlier mark 2). These services can coincide in their purpose, in the sense that educational or training activities can be directly related to sporting activity. Furthermore, they can also coincide in their relevant public.

The remaining contested services entertainment activities are intended to entertain or amuse people, whereas the opponent’s services in this class are offered to develop the mental faculties of persons or animals. These services belong to different areas of activity, have a different nature and purpose and providers. Moreover, these services are not complementary or in competition. Therefore, they are considered dissimilar.

When comparing these contested services with the opponent’s services in Class 35, the same reasoning as in the previous paragraph applies. Indeed, the latter contain clearly different services, namely auctioneering services, rental of vending machines and services provided in order to help or enable other businesses to perform their function or purpose.

The contested entertainment activities are also dissimilar to the opponent’s goods in Class 9. They are different in nature, as services are intangible whereas the contested goods are tangible. Furthermore, they serve different needs: the goods are directed at various groups of consumers requiring finished goods and indeed to manufacturers of other goods, whilst the contested services are directed at the general public, teachers and trainers who wish to be educated or trained. The fields are not directly related, they each belong to a different area of activity, are of a different nature and have different initial purposes. The fact that a product in Class 9 can be needed for educational purposes does not imply that there exists a similarity between the goods and services under comparison. Consequently, the Opposition Division considers that they are dissimilar.

The remaining earlier goods covered under Class 16 refer mainly to paper, goods made from that material, printed matter and stationery. The Opposition Division is of the opinion that the contested services in class 41 are not directly related to the aforementioned opponent’s goods and, therefore, there is no link that can be established between them. The services relate to completely different fields and have nothing in common. They are not provided by the same undertakings, have a different public, do not share the same purpose, are neither in competition nor complementary. The fact that some of the printed matter could serve as means for advertising the entertainment services or could be used for entertainment activities is a connection which is too remote and thus insufficient for the finding of similarity.

In light of all the above, the contested entertainment activities are dissimilar to all the opponent’s goods and services.

Contested goods and services in Class 14, 25, 39, 43 and 45

The contested goods in Class 14 are jewellery, pins, badges, brooches, pendants, key rings, cufflinks, tie clips and medals. The contested goods in Class 25 are clothing, footwear and headgear. These goods have nothing in common with the goods and services for which the earlier marks are registered in Classes 9, 16, 35 and 41. Indeed, it is obvious that the nature and purpose of the applicant’s goods and the opponent’s goods and services differ; they have different commercial origins, they have different distribution channels and they are neither complementary nor interchangeable. Therefore, the goods are dissimilar.

The contested sign also covers services in Class 39 relating to transport and travel, services in Class 43 relating to accommodation and provision of food and drinks as well as services in Class 45 relating to social welfare services. Likewise, the Opposition Division fails to find relevant connections between these services and the opponent’s goods and services in Classes 9, 16, 35 and 41. Apart from having a different nature and purpose, they are neither complementary nor in competition. They differ in their channels of distribution and are usually provided by different companies. Therefore, they are considered dissimilar.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar (to different degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention will vary from average to high depending on the purpose and price of the goods or services.

3. The signs

International House	INTERNATIONAL STUDENTS HOUSE
Earlier trade marks	Contested sign

The relevant territory is the 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 whole European Union with the exception of the English-, German-, Dutch-, Swedish-, Norwegian-, Polish-, Latvian-, Slovakian-, Czech-, Slovenian- and Croatian-speaking part of the relevant public.

The signs are word marks, namely ‘International House’ for the earlier marks and ‘INTERNATIONAL STUDENTS HOUSE’ for the contested sign. Therefore, the words as such are protected and not their written form. In particular, it is irrelevant whether word marks are depicted in upper case or lower case letters.

The element ‘INTERNATIONAL’, present in both marks, will be understood, since it is a basic English word, or a very similar word exists in the respective languages with the same meaning, namely, ‘worldwide’, ‘involving two or more nations or nationalities’. For example ‘internațional’ in French, Romanian, ‘internazzjonali’ in Maltese, ‘internazionale’ in Italian, ‘internacional’ in Spanish or ‘internationell’ in Swedish. In addition, this term is commonly used in the course of trade to indicate that a given undertaking operates in more than one country or that a business activity is performed across borders. In relation with goods, this word may also be perceived as an indication that they are available in several countries. Therefore, it is considered that this element is weak for the relevant goods and services. The relevant public who understands the meaning of that element will not pay as much attention to this weak element as to the other more distinctive elements of the marks. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

On the contrary, the common word ‘HOUSE’ and the word ‘STUDENTS’ of the contested sign will not be understood by the public on which the comparison is focused.

The marks under comparison have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the words INTERNATIONAL, which is weak, and HOUSE, which is distinctive. Thus, both words forming the earlier mark are included in the contested sign. Moreover, the first parts of the conflicting marks are identical, both starting with the same word INTERNATIONAL. This is of particular relevance since 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.

The signs differ only in the additional word STUDENTS in the contested sign, which is sandwiched between the two coinciding elements, and, despite its value as an indicator of origin, is not as perceptible as they are, due to its position in the middle which has less impact.

Finally, although the similarity in the weak element INTERNATIONAL is not significant in itself for a part of the goods and services, namely for all the relevant goods and services, it nevertheless contributes to enhancing the overall visual similarity, as it makes the different element less visible and gives both signs a similar structure with an identical beginning and ending.

In view of the above, the signs are considered similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the verbal elements INTERNATIONAL and HOUSE and differs in the sound of the verbal element STUDENTS of the contested sign. Given what has been said above in relation to the respective importance that consumers will attribute to the coinciding and different elements, and to the position of STUDENTS within the contested sign, the signs are considered similar to an average degree.

Conceptually, although the signs as a whole do not have any meaning for the public in the relevant territory, the element INTERNATIONAL included in both signs, will be understood by a large part of the non-English-speaking public and considered as weak. To that extent, the signs are conceptually similar to a low degree.

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

4. Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

A likelihood of confusion (including a likelihood of association) 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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

Moreover, the Court has set out the essential principle that 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 the goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods and services are partly identical, partly similar to different degrees and partly dissimilar. The signs are visually and aurally similar to an average degree and conceptually to a low degree. The similarity results from the coinciding verbal elements INTERNATIONAL and HOUSE, which constitute the whole earlier mark. Furthermore, the beginning and the end of the signs are identical, resulting in a similar structure. For these reasons in particular, the weak nature of the element INTERNATIONAL is of less importance. Rather, it even contributes to the similarity of the signs, since it is unrealistic to suggest that it will be ignored due to its position at the beginning of the signs.

The only difference resides in the additional word STUDENTS of the contested sign, which is placed in a less striking position, between the two coinciding words.

In addition, account should also be taken of the normal degree of distinctiveness of the earlier mark and the fact that average consumers only rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Based on all the foregoing, it is considered that for a sufficient part of the public, there are strong coincidences between the signs with a decisive impact. Taken together with the identity and similarity of part of the goods and services, it is likely that these consumers (even more attentive ones) will believe that the conflicting goods and services (even those which are lowly similar) come from the same undertaking or economically linked undertakings.

As a consequence, the Opposition Division finds that a likelihood of confusion cannot be safely excluded for a part of the public, namely the non-English- , non-German-, non-Dutch-, non-Swedish-, non-Norwegian-, non-Polish-, non-Latvian-, non-Slovakian-, non-Czech-, non-Slovenian- and non-Croatian part of the relevant 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 partially well founded on the basis of the opponent’s European Union trade mark registrations. It follows that the contested trade mark must be rejected for the contested goods and services found to be identical and similar.

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

The Opposition Division will now examine the remaining ground on which the opposition is based, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office shall give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party shall provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 03/12/2013 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. Following an extension of the cooling-off period, the time limit was extended to 08/02/2016.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

COSTS

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

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

The Opposition Division

Loreto URRACA LUQUE

Steve HAUSER

Lucinda CARNEY

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.