DECISION

of the First Board of Appeal

of 7 June 2019

In case R 2281/2017-1

Ansell Microgard Limited
9 Saltmarsh Court Priory Park East Hull, East Yorkshire HU4 7DZ United Kingdom	Applicant / Appellant

represented by HASELTINE LAKE LLP, Redcliff Quay 120 Redcliff Street, Bristol BS1 6HU, United Kingdom

v

Respirex International Limited
Unit F, Kingsfield Business Centre Philanthropic Road Redhill, Surrey RH1 4DP United Kingdom	Opponent / Defendant

represented by BARKER BRETTELL LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom

APPEAL relating to Opposition Proceedings No B 2 494 428 (European Union trade mark application No 13 406 111)

The First Board of Appeal

composed of Th. M. Margellos (Chairperson), C. Rusconi (Rapporteur) and M. Bra (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 27 October 2014, which was published on 11 December 2014, Ansell Microgard Limited (‘the applicant’) sought to register the word mark

MICROCHEM 6000 GTB

as a EUTM for the following goods:

Class 9 - Protective clothing, headgear, footwear, gloves, visors, masks and eyewear; overalls, coveralls, suits, aprons, overshoes, and hoods for protection against chemicals, infective agents and other hazardous substances; apparel for protection against chemicals, infective agents and other hazardous substances, namely gas-tight suits, gas-tight suits with attached boots, suits for protection against radiation, radioactive particles or radioactive gases, suits for protection against infective agents, suits for protection against chemical exposure; protective and safety equipment; breathing apparatus; parts and fittings for all the aforesaid goods;

Class 25 - Vented clothing and clothing for temperature regulation.

2. On 10 March 2015, Respirex International Limited (‘the opponent’) filed an opposition against the trade mark application for all the above goods on the grounds of Article 8(4) EUTMR. The opponent claimed that it makes chemical and respiratory protective clothing and suits, that it has been using the non-registered sign ‘GTB’ since 1980 in the course of trade in the United Kingdom to distinguish these goods, that it is a world leader in this industry, that it has several high-profile customers in the UK (Royal Navy, Ministry of Defence, Metropolitan Police, etc.), that its sign has accordingly acquired goodwill and reputation, and that it is accordingly entitled, under the English law of passing off, to prohibit use of the applicant’s mark in so far as it included the same sign. The opponent submitted information as to the requirements needed for a passing off action to succeed under UK law (goodwill, misrepresentation and likelihood of damage) and figures on sales. The opponent also attached evidence, in particular: brochures and literature showing the goods upon which the sign GTB is used (Exhibits 1 and 4), invoices for sales in the UK (Exhibit 2), invoices for sales outside the UK (Exhibit 3). The opponent stated that the applicant, by adding the sign ‘GTB’ at the end of its trade mark, attempted to pass off its goods for those of the opponent.

3. In observations submitted on 17 February and 4 March 2016, the applicant requested rejection of the opposition as unfounded. The applicant accepts that the opponent has used ‘the letters’ GTB for personal protective suits but argues that said use was made descriptively. In order to substantiate this argument, the applicant submits that the use of acronyms in the industry of protective suits is widespread (SCBA, PPE, CPS, VBV, etc.) and that the relevant consumers will thus assume that GTB is an acronym that designates a particular type of protective suit. The applicant observes that the letters ‘G’ and ‘T’ are known by the relevant public as initials for ‘Gas-Tight’ [Suits] and that the letter B means, according to the opponent’s brochures, ‘Breathing’, so that the combination ‘GTB’ means ‘Gas Tight [Suit with] Breathing [Apparatus]. The applicant asserts that ‘GTB’ is a sign that denotes characteristics of the goods and thus lacks any distinctive character. In order to prove this assertion, the applicant referred to the opponent’s website, in which similar abbreviations were used in order to identify other models of ‘Gas-Tight protective suits’, such as ‘GTA’ (‘Gas-Tight suit with Air supply’), ‘GTAB’ (‘Gas-Tight suit with Air feed and Breathing apparatus’), ‘GTIM’ (‘Gas-Tight suit with Integral Mask’), ‘GTL’ (‘Gas-Tight suit Lightweight’), etc. The applicant concluded that the public targeted by the goods would immediately understand that ‘GTB’, ‘GTBAB’, ‘GTBIM’, etc., do not inform about the industrial origin of the gas-tight suits (that function being instead performed by the mark ‘RESPIREX’, always used in conjunction with ‘GTB’) but are simply model codes that distinguish gas-tight suits on the basis of their technical features (presence of a breathing device, air supply, mask, etc.). The applicant added that the abbreviation ‘GTB’ meant, in the context of its own mark, ‘Gas Tight [suit with integral] Boots’ and served to distinguish this suit from another (‘MICROCHEM 6000 GTS’) with integral Socks. The applicant thus denied that a passing off claim was well founded.

4. On 28 July 2016, the opponent denied that the letter combination ‘GTB’ had any meaning and noted that the applicant contradicts itself when it states that GTB means ‘Gas Tight Suit with Breathing equipment’ and later adds another meaning ‘Gas Tight Suit with Integral Boots’. The opponent insisted that the public had identified its ‘GTB’ sign for 30 years as its brand name and that the addition of that letter combination at the end of the applicant’s mark would lead that public to believe, erroneously, that a connection exists between the parties.

5. By decision of 25 August 2017, the Opposition Division considered that the opposition was well founded as regards the earlier non-registered sign used in the UK and accordingly rejected the trade mark application for all the goods. The Opposition Division made, as far as relevant, the following findings:

• The evidence shows that the unregistered sign ‘GTB’ has been used as a mark, in the course of trade of more than local significance, in the UK for ‘gas-tight suits’ [suits that protect workers against lethal gases];

• As regards the letter combination ‘GTB’, it ‘might seem logical’ that ‘G’ stands for ‘Gas’ and ‘T’ stands for ‘Tight’ but the letter ‘S’ (for ‘Suit’) is lacking; the meaning that the applicant has attributed to the letter ‘B’ (‘B’ for ‘integrated Boots’ and ‘B’ for ‘apparatus for Breathing’) is contradictory; therefore, the letter combination ‘GTB’ ‘is not immediately perceived’ on the marketplace as referring to a particular type of a gas-tight suit with a breathable apparatus or integrated boots;

• The fact that the opponent uses the sign ‘GTB’ in conjunction with the mark ‘RESPIREX’ is not incompatible with a finding that ‘GTB’ has been used with a distinctive function in the course of trade, because it is often the case that several marks are used concurrently on the same product (e.g. the house mark plus a mark identifying a particular model);

• The evidence demonstrates that the opponent has used the sign ‘GTB’ in relation to gas-tight suits to a sufficiently significant scale and has accordingly generated a protectable goodwill;

• The goods of the contested mark are identical or similar (to varying degrees) to those for which the earlier sign enjoys goodwill;

• The contested mark is visually and aurally similar to the earlier sign because it contains, as an autonomous and ‘fully distinctive element’, the same letter combination (‘GTB’); the signs are conceptually dissimilar to the extent that the later one alludes to size (‘MICRO’) and chemicals (‘CHEM’); since the goods are identical or similar and the marks are also similar, there may be misrepresentation; for the same reason, use of the contested mark may cause the opponent to lose sales, i.e. to suffer damage:

• The opponent has thus established the three conditions required for a passing off action to succeed under English law (presence of goodwill, misrepresentation and likelihood of damage) because the ‘GTB’ sign has been used on a sufficient scale in the UK, the conflicting marks are similar and would be used for similar goods.

Submissions and arguments of the parties

6. On 24 October 2017, the applicant filed an appeal, requesting that the decision (‘the contested decision’) be annulled and that its application be allowed to proceed. The applicant submits that the Opposition Division applied incorrectly the common law on passing off and accordingly erred in upholding the opposition. The grounds of appeal, filed on 27 December 2017, can be summarised as follows:

• Under the common law of passing off, the claimant’s goods must have acquired goodwill in the market and be known by some ‘distinguishing feature’; the opponent has not established that ‘GTB’ alone functions as such a ‘distinguishing feature’;

• The sign ‘GTB’ is not a ‘distinguishing feature’ of the goods because, as the opponent’s evidence demonstrates, it identifies one of the various models that compose the opponent’s offer of protective suits; the letter combination ‘GT’ is commonly used, in that trade, as an abbreviation of Gas Tight (suits) and the letter ‘B’ identifies a specific model or version of product, similarly to other codes – ‘GTA’, ‘GTAB’, ‘GTL’ – which, like ‘GTB’, do not distinguish the manufacturing source of the suits but just different versions thereof; ‘GTB’ is always used in a subordinate way to the more distinctive elements ‘RESPIREX’ and a device of a rampant lion;

• The sign that should have been compared with ‘MICROCHEM 6000 GTB’ is not ‘GTB’ alone but ‘RESPIREX GTB’; the fact that ‘RESPIREX’ is used next to ‘GTB’ is relevant for the purpose of establishing if the opponent enjoys goodwill on ‘GTB’; in other words, the correct question, in passing off proceedings, is not ‘has the sign ‘GTB’ been used?’ but ‘by what distinguishing feature are the goods known?’; the evidence submitted by the opponent shows that the distinguishing feature by which the goods are known in trade is not ‘GTB’ but ‘RESPIREX’; similarly, the element that distinguishes the contested mark is not ‘GTB’ (or ‘6000’) but ‘MICROCHEM’, which is the first and easiest element to remember;

• The sign ‘GTB’ contains the element ‘GT’, which is widely used in the relevant market to mean ‘Gas-Tight’ in relation to gas-tight suits and the letter ‘B’ which identifies a model of suit, so that ‘GTB’ means ‘Gas Tight’ [suit], model ‘B’; the sign ‘GTB’ has accordingly a ‘very limited distinctiveness’;

• The finding that the mark applied for is similar to the earlier sign is incorrect because the mark contains the element ‘MICROCHEM’ which is at the beginning and is more distinctive than ‘GTB’;

• The fact that the opponent did not report any evidence of actual confusion between the marks during the period (two years) in which they were concurrently used on the market counts as a confirmation of absence of misrepresentation.

7. In its response received on 5 March 2018, the opponent requested that the appeal be dismissed. The arguments raised in response may be summarised as follows:

• Under the common law of passing off, the claimant’s goods must have acquired goodwill in the market and be known by some ‘distinguishing name, mark or other indicium’ (rather than a ‘distinguishing feature’, as alleged by the applicant);

• The sign has been used in trade for 30 years and the evidence provided proves that the public recognises it as distinctive of the opponent’s goods;

• The letter combination ‘GTB’ is not descriptive of anything; the evidence of descriptiveness that the applicant has brought is contradictory: it assigns two meanings to ‘GTB’: ‘Gas-Tight suits with Breathing apparatus’ and ‘Gas-Tight suits with integral Boots’;

• The applicant’s claim that ‘GTB’ is always used in a subordinate way to the more distinctive elements ‘RESPIREX’ and rampant lion is factually incorrect: in the brochures and the invoices, ‘GTB’ appears independently and not in a subordinate way to other signs; as a result, ‘GTB’ is recognised per se by the public and is the subject of protectable goodwill;

• The elements ‘MICROCHEM’ and ‘6000’, in the applicant’s mark will not eliminate misrepresentation because they have a very poor degree of distinctiveness.

Reasons

8. All references made in this decision should be seen as references to the EUTMR (EU) No 2017/1001 (OJ 2017 L 154, p. 1), codifying Regulation (EC) No 207/2009 as amended, unless specifically stated otherwise in this decision.

9. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

10. The appeal, however, shall be dismissed as unfounded for the reasons explained hereunder.

11. The opposition has been based on the ground for refusal foreseen in Article 8(4) EUTMR.

12. Pursuant to Article 8(4) EUTMR, the proprietor of a non-registered mark or of another sign used in the course of trade of more than mere local significance may oppose the registration of an EUTM where:

1. Rights to that mark or sign were acquired prior to the application date of the EUTM;

2. That mark or sign confers on the proprietor the right to prohibit use of a subsequent trade mark.

13. The unregistered mark or sign (hereinafter, ‘the sign’) on which the opponent claims proprietorship is ‘GTB’.

14. For the opposition to succeed under Article 8(4) EUTMR, the sign must satisfy four cumulative conditions. It must be used in the course of trade; it must be of more than mere local significance; the right to that sign must have been acquired pursuant to the law of the Member State in which it was used, prior to the date of application for registration of the EU trade mark; lastly, that sign must confer on its proprietor the right to prohibit the use of a subsequent trade mark.

15. While the first two conditions must be interpreted in the light of EU law, the last two are to be assessed in the light of the law governing the sign concerned (see, to that effect, 18/07/2017, T‑45/16, Byron (fig.) / BYRON, EU:T:2017:518, § 23‑27).

Whether the sign has been used in the course of trade

16. The opponent claims that it has been using the sign throughout the UK and across the European Union since the early 1980’s in relation to protective suits. For the purpose of this decision, it is sufficient to consider the position of the sign in the UK, which represents the opponent’s largest market.

17. The opponent submitted a statement, accompanied by several exhibits, in order to show that the sign has been used in the course of trade. One of the exhibits is a brochure showing the nature of the goods in respect of which the sign has been used. These are suits that protect persons working in hazardous environments against chemical contamination. The brochure contains references to ‘GTB gas tight suits’.

18. Another exhibit is a series of invoices issued by the opponent for sales of these suits between 2001 and 2014. The invoices also contain references to ‘GTB GAS TIGHT SUITS’ and mention delivery addresses in many locations within the UK.

19. A further exhibit is entitled ‘Instructions for use of GTB gas tight suits’.

20. In the Board’s assessment, the above evidence does prove that the opponent has been using the sign in the course of trade: the sign is used to identify a protective suit in the brochure and in the instruction manual and the same sign is used in the invoices to designate the same suits.

21. The findings made by the Opposition Division, to which express reference is hereby made, must therefore be confirmed.

Whether use is of more than local significance

22. The evidence shows that the suits under the sign have been sold throughout the UK: London, Northern Ireland, Scotland, Wales. Use is therefore nationwide and not merely local.

23. The evidence also shows that use has not just been geographically widespread but also economically significant. Turnover generated by sales of suits under the sign varies from EUR 31 477 in 2001 to EUR 1 740 708 in 2003. In more recent years, the annual turnover exceeded EUR 40 000. These figures, contained in a statement rendered by the opponent’s Managing Director, are corroborated by more than 50 invoices. The delivery addresses also show that the suits in question have been supplied to several high-profile customers, such as the Ministry of Defence, major oil companies, Police authorities, ambulance services; this customership confirms that the opponent’s business under the sign has a significance which is much broader than local.

24. The findings made by the Opposition Division, to which express reference is hereby made, must accordingly be confirmed.

25. In view of the above, the Board is satisfied that the sign has been used in the course of trade to an extent that is of more than mere local significance. Therefore, the first two conditions are satisfied.

26. The other two conditions must be assessed on the basis of the UK law. The opponent must establish that, pursuant to that law, it has acquired rights to the sign prior to the date of application of the EUTM and that the sign gives it the right to prohibit use of a subsequent mark.

27. The law upon which the opponent relies is Section 5(4) of the UK Trade Marks Act 1994:

‘A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.’

28. The rule of law that has been specifically relied on is passing off, which is a Common Law tort. The requirements of an action for passing off are in the number of three (they are known as ‘the classical trinity’), namely:

1. The claimant’s goods or services must have acquired a goodwill in the market and be known by some distinguishing feature;

2. There must be a misrepresentation by the defendant (intentional or not) likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant;

3. The claimant must be likely to suffer damage as a result of the erroneous belief engendered by the defendant’s misrepresentation.

29. The first requirement is about ‘distinguishing feature’ and ‘goodwill’. The opponent states, in its observations in response to the appeal, that the term ‘feature’ is incorrect, the correct terms being ‘name, mark or other indicium’. In the Board’s assessment, there is no material difference between the two sets of terms since ‘feature’ is an umbrella term that can include ‘name, mark or other indicium’. Moreover, ‘feature’ was the term used by the opponent when explaining, at page 8 of the opposition grounds, the requirements of passing off.

30. The important word, in the context of the first requirement, is not ‘feature’, ‘name’, ‘mark’, etc. but ‘distinguishing’. What matters, in other words, is whether the opponent’s goods have been made known on the market by some distinguishing element (be it a ‘feature’, ‘name’, ‘mark’ or ‘indicium’), i.e. an element that distinguishes the goods of the opponent from goods having another industrial origin.

On the ‘distinguishing feature’ (or ‘distinguishing name, mark or indicium’)

31. The opponent claims that the distinguishing element is the sign ‘GTB’. The applicant denies the claim on the grounds, firstly, that this is an abbreviation commonly used on the relevant market to designate a specific sort of protective suit and cannot amount to, as a result, a distinguishing feature and secondly, that it has been used in conjunction with the opponent’s house mark (Respirex).

32. In the Board’s assessment, the two grounds are unfounded.

33. As regards, firstly, the meaning of the letters ‘GTB’, the applicant succeeds in showing that letters ‘G’ and ‘T’ might be understood, in the market of protective suits, as meaning Gas-Tight (since these suits have the property of not letting gases inside) but makes contradictory statements as regards the alleged meaning of the letter ‘B’.

34. At point 46 of its 12 February 2016 letter, it states that B stands for ‘Breathing apparatus (and that ‘GTB’ is thus understood as ‘gas-tight suit with a breathing apparatus’). At point 69 of the same letter, it states that the letter stands for ‘Boots’ (and that ‘GTB’ means ‘gas-tight suit with boots’). At point 4.7 of the statement of the grounds of appeal, the applicant states that the letter ‘B’ will be ‘immediately perceived’ by the relevant consumer as meaning ‘model B’ (and that ‘GTB’ thus means ‘Gas Tight, model B’).

35. A letter that could be understood to designate things which are so far apart may not be safely relied on by any sensible person, particularly for suits worn in hostile chemical environments, to describe a characteristic of a product.

36. In view of the above, the applicant has not established that the letter ‘B’ has, from the viewpoint of those interested in protective suits, a specific meaning and that the entire combination (GTB) is unfit to serve as a ‘distinguishing’ feature (or name or mark) for the opponent’s goods.

37. As a final observation, the Board notes that, if it really believed that ‘GTB’ lacks even the slightest amount of distinctive character, the applicant would have had no reason to add it at the end of its own EUTM.

38. As regards, secondly, the argument that the opponent uses ‘GTB’ in conjunction with its house mark, the Board notes that it is partly incorrect, partly irrelevant.

39. The argument is partly incorrect because there is plenty of evidence showing use of the sign ‘GTB’ separately from other signs. The itemisation of the invoices typically is ‘GTB GAS TIGHT SUIT VITON/BUTYL/VITON SMALL’, ‘GTB GAS TIGHT SUIT VITON/BUTYL/VITON MEDIUM’, where ‘GAS TIGHT SUIT’ is the identification of the product, ‘VITON/BUTYL/VITON’ is the material used, ‘SMALL’ or ‘MEDIUM’ is the size of the suit and, logically, ‘GTB’ is the sign under which the product is offered, sold and known in trade.

40. The opponent’s brochure refers to ‘GTB gas tight suits’ and ‘GTB reusable gas tight suit’. There is a clear identification of, on the one hand, the product by its common designation (‘gas tight suit’) and, on the other hand, its distinguishing name (GTB).

41. Similar comments apply to the opponent’s instruction manual.

42. The applicant’s argument is also irrelevant because the presence of other signs alongside the sign ‘GTB’ does not rule out, per se, the ability of the latter sign of being perceived, in the relevant marketplace, as a distinguishing feature of the opponent’s goods.

On the goodwill

43. In the Board’s assessment, the opponent has acquired goodwill in the market under the sign by means of sales of the protective suits at issue. The opponent has achieved a broad customer base for its goods and it is generally accepted that the existence of customers entails the existence of goodwill.

44. The applicant denies, in its appeal (see point 5.7 of the grounds of appeal), the presence of any such goodwill on the sole argument that the sign ‘GTB’ is not, considered alone, a ‘distinguishing feature’. This argument has already been considered at length in the preceding section of this decision and ultimately dismissed.

45. The applicant does not dispute the sales and the presence of customers, i.e. the conditions for goodwill to exist.

46. The findings made by the Opposition Division, to which express reference is hereby made, must accordingly be confirmed.

On the misrepresentation

47. Misrepresentation is a situation where the public might believe, erroneously, that the goods offered by the user of the later sign are goods of the user of the earlier sign.

48. In the Board’s assessment, misrepresentation is a reasonable prospect in the present case for several reasons.

49. Firstly, the goods at issue are identical. The EUTM application covers a relatively long list of goods in Class 9 but, on closer inspection, the length of the list is due to formulation, not differences as regards the nature and purpose of the goods. All the goods in that class are protective gear (plus parts and fittings thereof) that persons have to wear when entering potentially hazardous environments. They are, thus, the goods for which the opponent has acquired goodwill by using the sign at issue.

50. The applicant does not dispute this identity neither at the opposition nor appeal stage.

51. The goods in Class 25 are ‘vented clothing and clothing for temperature regulation’. In the Board’s assessment, they are similar to the protective suits for which the opponent has used its sign. The opponent has shown, with its brochures and promotional literature, that the protective suits, being gas-tight, i.e. impermeable to any exterior gas (including ambient air), need a ventilation and temperature-regulation system in order to ensure the wearer’s comfort. It follows that the applicant’s clothing in Class 25 is at least similar, for complementarity reasons, to the opponent’s protective suits.

52. The applicant did not dispute this similarity at the opposition or appeal stage.

53. In other words, the applicant and the opponent are active on the same market, namely protective gear that persons working in chemically hostile environments have to wear. This is, moreover, clearly not a mass-consumer market but rather a narrow market with a very small number of players.

54. Secondly, the applicant’s mark incorporates exactly the sign that the opponent has been using for decades and has established goodwill. The adverb ‘exactly’ alludes to the fact that the letters ‘GTB’ are not only reproduced, in the applicant’s mark, in the same sequence but, even more significantly, in a graphically identical format. The applicant did not seek in any way to distance the element ‘GTB’ in its mark, graphically, from the opponent’s sign by, for example, introducing separations between the letters such as dots (e.g., G.T.B.), dashes (e.g., G-T-B or GT-B) or even spaces (e.g., G T B or GT B) and/or by using a different case (for example, gt B or Gtb instead of ‘GTB’).

55. The presence, in the applicant’s mark, of the sign ‘GTB’ will inevitably attract the attention of the opponent’s customers and lead them to believe that the applicant’s goods are in some way associated to the opponent. Since no such industrial or commercial association exists – nor was claimed to exist by the applicant – the use of the applicant’s mark on the market of protective suits and complementary clothing would precisely give rise to misrepresentation.

56. The applicant’s arguments to the contrary must be rejected. The applicant argues firstly that, in the context of its mark, the letters ‘GTB’ are ‘subordinate’ (i.e. placed at the end of the mark) and that the element that really indicates industrial and trade origin of its own goods is the term ‘MICROCHEM’, which is ‘dominant and distinctive’ and moreover placed at the beginning.

57. The argument must be rejected. It is not important, in a passing off context, whether the opponent’s sign has been placed at the end or the beginning of the later mark nor whether the later mark contains ‘dominant and distinctive’ elements. What matters and suffices, in that context, is that the unregistered sign features as a separately identifiable element in the later mark, that is, in a way that the opponent’s customers may identify it as being the same under which they have purchased during many years the opponent’s suits. These customers will inevitably consider that the addition of that sign at the end of the applicant’s mark reveals the existence of, for example, a joint-venture set up by the two undertakings in order to market the protective suits.

58. Therefore, the fact that the ‘GTB’ sign has been placed at the end of the applicant’s mark creates the impression that the applicant is somehow commercially or industrially connected to the opponent: this fact does not prevent misrepresentation but reinforces it.

59. The applicant argues, secondly, that the market in question is specialised and that those buying the protective suits have the ‘highest level of attention’. The applicant considers that, as a result, persons interested in protective suits are unlikely to be deceived.

60. This argument must be rejected. The fact that the market for these goods is narrow reinforces, in the Board’s assessment, the risk of deception. Consumers know that there are very few companies in the highly specialised business of protective suits and would not find it unreasonable that two of them have entered into a commercial agreement to jointly sell these goods under a name that reflect their partnership, i.e. ‘MICROCHEM’ and ‘GTB’. Since it is undisputed that no such agreement exists, those consumers would be deceived.

61. The findings made by the Opposition Division, to which express reference is hereby made, must accordingly be confirmed.

On the likely damage

62. The opponent’s goodwill in the ‘GTB’ sign is likely to be damaged by the use of the same sign at the end of the applicant’s mark.

63. Since goodwill is the force of attraction that a sign has on the market, i.e. its ability to attract customers, the presence of the same sign in a competitor’s brand name, in respect of identical or similar products, will inevitably divert at least part of the opponent’s business to that of the applicant under the erroneous belief that the latter’s goods originate totally or partially from the opponent.

64. In other words, as the Opposition Division correctly stated in its decision, the opponent ‘would lose sales because its customers would erroneously buy the applicant’s goods’.

65. It follows from the above that the opposition is successful under Article 8(4) EUTMR and the appeal must be dismissed.

Costs

66. The applicant, being the losing party within the meaning of Article 109(1) EUTMR, shall be ordered to reimburse the opponent’s costs in the appeal proceedings, namely EUR 550 for professional representation.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicant to reimburse the opponent’s representation costs to the amount of EUR 550.

Signed Th. M. Margellos

Signed C. Rusconi

Signed M. Bra

According to Article 39(5) EUTMDR Registrar: Signed p.o. N. Granado Carpenter