OPPOSITION No B 2 594 748

Pflugbeil Holding GmbH & Co. KG, Weissensteinstrasse 22, 97737 Gemünden am Main, Germany (opponent), represented by Cornea Franz Rechtsanwälte Partnerschaft MBB, Berliner Platz 10, 97080 Würzburg, Germany (professional representative)

a g a i n s t

Roseanna Swim, 40 bis rue du Faubourg Poissonnière, 75010 Paris, France (applicant), represented by Feral-Schuhl / Sainte-Marie Aarpi, 24 rue Erlanger, 75016 Paris, France (professional representative).

On 26/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 594 748 is partially upheld, namely for the following contested goods:

Class 24: Textile material; bed blankets; fabrics for textile use; elastic woven material; velvet; bed linen; linens; table linen, not of paper; bath linen (except clothing). not of paper; bath linen (except clothing).

2. European Union trade mark application No 14 331 516 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 14 331 516 for the word mark ‘ROSEANNA’. The opposition is based on German trade mark registration No 30 663 429 for the word mark ‘ROSANA’. The opponent invoked Article 8(1)(b) EUTMR.

Ownership of the earlier mark

The Opposition Division notes that ownership of the earlier mark was transferred during the opposition proceedings. On 08/02/2018, the opponent submitted an extract from TMview demonstrating the transfer of ownership of German trade mark registration No 30 663 429. Consequently, the new owner of the opposing mark (Pflugbeil Holding GmbH & Co. KG) replaced the previous owner (Spessarttraum Immobilien GdbR) as the opponent in the current proceedings.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period 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 for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of German trade mark No 30 663 429 ‘ROSEANNA’.

The contested application was published on 17/07/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 17/07/2010 to 16/07/2015 inclusive.

The request was submitted in due time and is admissible as the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 20: Furniture, mirrors, picture frames; goods, included in Class 20, of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother of pearl, meerschaum and substitutes or of plastics; beds (furniture); bedding (except linen); pillow; mattresses; upholstered furniture; sleeping bags for camping purposes; sofas.

Class 22: Ropes, string, nets, tents, tarpaulins, sails, sacks (included in Class 22); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials; cotton (raw); down (feathers); springs as a cushion filler; feathers for bedding; hair; worsted wool; plastic fibers for textile use; net fabrics; cushion filler (flock material); sheep fleeces; textile fibers; cotton wool as padding filler; wool (raw or processed); wool for upholstery purposes, pack wool; wool flakes.

Class 24: Textiles and textile goods, included in Class 24; bed and table covers; bedding; bedding (linen); filled bedding, included in Class 24 with feathers and down, with synthetic fibers and natural hair; linings; fabrics for textile use; coarse fabric (burlap); household linen; home textiles; pillowcases; mattress fabric (ticking); mattress covers; plaids; sleeping bags (sewn covers for sheets); quilts, bedspreads; textile substitutes of plastic; nonwovens (textiles); laundry supplies; woolens.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 14/07/2016 (after an extension of the initial deadline), in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 18/09/2016 to submit evidence of use of the earlier trade mark. On 12/09/2016, within the time limit, the opponent submitted evidence of use. Since some of the pages of the documents submitted were illegible, on 19/09/2016, the opponent was asked to resend the original documents before 19/10/2016 (this request was satisfied in due time, namely on 26/09/2016).

The evidence to be taken into account is the following:

Appendix 1: six undated screenshots from the following websites of online stores: www.schlafstill.com (operated by the opponent) and www.amazon.de, www.perfekt-schlafen.de, www.bettwaren-shop.de, www.bettenluxus.de and www.otto.de (operated by third parties). The screenshots are in German and they show sales of pillows and duvets offered under the trade mark ‘ROSANA’. The prices of the products are given in euros.

Appendix 2: set of eight invoices with their corresponding delivery notes dated between 2010 and 2016 (one invoice and its delivery note are dated before the relevant period and two are dated after). All of the invoices were issued by Spessarttraum GmbH & Co. KG and they are addressed to clients in Germany. The invoices and delivery notes are in German (they were partially translated in the submission of 19/10/2017, at the request of the Office, so that the content of the documents could be understood). Some of the products mentioned are pillows and duvets under the trade mark ‘Rosana’.

Appendix 3.1: price lists for ‘Rosana’ products, including duvets and pillows. Apart from the prices, the characteristics and composition of the products are given. Some of the reference/article numbers are the same as those in the invoices submitted (e.g. No 600 904 for blankets and No 600 782 for pillows). Some of the price lists are dated 2011 and some are dated 2016; the indications are in German and the prices are in euros.

Appendix 3.2: sales figures for ‘Rosana’ products between 2011 and 2016. For example, in this period, articles No 600 904 and No 600 782 (referred to above) were sold for a total of EUR 144 259 and EUR 52 679, respectively.

Appendix 3.3: sales figures for ‘Rosana’ products in 2016 (i.e. after the relevant period).

Assessment of the evidence

It is important to note that, when evaluating the evidence submitted, the Opposition Division has to make an overall assessment and all the circumstances of the specific case have to be taken into account. Furthermore, all the materials submitted must be assessed in conjunction with each other. Pieces of evidence may be insufficient by themselves to prove the use of an earlier trade mark, but may contribute to proving use in combination with other documentation and information.

The applicant contests the evidence of use filed by the opponent on the grounds that it originates not from the opponent itself (i.e. not from the original opponent before ownership was transferred, as noted above, i.e. Spessarttraum Immobilien GbR) but from another company (i.e. Spessarttraum GmbH & Co).

According to Article 18(2) EUTMR, use of the EUTM with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Moreover, on 20/02/2017 (after the time limit to submit evidence of use of the earlier trade mark), the opponent submitted evidence in response to the objection raised by the applicant. The fact that the applicant disputed the initial evidence submitted by the opponent justifies the submission of additional evidence in reply to the objection (29/09/2011, T‑415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C‑621/11 P, Fishbone, EU:C:2013:484, § 36).

This evidence refers to a trade mark licence agreement between the opponent (Spessarttraum Immobilien GdbR, i.e. the licenser) and Spessarttraum GmbH & Co (i.e. the licensee); the latter is the company name that appears in most of the evidence submitted.

To this extent, and in accordance with Article 18(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, extent and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The invoices and delivery notes show that the place of use is Germany and the screenshots from the online stores show that the products target the German public. This can be inferred from the language of the documents (German), the currency mentioned (euros) and the addresses in Germany. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period, such as some of the price lists and the majority of the invoices and delivery notes. The sales figures are for the period between 2011 and 2016.

The screenshots from the online stores are undated, some of the price lists are dated after the relevant period and three of the invoices and delivery notes are dated outside the relevant period (before and after).

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period and demonstrates continuity of use of the mark during the year preceding the relevant period and after the end of the relevant period.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the sales figures for ‘Rosana’ products and the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use of the mark. The invoices show continuous and regular sales during the entire relevant period. From the sales figures and the turnover (as can be seen from the invoices), it can be concluded that significant quantities of goods branded with the mark have been sold in Germany. Although the opponent did not submit a significant number of invoices, it can be safely assumed that the invoices submitted were intended to show continuous sales of the goods and not the actual commercial volumes.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

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).

In the present case, the evidence in general, in particular the invoices (and the delivery notes), the price lists and the screenshots from websites selling the products, shows that the earlier mark, ‘ROSANA’ (registered as a word mark), was used in such a way (without any or with minor stylisation) as to establish a clear link between the goods and the undertaking responsible for their marketing.

In some of the evidence (e.g. invoices), the mark was used in combination with additional elements in German, for instance ‘daunenkissen’ (‘down-pillow’) and ‘weich’ (‘soft’). These additional elements serve a purely descriptive purpose and therefore their addition to the opponent’s registered trade mark do not alter its distinctive character.

Consequently, the evidence demonstrates that the mark has been used in accordance with its function.

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45 and 46).

In the present case, as regards Class 20, the evidence shows genuine use of the trade mark only for pillows.

As regards Class 24, the evidence proves use only for duvets. These goods can be considered to form an objective subcategory of bed covers in Class 24. Therefore, as regards Class 24, the Opposition Division considers that the evidence shows genuine use of the trade mark only for duvets.

For instance, the reference numbers in the invoices, namely No 600 904 and No 600 782, relate to blankets and a type of pillow, respectively, sold for a total of EUR 144 259 and EUR 52 679, respectively (as shown in the sales figures for between 2011 and 2016).

However, the evidence submitted does not show use of the sign for any of the remaining goods covered by the earlier mark.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods

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

Class 20: Pillows.

Class 24: Duvets.

The contested goods are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; dentifrices; depilatories; make-up removing preparations; lipstick; cosmetic masks; perfume; essential oils; cosmetics.

Class 18: Goods of leather or imitations of leather; trunks and travelling bags; cases, of leather or leatherboard; traveling trunks; attache cases; briefbags; handbags; briefcases; casual bags; bags (game -) [hunting accessories]; sling bags for carrying infants; backpacks; wheeled shopping bags; beach bags; holdalls; luggage garment bags for travel; wallets; card cases (notecases); purses; purses; hat boxes of leather; cases, of leather or leatherboard; vanity cases (not fitted); travelling sets (leatherware); clothing for pets; animal skins, hides; coverings of skins (furs); trimmings of leather for furniture; furniture coverings of leather; umbrellas; umbrella covers; umbrella rings; satchels; satchels; keycases; parasols; walking sticks; whips; saddlery.

Class 24: Textile material; bed blankets; fabrics for textile use; elastic woven material; velvet; bed linen; linens; table linen, not of paper; bath linen (except clothing). not of paper; bath linen (except clothing).

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 3

The contested bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; dentifrices; depilatories; make-up removing preparations; lipstick; cosmetic masks; perfume; essential oils; cosmetics, which are mainly cleaning products and cosmetics, have nothing relevant in common with the opponent’s pillows in Class 20 or duvets in Class 24, which are articles used on a bed to make sleep more pleasant or comfortable (either to support the head or to keep you warm). The goods compared have different natures, purposes and methods of use. They have different manufacturers and they are not in competition or complementary, contrary to the opponent’s contention. The mere fact that the opponent’s goods can be cleaned using the contested cleaning products does not lead to any degree of similarity between the goods. Therefore, the goods are dissimilar.

Contested goods in Class 18

The contested goods of leather or imitations of leather; trunks and travelling bags; cases, of leather or leatherboard; traveling trunks; attache cases; briefbags; handbags; briefcases; casual bags; bags (game -) [hunting accessories]; sling bags for carrying infants; backpacks; wheeled shopping bags; beach bags; holdalls; luggage garment bags for travel; wallets; card cases (notecases); purses; purses; hat boxes of leather; cases, of leather or leatherboard; vanity cases (not fitted); travelling sets (leatherware); clothing for pets; animal skins, hides; coverings of skins (furs); trimmings of leather for furniture; furniture coverings of leather; umbrellas; umbrella covers; umbrella rings; satchels; satchels; keycases; parasols; walking sticks; whips; saddlery, which are leather or imitations of leather (i.e. raw or semi-raw materials) and goods made thereof, or travel goods and saddlery, have nothing relevant in common with the opponent’s goods in Classes 20 and 24. This is because they differ in their purposes, natures and methods of use. Furthermore, they do not have the same relevant public, producers or distribution channels and they are neither complementary to nor in competition with each other. Considering this, the goods are dissimilar.

Contested goods in Class 24

The contested bed blankets; bed linen; linens, which are bedclothes, are closely linked to the opponent’s duvets, which are large covers filled with feathers or a similar material that you put over yourself when in bed instead of a sheet and/or blankets. These goods can have the same nature and purpose, since all of them are bedclothes used for keeping you warm and for decoration. They can have the same producers, distribution channels and relevant public. Moreover, they can be in competition. Therefore, they are highly similar.

The contested table linen, not of paper; bath linen (except clothing), which are linens for use on the table or in the bathroom, are related to the opponent’s duvets. They have the same nature, as all of them are household linens, and they may also be produced by the same undertakings. Moreover, they have the same relevant public and distribution channels. Therefore, they are similar.

The contested textile material; fabrics for textile use; elastic woven material; velvet are related to the opponent’s duvets. Although the contested goods are unfinished raw materials and the opponent’s duvets are finished products, the latter can be made from the former materials and therefore these goods have the same nature. The degree of transformation required between textile fabrics and the end product is not very high. Moreover, these goods can have the same distribution channels and relevant public. Therefore, they are similar to a low degree.

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 similar to various degrees are directed at the public at large and some of them (e.g. textile material and fabrics for textile use in Class 24) also target the professional public in the textile industry.

The degree of attention is average.

3. The signs

ROSANA	ROSEANNA
Earlier trade mark	Contested sign

The relevant territory is Germany.

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, ‘ROSANA’, and the contested sign, ‘ROSEANNA’, are likely to be perceived as foreign versions or alternative spellings of the female given name ‘Rosanna’ (the combination of the names ‘Rosa’ and ‘Anna’), which, despite not being very common, is used in Germany. As these words have no meaning in relation to the relevant goods, they are distinctive to an average degree.

Visually, the signs coincide in the letters ‘ROS*AN*A’. However, they differ in the additional letters of the contested sign, namely ‘E’ and ‘N’ (being the fourth and seventh letters, respectively). Therefore, the signs coincide in six out of eight letters and there differences lie in their middle.

Therefore, the signs are visually highly similar.

Aurally, the earlier mark will be pronounced as /RO/SA/NA/ and the contested sign will be pronounced as /RO/SE/A/NNA/.

Therefore, the pronunciation of the signs coincides in the sound of the letters /ROS*AN*A/, present identically in the signs. The pronunciation differs in the sound of the letters ‛***E**N*’ of the contested sign, which have no counterparts in the earlier mark. These differences have a limited impact on the comparison, since the additional letter ‘E’ is placed before another vowel (i.e. ‘A’) and the additional (and repeated) letter ‘N’ will not significantly alter the pronunciation of the sign.

The pronunciation also differs in the signs’ number of syllables, since the earlier mark and the contested sign are pronounced in three and four syllables, respectively.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both of the signs will be perceived as variants of the same given name, namely ‘Rosanna’, the signs are conceptually identical.

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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In section b) of the present decision, it is concluded that the goods are partly similar to various degrees and partly dissimilar. The goods target the public at large and a professional public and the degree of attention is average. The earlier mark has an average degree of distinctiveness in relation to the relevant goods.

The signs are visually highly similar, aurally similar to an average degree and conceptually identical.

Account is 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 (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Bearing in mind the aforementioned principle, it is reasonable to conclude that the commonalities between the signs outweigh their differences when the signs are assessed globally. The differences, which lie in the middle of the signs, may easily go unnoticed and they are not sufficient to distinguish between the signs, especially in the light of the signs’ conceptual identity.

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 partly well founded on the basis of the opponent’s German trade mark registration.

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

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

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Andrea VALISA

Birgit FILTENBORG

Michele M. BENEDETTI - ALOISI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 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 for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.