OPPOSITION No B 2 351 123

Henkel AG & Co. KGaA, Henkelstr. 67, 40589 Düsseldorf, Germany (opponent)

a g a i n s t

Tish & Snooky’s N.Y.C. Inc., 4th Floor, 21-07 Borden Avenue, Long Island City, New York, New York 11101, United States of America (applicant), represented by Carpmaels & Ransford LLP, One Southampton Row, London WC1B 5HA, United Kingdom (professional representative).

On 29/09/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 351 123 is upheld for all the contested goods, namely:

Class 3: Cosmetics and cosmetic products, lipsticks, nail polish, hair care products, hair colors, hair dyes, perfumes and fragrances, soaps; fashion products as far as included in class 3, namely hair mascara, adhesives for cosmetic purposes, bleaching preparations (decolorants) for cosmetic purposes, color-removing preparations, cosmetic kits, cosmetic creams, cosmetic dyes, eau-de-cologne, essential oils, paper guides for eye make-up, eyebrow cosmetics, eyebrow pencils, adhesives for affixing false eyelashes, cosmetics preparations for eyelashes, false eyelashes, false nails, hair lotions, hair sprays, lotions for cosmetic purposes, make-up, make-up powder, make-up preparations, make-up removing preparations, mascara, nail care products, nail care preparations, nail varnish, oils for cosmetic purposes, cosmetic pencils, perfumery, perfumes, shampoos, cosmetic skin care preparations, toilet water, decorative transfers for cosmetic purposes.

2. European Union trade mark application No 12 328 721 is rejected for all the contested goods. It may proceed for the remaining goods.

3. The applicant bears the costs, fixed at EUR 350.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 12 328 721, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 984 245. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

As mentioned by the applicant and the opponent in their submissions of 15/01/2016 and 16/03/2016, respectively, the sole earlier mark on which the opposition is based, namely EUTM registration No 984 245, has been partially revoked by the decision dated 20/05/2015 rendered in revocation proceedings No 9242 C. Furthermore, the opponent expressly confirmed that it wished to restrict its opposition to the goods for which the earlier mark is currently registered.

In particular, the earlier mark has been revoked for soaps, perfumery, namely, deodorants for personal use; cosmetics, preparations for cleaning and perming hair in Class 3. It follows that the earlier mark remains registered for preparations for treating, dyeing, colouring, bleaching and styling hair in Class 3, on which the opposition is based.

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 984 245.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 31/01/2014. 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 31/01/2009 to 30/01/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 3: Preparations for treating, dyeing, colouring, bleaching and styling hair.

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 19/01/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 19/03/2016 to submit evidence of use of the earlier trade mark. On 16/03/2016, within the time limit, the opponent requested that the evidence that it had submitted in revocation proceedings No 9242 C be considered in the present case as proof of use, since it relates to the relevant period of time. Furthermore, in order to identify this evidence, the opponent attached a numbered list of all the items of evidence that were submitted during the revocation proceedings. Finally, the opponent submitted as an attachment some samples of the evidence submitted in the revocation proceedings in question, namely an affidavit and some invoices, magazine advertisements, price lists and market share reports. The applicant did not submit any comment in this respect, nor did it comment on the proof of use at all.

The Opposition Division observes that the reference made by the opponent to the proof of use previously submitted to the Office is sufficiently clear to identify the material to which the opponent refers. The opponent mentioned the number of the revocation proceedings in which this evidence was submitted (9242 C) and the date on which the corresponding decision was issued (20/05/2015), and submitted a copy of said decision, which includes a list of the evidence filed in that case, along with a detailed list of the evidence submitted in those proceedings.

It follows that the proof of use referred to by the opponent has to be taken into account in the present proceedings.

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 to be taken into account is, in particular, the following:

• An affidavit dated 28/04/2014 signed by the opponent’s Corporate Senior Vice President, providing figures for annual sales and marketing expenditures for products under the EUTM within the EU (Europe, Germany, Finland and the United Kingdom,) from 2009 to 2013.

• Fourteen invoices issued to customers in the United Kingdom and Germany and dated between 2010 and 2014. The invoices refer to ‘LIVE’ products such as ‘Live Gloss Champagne Blonde’, ‘Live Gloss Midnight Red’, ‘LC XXL’ (LC stands for ‘Live Color’) and ‘Live Lum’. The logo and the name ‘Schwarzkopf & Henkel GmbH’ appear on the invoices, along with, on some of the invoices, the logo , referring to the company issuing the invoices.

• Eight invoices issued by third parties, such as advertising agencies, to the opponent, dated 2010 and 2013; the earlier EUTM is mentioned in the invoices. The invoices are issued to ‘Schwarzkopf UK a Div of Henkel’, ‘Henkel Ltd’, ‘Henkel Norden Oy’ and ‘Henkel AG & Co. KGaA’.

• Magazine advertisements dated between 2009 and 2013, in English and German, depicting ‘LIVE Unlimited Gloss’, ‘LIVE COLOR XXL’ and ‘LIVE Salon Style’ products, all defined as falling within the product category ‘Colorant – Permanent’.

• Excerpts from the ‘Henkel Beauty Care’ price list for the United Kingdom and German markets (in English and German) dated 2009, 2011 and 2012. They refer to a range of products, including ‘LIVE COLOR XXL’ and ‘LIVE Salon Style’ products.

• Samples of various items of packaging bearing the mark ‘LIVE’ together with the additional specifications ‘COLOR XXL’, ‘Atomic Blonde’, ‘Champagne Blonde’ or ‘Urban Brown’.

• Scans providing evidence of selected promotional activities, demonstrating the presence of the opponent’s ‘LIVE’ hair colourant products in the catalogues of retailers such as Edeka, Kaufland, Rossman, Müller und Zimmerman, dated between 2012 and 2014.

• A document of unknown origin showing market share figures for hair colourant products in Germany, Austria and the United Kingdom for 2010-2012. The earlier mark is referred to on certain pages of the document.

• A selection of stills from a TV advertisement showing a ‘LIVE’ hair colourant product.

• Three pictures of hair colourant products under the earlier mark on the shelves in shops.

• A screenshot of the website www.livecolor.co.uk showing the product ‘LIVE COLOR XXL’ and advice on how to apply it.

• Copies of an instruction leaflet for the product ‘LIVE COLOR XXL’ in Dutch, English and French.

• An image of the information leaflet provided with the product ‘Syoss LIVE Salon Style Conditioner Sachet’ (dated 2011).

• A list of all ingredients of ‘LIVE COLOR DEVELOPER’ and ‘LIVE COLOR XXL Color Cream’.

• An internet article about ‘LIVE COLOR XXL’ describing the caring effects of the product.

• A screenshot from the website www.cosmotv.de showing the ‘LIVE COLOR XXL’ product and related information, in German, with an English translation thereof.

• Definitions of ‘cosmetics’ and ‘perfume’ from the Oxford English Dictionary.

• A copy of the packaging of the product ‘LIVE Pre-Lightener COLOR XXL, Aufheller Decolorant’.

• An excerpt from a Wikipedia article about surfactants.

• An article about ‘Haarbehandlung’ (hair treatment) from the German Encyclopedia of Chemistry.

• Printouts showing various ‘AVEDA’ and ‘NIVEA’ cosmetic products, with descriptions in English.

• Information on shares held by the Henkel Group, originating from the opponent, dated 31/12/2013 and referring to 2013.

• Examples of Schwarzkopf umbrella marks.

• A copy of the ‘LIVE COLOR XXL Look Book’.

• Definitions from Wikipedia of ‘perm’ (hairstyle) and ‘soap’.

• Extracts from the internet regarding competitors’ multi-effect hair products.

From the outset, it should be noted that, according to Article 15(2) EUTMR, use of the mark with the consent of the proprietor is deemed to constitute use by the proprietor. This means that the owner must have given its consent prior to the use of the mark by the third party. Acceptance later is insufficient.

Use by companies economically related to the opponent, such as members of the same group of companies (affiliates, subsidiaries, etc.) is to be considered authorised use. Where goods are produced by the opponent (or with its consent), but subsequently placed on the market by distributors at wholesale or retail level, this is to be considered use of the mark (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 32; 16/11/2011, T‑308/06, Buffalo Milke, EU:T:2011:675, § 73).

The fact that the opponent submitted evidence of use of its mark by third parties that are its subsidiaries implicitly shows that it consented to this use (08/07/2004, T‑203/02, VITAFRUIT, EU:T:2004:225). In the present case, and in accordance with Article 15(2) EUTMR, it is assumed that the evidence filed by the opponent is an implicit indication that the use was made with its consent and is equivalent to use by the opponent itself.

The invoices show that the places of use are Germany and the United Kingdom. This can be inferred from the language of the documents (German and English), the currency mentioned (euros and pounds sterling) and some addresses in the United Kingdom and Germany. Therefore, the evidence relates to the relevant territory.

Most of the evidence, in particular the invoices, price lists, extracts from magazines and samples of catalogues, is dated within the relevant period.

The documents filed, namely the invoices, the magazine advertisements, the market share reports, the price lists and the affidavit, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the evidence shows, inter alia, the mark ‘LIVE’ used on invoices and product packaging separately from other signs, such as ‘Schwarzkopf’ or ‘Henkel’, and along with additional elements, such as ‘XXL COLOR’, ‘Unlimited Gloss’ or ‘Salon Style’.

With regard to additions, the Court has held that several signs may be used simultaneously without altering the distinctive character of the registered sign (08/12/2005, T‑29/04, Cristal Castellblanch, EU:T:2005:438, § 34). It is quite common in some market areas, including the sector of cosmetics, for goods to bear not only their individual mark, but also the mark of the business or product group (‘house mark’). In these cases, the registered mark is not used in a different form, but it is used independently and at the same time with the additional elements. The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied either where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C‑12/12, Colloseum Holding, EU:C:2013:253, § 36).

The Court has also held that, if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T‑482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

From the evidence submitted, it is clear that the element ‘LIVE’ is the distinctive element in relation to the relevant goods. The additional elements ‘XXL COLOR’, ‘Unlimited Gloss’ and ‘Salon Style’, and the other specifications appearing on the packaging submitted, such as ‘COLOR XXL’, ‘Atomic Blonde’, ‘Champagne Blonde’ and ‘Urban Brown’, are weak if not non-distinctive, as they will be understood by those consumers who have a knowledge of English as merely referring to the nature of the goods (hair colourant preparations) and their characteristics. Furthermore, the sign ‘Schwarzkopf’ will be perceived as an umbrella or a house mark.

Consequently, the evidence shows use of the mark in a form which does not alter the distinctive character of the earlier mark and therefore constitutes use of the earlier mark under Article 15 EUTMR.

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 earlier trade mark during the relevant period in the relevant territory.

For the sake of clarity, it should be noted that the evidence shows use of the earlier mark in relation to hair colourants, including hair glosses for different hair colours such as blonde and red. Therefore, use of the mark for preparations for hair dyeing, colouring and bleaching is considered to have been proven by the opponent. Moreover, since these goods fall within the registered broader categories preparations for treating and styling hair, which were also subject to proof of use, genuine use is considered to have been proven for these broader categories as well as for specific goods within them. Moreover, the goods for which use has been proven, namely preparations for hair dyeing, colouring and bleaching, cannot be considered subcategories of the other goods in the specification, preparations for treating and styling hair.

Therefore, for the purposes of the present proceedings, the goods for which the earlier mark must be considered registered and on which the opposition is based will be the following:

Class 3: Preparations for treating, dyeing, colouring, bleaching and styling hair.

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

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

Class 3: Preparations for treating, dyeing, colouring, bleaching and styling hair.

The contested goods are the following:

Class 3: Cosmetics and cosmetic products, lipsticks, nail polish, hair care products, hair colors, hair dyes, perfumes and fragrances, soaps; fashion products as far as included in class 3, namely hair mascara, adhesives for cosmetic purposes, bleaching preparations (decolorants) for cosmetic purposes, color-removing preparations, cosmetic kits, cosmetic creams, cosmetic dyes, eau-de-cologne, essential oils, paper guides for eye make-up, eyebrow cosmetics, eyebrow pencils, adhesives for affixing false eyelashes, cosmetics preparations for eyelashes, false eyelashes, false nails, hair lotions, hair sprays, lotions for cosmetic purposes, make-up, make-up powder, make-up preparations, make-up removing preparations, mascara, nail care products, nail care preparations, nail varnish, oils for cosmetic purposes, cosmetic pencils, perfumery, perfumes, shampoos, cosmetic skin care preparations, toilet water, decorative transfers for cosmetic purposes.

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 applicant’s list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

The contested cosmetics and cosmetic products; cosmetic creams include, as broader categories, the opponent’s preparations for treating, dyeing, colouring, bleaching and styling hair. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested hair care products, hair colours, hair dyes, fashion products as far as included in class 3, namely hair mascara, color-removing preparations, cosmetic dyes; hair lotions, hair sprays; shampoos are identical to the opponent’s preparations for treating, dyeing, colouring, bleaching and styling hair, either because the goods are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods.

Perfumes (repeated twice in the applicant’s list) and fragrances, soaps; lipsticks, nail polish, fashion products as far as included in class 3, namely adhesives for cosmetic purposes; bleaching preparations (decolorants) for cosmetic purposes, cosmetic kits, eau-de-cologne, essential oils, paper guides for eye make-up, eyebrow cosmetics, eyebrow pencils, adhesives for affixing false eyelashes, cosmetics preparations for eyelashes, false eyelashes, false nails, lotions for cosmetic purposes; make-up, make-up powder, make-up preparations, make-up removing preparations, mascara, nail care products, nail care preparations, nail varnish, oils for cosmetic purposes, cosmetic pencils, perfumery, cosmetic skin care preparations, toilet water, decorative transfers for cosmetic purposes are similar to the opponent’s preparations for treating, dyeing, colouring, bleaching and styling hair, as they can have the same producers, end users and distribution channels.

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 found to be identical or similar are directed at the public at large. The degree of attention is expected to be average.

3. The signs

LIVE	LIVE FAST AND DYE YOUR HAIR
Earlier trade mark	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 English-speaking part of the relevant public.

The earlier mark, ‘LIVE’, will be perceived as a verb meaning ‘be alive’.

The contested mark, ‘LIVE FAST AND DYE YOUR HAIR’, will be understood as an exhortation to live at a fast pace and to dye one’s own hair. However, this expression may also be perceived, by at least part of the relevant public, as a play on words based on the very similar-sounding expression ‘live fast and die young’ (meaning ‘take lots of risks and don’t suffer through old age’), made famous by, inter alia, a biography of James Dean entitled Live Fast, Die Young, various films and songs having the same title and the 1947 book Knock on Any Door by Willard Motley.

The last part of the contested mark ‘DYE YOUR HAIR’ will be understood as an exhortation to dye one’s hair. Bearing in mind that some of the relevant goods are cosmetic products intended for treating and colouring hair, this element is weak for those goods, namely for hair care products, hair colours, hair dyes, fashion products as far as included in class 3, namely hair mascara, color-removing preparations, cosmetic creams, cosmetic dyes; hair lotions, hair sprays, since ‘dye your hair’ will be perceived as referring to the intended purpose and characteristics of the goods in question.

In view of the above considerations, the element ‘LIVE FAST’ is considered the most distinctive element in relation to the goods listed above. However, for the remaining goods, the contested mark has no element that could be considered more distinctive than other elements.

Visually, the signs coincide in their first word, ‘LIVE’, which constitutes the entire earlier mark. The signs differ in the remaining word elements, ‘FAST AND DYE YOUR HAIR’, of the contested mark. However, as noted above, the words ‘DYE YOUR HAIR’ are weak in relation to some of the relevant goods.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the word ‘LIVE’, present identically in both signs. The pronunciation differs in the words ‘FAST AND DYE YOUR HAIR’ of the contested mark, which have no counterparts in the earlier sign. The same considerations outlined above apply to the words ‘DYE YOUR HAIR’ in the contested mark.

Therefore, the signs are aurally similar to a low degree.

Conceptually, as noted above, the public in the relevant territory will perceive the earlier sign as meaning ‘be alive’, and the contested mark as an exhortation to live at a fast pace and to colour one’s hair. The presence of the word ‘FAST’ next to the verb ‘LIVE’ in the contested mark qualifies ‘live’ by defining how to live, i.e. at a fast pace. The remaining part of the contested mark, ‘and dye your hair’, will be understood with the meaning explained above. However, the intrinsic concept of the coinciding word, ‘LIVE’, is ultimately the same in both marks and is not altered by the presence of the additional elements in the contested mark.

As the signs will be associated with a similar meaning, on account of their coinciding element, ‘LIVE’; taking the above into account, 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 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.

5. Global assessment, other arguments and conclusion

The goods are partly identical and partly similar (to various degrees).

The marks are visually, aurally and conceptually similar due to the presence in both of them of the word ‘LIVE’, which constitutes the entire earlier mark and the first element of the contested mark. In this respect, it should be noted that 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, as established above, the word ‘LIVE’ is one of the two most distinctive elements in the contested mark for at least some of the relevant goods.

Account should be also taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.

In addition, it should be taken into consideration that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

It should be recalled that Article 8(1)(b) EUTMR states that ‘the likelihood of confusion includes the likelihood of association with the earlier trade mark’; it follows that the concept of a likelihood of association is not an alternative to that of a likelihood of confusion, but serves to define its scope. In the present case, it is conceivable that the relevant consumer will perceive the mark applied for as a sub-brand or a variation of the earlier mark, configured in a different way to designate a different type of goods. It is, therefore, conceivable that the target public may regard the goods designated by the trade mark applied for and those designated by the earlier mark as two ranges of goods coming, nonetheless, from the same undertaking.

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 EUTMR No 984 245. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

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 therein. 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

Isabel DE ALFONSETI HARTMANN

Claudia ATTINAÀ

Ana MUÑIZ RODRÍGUEZ

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.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.