OPPOSITION No B 2 505 033

Millennium 2000 GmbH Hegener & Weiner, Liebigstrasse 28, 80538 München, Germany (opponent), represented by Klaka, Delpstr. 4, 81679 München, Germany (professional representative)

a g a i n s t

Millennium Stadium plc, Principality Stadium, Westgate Street, Cardiff CF10 1NS, United Kingdom (applicant), represented by Lane IP Limited, 2 Throgmorton Avenue, London EC2N 2DG, United Kingdom (professional representative).

On 20/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 505 033 is partially upheld, namely for the following contested goods and services:

Class 9: Data processing equipment and computers; computer hardware and firmware; computer software (including software downloadable from the Internet); PDAs (Personal Digital Assistants), pocket PC’s, laptop computers; computers and computer hardware; computer games; data processing apparatus; electric and electronic scoreboards; time recording apparatus and instruments; visual display units; none of the aforesaid including encoded and encrypted credit cards, debit cards, charge cards.

Class 28: Computer games equipment adapted for use with an external display screen or monitor; games adapted for use with television receivers; computer and electronic games consoles.

Class 41: Entertainment services; provision of entertainment events; all of the above mentioned not related to any insurance, financial, monetary and banking affairs and activities.

2. European Union trade mark application No 13 401 419 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 some of the goods and services of European Union trade mark application No 13 401 419, namely against all the goods and services in Classes 9, 28 and 41. The opposition is based on international trade mark registration No 741 953 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

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 28: Games, toys; electronic games; electronic toys.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer hardware and firmware; computer software (including software downloadable from the Internet); compact discs; digital music (downloadable from the Internet); telecommunications apparatus; mouse mats; mobile phone accessories; contact lenses, spectacles and sunglasses; clothing for protection against accident, irradiation or fire; PDAs (Personal Digital Assistants), pocket PC’s, laptop computers; tapes; cassettes; DVDs; MP3s; cameras; disposable cameras; bags for camera equipment; films; photographic transparencies and photographic films prepared for exhibition purposes; slides; lenticulars; video recorders; video cassettes; computers and computer hardware; computer mice; memory cards and sticks; computer games; screensavers; publications in electronic format; data processing apparatus; electric and electronic scoreboards; video discs; time recording apparatus and instruments; parts and fittings for all the aforesaid goods; smart cards and telephone cards; telephone apparatus and instruments; mobile telephones; telephone answering apparatus; telephone recorders; telephones incorporating facsimile machines; magnets; visual display units; protective helmets and sports bags for protective helmets; none of the aforesaid including encoded and encrypted credit cards, debit cards, charge cards.

Class 28: Computer games equipment adapted for use with an external display screen or monitor; games adapted for use with television receivers; computer and electronic games consoles.

Class 41: Education; providing of training; entertainment services; sporting and cultural activities; provision of information, escorting and directing spectators, visitors and vehicles, all being performed by stewards in relation of sports events, conferences, seminars, concerts and exhibitions; recreational information services; recreational information services provided on computer networks and by telephone; provision of sport, entertainment, cultural and musical events; provision of stadium facilities; hosting of exhibitions and seminars; educational services relating to sport, culture and music; production of television programmes; training services; rugby academy services; assessment and qualifications services (education); coaching; arranging and organisation of competitions and sporting events; provision of courses of instruction in coaching, sports medicine, player development and child protection and welfare; physical fitness instruction; practical training demonstrations relating to rugby; providing courses of instruction in self-awareness; arranging and conducting seminars, conferences, exhibitions, symposia and concerts; provision of club recreation facilities; officiating at sports contests; sports camp services; sports club services; provision of facilities for sports events, seminars and concerts; sports refereeing and officiating; timing of sports events; staging of sports tournaments; publication of printed matter; award ceremonies; betting services; information, advisory and consultancy services relating to the aforegoing; all of the above mentioned not related to any insurance, financial, monetary and banking affairs and activities.

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 computer games; none of the aforesaid including encoded and encrypted credit cards, debit cards, charge cards and the opponent’s electronic games in Class 28 are all goods that are also known as PC games, computer games or video games. A computer game is a computer-controlled game whose players interact with objects displayed on a screen for entertainment. An electronic game is essentially the same kind of entertainment as the computer game, but in the form of a hand-held video game or a video arcade game. Therefore, they have the same purpose and the same methods of use and can have the same producers, consumers and distribution channels. Furthermore, they are in competition. Therefore, they are considered similar to a high degree.

The contested computer hardware and firmware; computer software (including software downloadable from the Internet); computer hardware; visual display units; none of the aforesaid including encoded and encrypted credit cards, debit cards, charge cards are all similar to the opponent’s electronic games in Class 28. These goods are complementary to the extent that hardware, firmware and software are essential for the functioning of the opponent’s electronic games. Furthermore, their nature is the same, they may be produced by the same undertakings, they target the same consumers and they can be distributed through the same channels. In addition, the contested goods may be used in the same establishments as those in which games of chance are played, such as casinos and amusement arcades.

The contested data processing equipment and computers; PDAs (Personal Digital Assistants), pocket PC’s, laptop computers; computers; data processing apparatus; none of the aforesaid including encoded and encrypted credit cards, debit cards, charge cards are all similar to the opponent’s electronic games in Class 28. Aside from being used in conjunction with video games in their broad sense, they may be produced by the same undertakings, they target the same consumers and they are distributed through the same channels.

The contested electric and electronic scoreboards; time recording apparatus and instruments; none of the aforesaid including encoded and encrypted credit cards, debit cards, charge cards have the purposes of displaying the score and/or recording the time in a game through electric means. They can be used in conjunction with the opponent’s electronic games in Class 28, they target the same consumers and they are distributed through the same channels. Therefore, they are similar at least to a low degree.

The contested magnetic data carriers, recording discs; compact discs; tapes; cassettes; DVDs; MP3s; video cassettes; memory cards and sticks; video discs; none of the aforesaid including encoded and encrypted credit cards, debit cards, charge cards are devices for the storage of data and the easy transportation of the stored data. However, these contested goods, even ‘the new’ storage devices, such as memory cards and sticks, are purchased ‘blank’ so that the consumer may store his or her personal data. As these goods and the opponent’s goods are not in competition or complementary to each other, they are considered dissimilar.

The remaining contested scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; mechanisms for coin operated apparatus; cash registers; calculating machines; fire-extinguishing apparatus; digital music (downloadable from the Internet); telecommunications apparatus; mouse mats; mobile phone accessories; contact lenses, spectacles and sunglasses; clothing for protection against accident, irradiation or fire; cameras; disposable cameras; bags for camera equipment; films; photographic transparencies and photographic films prepared for exhibition purposes; slides; lenticulars; video recorders; computer mice; screensavers; publications in electronic format; parts and fittings for all the aforesaid goods; smart cards and telephone cards; telephone apparatus and instruments; mobile telephones; telephone answering apparatus; telephone recorders; telephones incorporating facsimile machines; magnets; protective helmets and sports bags for protective helmets; parts and fittings for data processing equipment and computers, computer hardware and firmware, computer software (including software downloadable from the Internet), PDAs (Personal Digital Assistants), pocket PC’s, laptop computers, computers and computer hardware, computer games, data processing apparatus, electric and electronic scoreboards, time recording apparatus and instruments; none of the aforesaid including encoded and encrypted credit cards, debit cards, charge cards are apparatus, instruments and materials used for various purposes. These goods are dissimilar to all the opponent’s goods. The contested goods relate to specific pieces of equipment used in science, photography, cinema or for nautical, surveying, weighing, measuring, signalling or life-saving purposes, or for the control and regulation of electricity, and can also be used in electronic publications, audio-visual goods, telephones and related goods. None of these goods have anything relevant in common with the opponent’s goods and their natures and purposes and their producers and usual distribution channels are different. Moreover, they are not in competition or generally complementary to one another.

Contested goods in Class 28

The contested games adapted for use with television receivers are included in the broad category of the opponent’s games. Therefore, they are identical.

The contested computer games equipment adapted for use with an external display screen or monitor has the same purpose as the opponent’s electronic games. Moreover, they can have the same producers, methods of use, end users and distribution channels. Therefore, they are similar.

The contested computer and electronic games consoles are electronic, digital or computer devices that output a video signal or visual image to display a video game that one or more person can play. Consequently, they have the same purpose as the opponent’s electronic games and can have the same producers, relevant public and distribution channels. Therefore, they are similar to the opponent’s electronic games.

Contested services in Class 41

The opponent’s games and electronic games in Class 28 undeniably complement, to some extent, the contested entertainment services; provision of entertainment events; all of the above mentioned not related to any insurance, financial, monetary and banking affairs and activities. Although by their nature goods are generally different from services, these goods and services have the same purpose of amusement and they have the same consumers. They can have the same origins and distribution channels, since it is not unlikely that producers will manufacture and sell a wide range of amusement products and provide entertainment services. Therefore, the opponent’s goods and the contested services are similar to a low degree.

The contested recreational information services; recreational information services provided on computer networks and by telephone; all of the above mentioned not related to any insurance, financial, monetary and banking affairs and activities are dissimilar to the opponent’s goods, as it is not common in the market for the manufacturer of toys and games in Class 28 to provide such information services. Therefore, the goods and services at issue do not have the same origins or distribution channels. Moreover, the contested services are not in competition with, nor are they complementary to, the opponent’s goods.

The remaining contested education; providing of training; sporting and cultural activities; provision of information, escorting and directing spectators, visitors and vehicles, all being performed by stewards in relation of sports events, conferences, seminars, concerts and exhibitions; provision of sport, cultural and musical events; provision of stadium facilities; hosting of exhibitions and seminars; educational services relating to sport, culture and music; production of television programmes; training services; rugby academy services; assessment and qualifications services (education); coaching; arranging and organisation of competitions and sporting events; provision of courses of instruction in coaching, sports medicine, player development and child protection and welfare; physical fitness instruction; practical training demonstrations relating to rugby; providing courses of instruction in self-awareness; arranging and conducting seminars, conferences, exhibitions, symposia and concerts; provision of club recreation facilities; officiating at sports contests; sports camp services; sports club services; provision of facilities for sports events, seminars and concerts; sports refereeing and officiating; timing of sports events; staging of sports tournaments; publication of printed matter; award ceremonies; betting services; information, advisory and consultancy services relating to the aforegoing; information, advisory and consultancy services relating to entertainment services and relating to provision of entertainment events; all of the above mentioned not related to any insurance, financial, monetary and banking affairs and activities are services related to sport, learning and cultural activities such as exhibitions, competitions, courses, symposia, seminars, concerts, etc. They are different from the opponent’s goods in Class 28. First of all, by their nature, goods are generally dissimilar to services, the former being tangible articles of trade, while services are intangible activities. In the case at issue, the contested services also serve, in general, different purposes from those of the opponent’s goods and have different methods of use. In addition, they are not usually in competition with, or complementary to the opponent’s goods and are not generally provided through the same channels of trade. The manufacturers of the opponent’s goods do not provide the contested services and, therefore, the goods and services in question do not have the same origins. It follows that the contested services are considered dissimilar to the opponent’s goods.

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 relevant goods and services are mainly directed at the public at large. Some goods, however, may also be directed at business customers with specific professional knowledge or expertise in the IT field and the entertainment sector. The attentiveness of the average consumers can vary from average to high depending on, inter alia, the type of the good/service, its price and/or complexity.

3. The signs

Earlier trade mark	Contested sign

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 earlier mark is a figurative mark consisting of a grey rectangle with a thin grey border that creates a white frame. The verbal element ‘MILLENNIUM’ is depicted on the rectangle; the first and last letters, ‘M’, are grey and are slightly stylised upper case letters in a slightly larger typeface than the remaining letters. The other letters, ‘ILLENNIU’ are white; they are also slightly stylised upper case letters and are depicted in an uneven way.

The applicant argued that “consumers would only be able to view the ‘ILLENNIU wording’ since the first and last letters ‘M’ ‘blend into the background of the mark and are therefore not clearly visible”. The Opposition Division points out that, although both these letters, like the rectangle, are depicted in grey, they are still recognisable because they are in a slightly lighter shade of grey and because their larger size means that their edges overlap the border of the rectangle. It is considered that consumers will have no difficulty in perceiving the word ‘MILLENIUM’ in the earlier mark. These claims of the applicant are therefore set aside as unfounded.

The majority of the public in the relevant territory may understand the meaning of the English word ‘MILLENNIUM’ as ‘a period or cycle of one thousand years’ (information extracted from http://www.collinsdictionary.com/dictionary/english/millennium), because of its identity or similarity to the equivalent words in the respective official languages (‘Millennium’ in German, ‘milénio’ in Portuguese, ‘milenio’ in Spanish, ‘millennium’ in Dutch, ‘millennio’ in Italian, ‘mileniu’ in Romanian, ‘millénaire’ in French). The remaining part of the public, such as the Greek-speaking public, will not understand the word ‘MILLENNIUM’, because in other languages the word is completely different, for example in Greek ‘χιλιετηρίδα’.

Irrespective of whether or not it is understood, ‘MILLENNIUM’ is a distinctive element, since it is neither descriptive nor allusive with reference to the relevant goods.

The applicant argued that the word ‘MILLENNIUM’ is not distinctive, since there are 235 marks in the EUIPO database containing this word, 91 of which are registered, and since there are many companies using ‘MILLENNIUM’.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that such a reference cannot be deemed as sufficient to demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘Millennium’. The same applies to the applicant’s argument that ‘many companies use ‘Millennium’, which in the absence of any convincing evidence cannot be considered as supporting the purported claim either. Under these circumstances, the applicant’s claims must be set aside.

The rectangular background of the earlier mark is a weak element, since it is purely decorative. Therefore, the word ‘MILLENNIUM’ is considered more distinctive than the figurative element in the earlier sign.

The contested sign is a figurative mark consisting of the verbal element ‘MILLENNIUM’ in stylised, upper case letters below a figurative element consisting of a combination of thin black lines. The sign also includes the word ‘EXPERIENCE’, depicted in upper case letters but in a slightly smaller typeface than the word ‘MILLENNIUM’ and placed underneath it. As for the earlier mark, the English word ‘MILLENNIUM’ will be perceived by the majority of the public as ‘a period or cycle of one thousand years’, while the remaining part of the public will not attribute any meaning to this word. This element is considered distinctive in relation to the relevant goods and services.

The contested sign also contains the English word ‘EXPERIENCE’, which means a ‘direct personal participation or observation; actual knowledge or contact‘ (http://www.collinsdictionary.com/dictionary/english/experience). This word will be perceived with the same meaning by a significant part of the public because of its identity or close similarity to the equivalent words in other languages, such as Italian (esperienza), Spanish (experiencia), French (expérience), Portuguese (experiência), Maltese (esperjenza) and Romanian (experienţă). The word ‘EXPERIENCE’ will have no meaning for the remaining part of the public, because their official languages, for example Bulgarian, have no similar or identical equivalent words.

‘EXPERIENCE’ is considered a distinctive element for the entire relevant public, since it is neither descriptive nor allusive of the relevant goods and services.

For the part of the public that understands both words, the juxtaposition of the elements ‘MILLENNIUM’ and ‘EXPERIENCE’ will convey no concept as a whole other than the sum of its parts.

The figurative element of the contested sign consists of a combination of vertical, horizontal and slanting lines. Given the abstract arrangement of the lines, it is difficult to determine with certainty the concept (if any) that the public might attribute to this figurative element.

The applicant argued, however, that the figurative element is recognised by the public as a depiction of the ‘Millennium Stadium in Cardiff’ and submitted four photographs showing the stadium to demonstrate that there was a correspondence between the main features of the stadium and the figurative element. It cannot be entirely excluded that a small part of the public, living in Cardiff or in the surroundings, could recognise the element at issue as a highly stylised representation of the said stadium. Nevertheless, it is considered that the majority of the European Union public will perceive it as an abstract combination of lines, with no immediately perceptible meaning for the goods and services at issue. In relation to the small part of the public that might associate the figurative element with the stylised depiction of a stadium, this element may be perceived as alluding to the fact that the games are related to sports, for example football, ice-hockey or baseball, that are played in a stadium or to the place where the services could be rendered; therefore, it has to be considered weak with respect to those goods and services for which it has this allusive meaning, such as computer games, game adapted for use with television receivers or entertainment services. However, for the majority of the public, the contested mark has no elements that could be considered clearly more distinctive than other elements.

Neither of the marks have elements that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive verbal element ‘MILLENNIUM’, which is the only word element of the earlier sign and has a central position in the contested sign because it is located between the figurative element and the word ‘EXPERIENCE’. The signs differ in the word ‘EXPERIENCE’ and in the figurative element of the contested sign, in the rectangle of the earlier mark and in the stylisation of the verbal elements. With reference to the abovementioned figurative elements, their impact on the consumer is less than that of the verbal elements. As regards the earlier mark, as explained above, the background is merely decorative and therefore less distinctive. As for the contested sign, even that significant part of the public for which the combination of lines is not perceived as the stylised depiction of a stadium will not tend to analyse the sign and will more easily refer to it by the verbal element(s) rather than by describing the figurative element (see in this regard 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; 1 3/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). In addition, the stylisation of the letters in the earlier mark, as described above, is not so striking that consumers will not be able to perceive the word ‘Millennium’. Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks coincides in the sound of the letters forming the verbal element ‘MILLENNIUM’, present identically in both signs. The pronunciation differs in the sound of the letters of the second verbal element, ‘EXPERIENCE’, of the contested sign, which has no counterpart in the earlier mark. Overall, there is an average degree of aural similarity.

Conceptually, bearing in mind the abovementioned concepts with which the signs will be associated, there is an average degree of conceptual similarity for that significant part of the public that will understand the English words ‘MILLENNIUM’ and ‘EXPERIENCE’, insofar as both marks make reference to the word ‘MILLENNIUM’.

For the other part of the public, which will not recognise the English words ‘MILLENNIUM’ or ‘EXPERIENCE’, neither of the signs has a meaning, taking into account that the remaining figurative elements of the signs, that is to say the rectangle and the figurative element, do not evoke any specific concept. Since a conceptual comparison is not possible, the conceptual aspect will not influence the assessment of the similarity of the signs for this part of the public.

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, despite the presence of a less distinctive figurative element in the mark, as explained in section c) above.

5. Global assessment, other arguments and conclusion

The goods and services were found to be identical, similar (to various degrees) or dissimilar.

The signs are visually, aurally and, for a significant part of the public, conceptually similar to an average degree, to the extent that the word ‘MILLENNIUM’, which is the only verbal element in the earlier mark, is wholly included in the contested sign, where it occupies a central position and plays an independent and distinctive role.

The contested sign also contains the word ‘EXPERIENCE’ and a figurative element (deemed distinctive for a significant part of the relevant public). However, it is considered that the differences between the signs are insufficient to safely rule out any likelihood of confusion on the part of the public, even for that part of the public displaying a high degree of attention.

In the present case, it is therefore considered that, when encountering the signs at issue in relation to identical or similar goods in Classes 9 and 28, consumers may associate them because of the distinctive and shared element ‘MILLENNIUM’ and believe that those goods come from or are offered by the same undertaking or, as the case may be, from economically-linked undertakings. This is also true for the contested goods and services that have been found to be similar to a low degree to the opponent’s goods. A lesser degree of similarity between the goods and/or services may be offset by a greater degree of similarity between the signs and vice versa. Therefore, the average degree of similarity between the signs (because the word element ‘MILLENNIUM’ of the earlier mark is incorporated in the contested sign in its entirety and plays a distinctive and independent role therein) is sufficient to offset the low degree of similarity of the abovementioned goods and services and to find a likelihood of confusion on the part of the public with regard to these goods and services.

In its observations, the applicant also argues that the public is likely to associate the word ‘MILLENNIUM’ with the applicant’s company, since this company owns other trade mark registrations that include the word ‘MILLENNIUM’, ‘which highlights their extensive rights in this mark’. To support this argument, the applicant submitted a document indicating the relevant information for four trade mark registrations comprising the word ‘MILLENNIUM’. The Office shall, in principle, be restricted in its examination to the trade marks in conflict; therefore, the fact that the applicant owns other trade marks containing the word ‘MILLENNIUM’ is not relevant in the present case. Where the applicant also intended to rely on a claim of coexistence in the market between its prior marks and the earlier one, such an argument cannot succeed either. It is recalled that formal co‑existence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict. Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion. This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved. Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partially well founded on the basis of the opponent’s international registration mark registration No 13 401 419designing European Union.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar (to various degrees) to the goods of the earlier trade mark.

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)(b) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

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

Angela DI BLASIO

Angela DI BLASIO

Oana-Alina STURZA

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.