OPPOSITION No B 2 698 333

Extreme Networks Limited, 22 Friars Street, CO10 2AA Sudbury, United Kingdom (opponent), represented by Addleshaw Goddard LLP, 1 St Peter's Square, M2 3DE Manchester, United Kingdom (professional representative)

a g a i n s t

X-Trementerprise, SAS, 9 rue de la Négresse, 64200 Biarritz, France (applicant), represented by Laurence Denis-Leroy, c/o BMH Avocats 29, rue du Faubourg Saint-Honoré, 75008 Paris, France (professional representative).

On 19/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 698 333 is partially upheld, namely for the following contested goods and services:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, except apparatus for regulating temperature, temperature indicating apparatus, capillary tubes, thermionic tubes; 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; special cases for photographic apparatus and viewfinders, for mobile telephones and for cameras; protective cases and boxes for photographic apparatus and viewfinders, for mobile telephones and for cameras; attachments for securing photographic apparatus and viewfinders, mobile telephones and cameras to stands; stands and tripods for cameras, for photographic apparatus and viewfinders; mooring ropes, fastening straps and accessories for photographic apparatus and cameras for use while practising sports; usb flash drives; smart card; usb cards; compact discs, audio and video compact discs; optical audio video discs, all the aforesaid goods relating to the field of video that can be broadcast via any media and/or while performing any sporting activity.

Class 16: Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); books and posters, mail order catalogues in paper form relating to video cassettes and video films, including optical, audio and video discs, all the aforesaid goods being adapted in particular to the field of video relating to the performance of any sporting activity.

Class 25: Clothing, footwear, headgear, except clothing used for playing golf; none of the aforesaid goods being of leather.

Class 38: Telecommunications; broadcasting of cable television; satellite transmission; computer-aided transmission of messages and images; information about telecommunication; television broadcasting; television broadcasting; broadcasting services, namely uploading; providing of access to information or electronic data on the internet or any other communications network by means of their entry, posting, displaying, tagging, blogging, sharing or otherwise providing information or electronic data on the internet or any other communications network; webcasting services; electronic communications services; transmission of messages, data and content via the internet and other computer and communications networks; transmission of electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the internet and other computer and communications networks; digital broadcasting of audio and video programs over a global computer network, all the aforesaid services relating to the field of video that can be broadcast via any media and/or while performing any sporting activity.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; publication of video cassettes; production of television features; television entertainment; rental of videotapes; videotape production; rental of sound recordings; films production; rental of motion pictures; recording studios; production of shows; organisation of competitions, all the aforesaid services relating to the field of video that can be broadcast via any media and/or while performing any sporting activity.

Class 43: Snack-bars; traditional services for providing food and drink; hotels, providing of food and drink.

2. European Union trade mark application No 14 873 707 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 14 873 707 (word mark: ‘X-TREME’), namely against all the goods and services in Classes 9, 16, 25, 38, 41 and 43. The opposition is based on European Union trade mark registration No 4 844 148 (word mark: EXTREME), European Union trade mark registration No 5 061 072 (figurative mark: ) and European Union trade mark registration No 10 915 122 (figurative mark: ). 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.

a) The goods and services

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

Earlier mark 1: European Union trade mark registration No 4 844 148:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; computer peripherals; electrical and electronic goods; electric, electronic, communications, instructional and teaching apparatus; apparatus and instruments, all for receiving, tuning and amplifying radio and/or television and/or data signals; modems; television apparatus, video cameras, video recorders, music players, video players and compact disc players; apparatus for data storage; hard drives; mouse pads; batteries and battery chargers for mobile phones and accessories, music, players and accessories, computer equipment, PDAs and variations thereof, DVDs, wireless data transmission devices and other direction finder devices; headphones; audio speakers; monitor speakers; digital audio and video devices; radios; bags and cases adapted or shaped to contain cameras and/or video cameras; cordless telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone covers; portable digital electronic devices and software related thereto; handheld digital electronic devices and software related thereto; MP3 players; hand held computers, personal digital assistants, electronic organizers, electronic notepads; telephones; microprocessors; memory boards; monitors; displays; keyboards; cables; printers; videophones; disk drives; computer software and firmware; pre-recorded computer programs; electronic handheld devices for the wireless receipt and/or transmission of data, particularly messages, and devices that enable the user to keep track of or manage personal information; bags and cases adapted or shaped to contain MP3 players, hand held computers, personal digital assistants, electronic organizers and electronic notepads; parts and fittings for all the aforesaid goods not comprising a technical platform such as a cable or telecoms system and excluding sound, video or audiovisual recordings, DVDs and recorded programs for television or video; eyewear; sunglasses.

Class 43: Services for providing food and drink; temporary accommodation; hotel accommodation services; hotel reservation services; restaurant, bar, café and hotel services.

Earlier mark 2: European Union trade mark registration No 5 061 072:

Class 16: Printed matter; periodical publications; newspapers; magazines; books; vouchers; catalogues; stationery; printed guides and manuals.

Class 38: Telecommunications; providing access to a global computer network for the transfer and dissemination of information; on-line services and transmissions, namely transfer of information and messages including e-mail; telephone messaging services; rental of telecommunication apparatus; telephone communication services including call screening, conferencing, paging and diverting calls; information, advisory and consultancy services relating to the aforesaid.

Earlier mark 3: European Union trade mark registration No 10 915 122:

Class 25: Clothing, footwear, headgear; shirts; t-shirts; sweatshirts; sweaters; pullovers; tank-tops; jackets; coats; skirts; trousers; jeans; pants; shorts; rainwear; blouses; coats; jumpers; gloves; vests; leggings; hoodies; neckties, scarves, night clothes, bathing clothes; costumes; sports clothing; casual sportswear; articles of underclothing; hosiery; socks; tights; wristbands; hats; caps; bandannas; scarves; sunvisors; boots; slippers; bibs; sneakers; sandals; shoes; aprons; pyjamas; parts and fittings for all the aforesaid goods.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; sports training, sport tuition, sport instruction services, provision of entertainment, sporting and cultural activities; provision of sports facilities, providing recreation facilities, arranging and conducting of conferences and seminars, presentation of live performances, arranging of sporting events; arranging of sports competitions; educational services relating to sports; hire and rental of equipment for sports; information services relating to sport; instruction courses relating to sporting activities; timing of sports events, arranging group recreational activities, sport camp services, coaching services for sporting activities, instruction in sporting activities, instruction services relating to sports, organization of sporting activities, events, and competitions, production of sporting events, provision of courses of instruction, provision of information relating to sports, provision of sporting events, publishing of printed matter, publishing of newsletters, services for the organization of sports events, sports entertainment services, hire of sport facilities; organization of outdoor activities and sporting activities; information, advisory and consultancy services relating to the aforesaid.

The contested goods and services, after the limitation requested by the applicant on 25/10/2016, are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring and life-saving apparatus and instruments; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, except apparatus for regulating temperature, temperature indicating apparatus, capillary tubes, thermionic tubes; 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; Special cases for photographic apparatus and viewfinders, for mobile telephones and for cameras; Protective cases and boxes for photographic apparatus and viewfinders, for mobile telephones and for cameras; Attachments for securing photographic apparatus and viewfinders, mobile telephones and cameras to stands; Stands and tripods for cameras, for photographic apparatus and viewfinders; Mooring ropes, Fastening straps and accessories for photographic apparatus and cameras for use while practising sports; USB flash drives; Smart card; USB cards; Compact discs, audio and video compact discs; Optical audio video discs, all the aforesaid goods relating to the field of video that can be broadcast via any media and/or while performing any sporting activity.

Class 16: Paper, cardboard; Printed matter; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks; Books and posters, mail order catalogues in paper form relating to video cassettes and video films, including optical, audio and video discs, all the aforesaid goods being adapted in particular to the field of video relating to the performance of any sporting activity.

Class 25: Clothing, Footwear, Headgear, Except clothing used for playing golf; None of the aforesaid goods being of leather.

Class 38: Telecommunications; Broadcasting of cable television; Satellite transmission; Computer-aided transmission of messages and images; Information about telecommunication; Television broadcasting; Television broadcasting; Broadcasting services, namely uploading; Providing of access to information or electronic data on the internet or any other communications network by means of their entry, posting, displaying, tagging, blogging, sharing or otherwise providing information or electronic data on the internet or any other communications network; Webcasting services; Electronic communications services; Transmission of messages, data and content via the Internet and other computer and communications networks; Transmission of electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the Internet and other computer and communications networks; Digital broadcasting of audio and video programs over a global computer network, All the aforesaid services relating to the field of video that can be broadcast via any media and/or while performing any sporting activity.

Class 41: Education; Providing of training; Entertainment; Sporting and cultural activities; Publication of video cassettes; Production of television features; Television entertainment; Rental of videotapes; Videotape production; Rental of sound recordings; Films production; Rental of motion pictures; Recording studios; Production of shows; Organisation of competitions, all the aforesaid services relating to the field of video that can be broadcast via any media and/or while performing any sporting activity.

Class 43: Snack-bars; Traditional services for providing food and drink; Hotels, providing of food and drink.

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

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

However, the term ‘namely’ used in the applicant’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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

Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; cash registers, calculating machines, data processing equipment and computers; mechanisms for coin-operated apparatus are identically contained in the lists of the contested goods and the goods of earlier mark 1.

The contested compact discs, audio and video compact discs; optical audio video discs, all the aforesaid goods relating to the field of video that can be broadcast via any media and/or while performing any sporting activity; smart card; USB cards; USB flash drives are included in the broad category of, or overlap with, the earlier magnetic data carriers of earlier mark 1. Therefore, they are identical.

The contested protective and special cases for mobile phones are included in the broad category of the opponent’s mobile telephone cases of earlier mark 1. Therefore, they are identical.

The contested attachments for securing mobile telephones to stands are included in the broad category of the opponent’s parts and accessories for mobile telephones of earlier mark 1. Therefore, they are identical.

The contested apparatus and instruments for accumulating electricity, except apparatus for regulating temperature, temperature indicating apparatus, capillary tubes, thermionic tubes include as a broader category, or overlap with, the opponent’s batteries for mobile phones. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods of earlier mark 1.

The Opposition Division notes that the correct translation for ‘mooring ropes’ in the contested goods is ‘harnesses’, ‘Harnais’ in French, the first language of the application, which according to Article 147(3) is the authentic text. The goods refer not to ropes for mooring boats (that do not belong in Class 9) but harnesses for photographic apparatus and cameras for use while practising sports. Therefore, the goods will be referred to in the below comparison with the correct translation, ‘harnesses’.

The contested protective cases and boxes for photographic apparatus and viewfinders, and for cameras; special cases for photographic apparatus and viewfinders and for cameras; attachments for securing photographic apparatus and viewfinders and cameras to stands; stands and tripods for cameras, for photographic apparatus and viewfinders; harnesses, fastening straps and accessories for photographic apparatus and cameras for use while practising sports are similar to the earlier photographic apparatus and instruments of earlier mark 1. They are complementary goods that share distribution channels and end user.

The contested apparatus and instruments for conducting electricity, except apparatus for regulating temperature, temperature indicating apparatus, capillary tubes, thermionic tubes are similar to the opponent’s photographic apparatus and instruments of earlier mark 1. These goods may be complementary and distribution channels and relevant public may coincide.

The contested apparatus and instruments for switching, transforming, regulating or controlling electricity, except apparatus for regulating temperature, temperature indicating apparatus, capillary tubes, thermionic tubes are similar to a low degree to the opponent’s checking (supervision) apparatus and instruments contained in the same class of earlier mark 1. Distribution channels and relevant consumer may coincide as may the producers.

Contested goods in Class 16

Printed matter; stationery are identically contained in the lists of the contested goods and the goods of earlier mark 2.

The contested books and posters, mail order catalogues in paper form relating to video cassettes and video films, including optical, audio and video discs, all the aforesaid goods being adapted in particular to the field of video relating to the performance of any sporting activity; instructional and teaching material (except apparatus) are included in the broad category of, or overlaps with, the opponent’s printed matter of earlier mark 2. Therefore, they are identical.

The contested paper, adhesives for stationery purposes, office requisites, except furniture are included in the broad category of, or overlap with, the opponent’s stationery of earlier mark 2. Therefore, they are identical.

The contested bookbinding material; adhesives for household purposes are highly similar to the opponent’s stationery. The nature and purpose, relevant public and producers may coincide.

The contested photographs are similar to the opponent’s printed matter. The nature, purpose, method of use, distribution channels, relevant public and producers may coincide.

The contested artist materials; cardboard; paint brushes are at least similar to the opponent’s stationery. The purpose of the goods may coincide as may distribution channel and producers.

The contested plastic materials for packaging (not included in other classes) are similar to a low degree to the opponent’s stationery. Distribution channels and relevant public may coincide.

The contested typewriters; printers' type; printing blocks are dissimilar to the opponent’s stationery and to all of the opponent’s other goods and services. The nature, purpose and method of use differ. They are not complementary nor are they in competition. Relevant public, distribution channels and producers/providers do not normally coincide.

Contested goods in Class 25

The contested clothing, footwear, headgear, except clothing used for playing golf; none of the aforesaid goods being of leather are included in the broad categories of the opponent’s clothing, footwear, headgear from earlier mark 3. Therefore, they are identical.

Contested services in Class 38

Telecommunications are identically contained in the lists of the contested services and the services of earlier mark 2.

The contested broadcasting of cable television; satellite transmission; computer-aided transmission of messages and images; information about telecommunication; television broadcasting; television broadcasting; broadcasting services, namely uploading; providing of access to information or electronic data on the internet or any other communications network by means of their entry, posting, displaying, tagging, blogging, sharing or otherwise providing information or electronic data on the internet or any other communications network; webcasting services; electronic communications services; transmission of messages, data and content via the internet and other computer and communications networks; transmission of electronic media, multimedia content, videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the internet and other computer and communications networks; digital broadcasting of audio and video programs over a global computer network, all the aforesaid services relating to the field of video that can be broadcast via any media and/or while performing any sporting activity are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 41

Education; providing of training; entertainment; sporting and cultural activities are identically contained in the lists of the contested services and the services of earlier mark 3.

The contested production of television features; television entertainment; rental of videotapes; videotape production; rental of sound recordings; films production; rental of motion pictures; recording studios; production of shows; organisation of competitions, all the aforesaid services relating to the field of video that can be broadcast via any media and/or while performing any sporting activity are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested publication of video cassettes is at least similar to the opponent’s publishing of printed matter of earlier mark 3. The nature of the services is similar as they both deal with publishing. They may be directed at the same relevant public through the same distribution channels. Providers may also coincide.

Contested services in Class 43

The contested snack-bars; traditional services for providing food and drink; hotels, providing of food and drink are included in the broad category of, or overlap with, the opponent’s restaurant, bar, café and hotel services of earlier mark 1. Therefore, they are identical.

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or terms and conditions of the goods and services purchased.

c) The signs

EXTREME EUTM No 4 844 148 EUTMS No 5 061 072 & No 10 915 122	X-TREME
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal element ‘EXTREME’ is meaningful in certain territories, for example in those countries where English is understood it means ‘very great in degree or intensity’ (Collins English dictionary, https://www.collinsdictionary.com on 10/12/2018). The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as the United Kingdom, Ireland and Malta for which there is conceptual identity between the signs, as explained below.

The earlier marks have the verbal element ‘EXTREME’. Given its meaning it may be considered to have a limited degree of distinctive character regarding some of the goods and services in question. For example, those that could be ‘extreme’ in some way (i.e. the sporting activities in Class 41 may refer to extreme sports or those involving a high degree of risk). For other goods and services it has no clear meaning and is distinctive.

One of the earlier marks is the word mark ‘EXTREME’ for which the word as such is protected and, therefore, it is irrelevant if it is depicted in upper or lower case letters.

The other earlier mark is a figurative mark and is composed of the verbal element ‘EXTREME’ represented in a basic bold black capital typeface above which appears a circular figurative device containing the verbal element ‘ex’ in a large lower case font, the letter ‘e’ above the letter ‘x’. The circular figurative device has an impact akin to a basic geometric shape and has therefore a very limited degree of distinctive character. The verbal element ‘EX’ will be seen as a reinforcement of the first two letters of the verbal element ‘EXTREME'. No one element is more dominant than another in this sign.

The contested sign is the word mark ‘X-TREME’, which is a common purposeful misspelling of the word ‘EXTREME’. The considerations regarding the verbal element ‘EXTREME' above also apply here. The hyphen is a punctuation mark that does not affect the distinctive character of the word.

Visually, the signs coincide in ‘*X*REME’ that appears in all of the marks. They differ in that this verbal element in the earlier marks start with the letter ‘E’ and the contested sign has a hyphen after the letter ‘X’. The signs differ also with respect to the circular device that appears only in the earlier figurative mark and contains the verbal element ‘ex’.

Therefore, the signs are visually at least similar to an average degree, and highly similar if we consider the earlier word mark.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛EXTREME/X-TREME’ that appear in the earlier word marks and the contested sign. They differ in the sound of the additional ‘ex’ that appears only in the earlier figurative mark and that may not even be pronounced as it is a repetition of the first syllable of the verbal element below.

Therefore, the signs are aurally at least highly similar and identical if we consider the earlier word mark.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning they 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.

d) Distinctiveness of the earlier marks

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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier marks must be seen as limited for some of the goods and services in question, for example for sporting activities in Class 41. The marks have a normal degree of distinctiveness for the goods and services in relation to which it has no meaning from the perspective of the public in the relevant territory.

e) Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 et seq.

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17). In the present case, the low degree of similarity between some of the goods, together with the degree of similarity between the marks, will have to be taken into account when assessing the likelihood of confusion between the marks.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

In the present case the goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The signs are visually similar to at least an average degree, aurally at least highly similar and conceptually identical. The degree of attention of the relevant public varies from average to high and the earlier marks have a limited degree of distinctive character for some of the goods and services and a normal degree of distinctive character for the rest.

The contested sign is a common misspelling of a verbal element that is contained in its entirety in the earlier marks and which is the earlier word mark in full. Given the above, there is a likelihood of confusion for the relevant public for those goods and services that are identical and similar. For those goods that are similar to a low degree a likelihood of confusion cannot be ruled out in particular for those for which the signs are aurally (and conceptually) identical. The same can be said even for the goods and services for which the earlier mark has a limited degree of distinctive character given the degree of similarity between the signs. As mentioned the additional verbal element ‘ex’ in the earlier figurative mark will simply be seen as a reinforcement of the first syllable of the verbal element ‘EXTREME’. The differences between the marks, including the circular figurative device, are clearly insufficient to enable the relevant public to distinguish between them.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, both professional and general, regardless of the degree of attention. Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 4 844 148 for the word mark ‘EXTREME’ and European Union trade mark registrations No 5 061 072 and No 10 915 122, both for the figurative mark . As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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 varying degrees to those of the earlier trade mark. This conclusion stands for the contested goods which have been found to be similar to a low degree. This is because the similarity between the signs is significant enough to also lead to a likelihood of confusion in relation to the goods which only have a low degree of similarity.

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 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

Beatrix STELTER

Lynn BURTCHAELL

Gonzalo BILBAO TEJADA

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.