OPPOSITION No B 2 768 326

R. Seelig & Hille oHG, Kevelaerer Str. 21-23, 40549 Düsseldorf, Germany (opponent), represented by Gerhard Held, Kevelaerer Str. 21-23, 40549 Düsseldorf, Germany (employee representative)

a g a i n s t

Bioherba R, 5 Tsarkovna Str, 1402 Ruen, Bulgaria (applicant), represented by Atanas Kostov, "Tsoko Kableshkov" str. Nє10 fl.2, 4000 Plovdiv, Bulgaria (professional representative).

On 29/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 768 326 is upheld for all the contested goods, namely:

Class 5: Slimming tea for medical purposes.

Class 30: Tea-based beverages; tea-based beverages; tea-based beverages with fruit flavoring; tea substitutes; yerba mate; teas and substitutes therefor; Chinese matrimony vine tea (Gugijacha); tea-based beverages; preparations for making beverages [tea based]; tea cakes; Tea cakes; iced tea; iced tea (non-medicated -); flowers or leaves for use as tea substitutes; theine-free tea; tea pods; burdock root tea (Wooungcha); rosemary tea; acanthopanax tea (Ogapicha); barley-leaf tea; white lotus tea (Baengnyeoncha); tea of parched powder of barley with husk (mugi-cha); chrysanthemum tea (Gukhwacha); herbal flavourings for making beverages; herbal preparations for making beverages.

2. European Union trade mark application No 14 996 623 is rejected for all the contested goods. It may proceed for the remaining goods and services.

3. The applicant bears the costs, fixed at EUR 320.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 996 623 (figurative), namely against some of the goods in Classes 5 and 30. The opposition is based on German trade mark registration No 39 410 132 ‘Herba’ (word mark). The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with 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 filing or, where applicable, the date of priority 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 the trade mark on which the opposition is based, namely German trade mark No 39 410 132 ‘Herba’ (word mark).

The date of filing of the contested application is 12/01/2016. 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 12/01/2011 to 11/01/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the 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 30: Tea; tea-like products (herbal and fruit teas), also flavored, enriched with vitamins and/or in instant form (excluding tea and tea-like products in liquid ready-to-drink form).

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), 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 25/05/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 06/08/2017 to submit evidence of use of the earlier trade mark. On 17/07/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

 Enclosure 1: Affidavit dated 06/07/2017 signed by Mr. Jesper Petersen, Marketing Director of the company Teekanne GmbH & Co. KG, distributor in Germany of the products labelled with the trade mark ‘Herba’. The document states that the trade mark ‘Herba’ has been used for products of the category ‘tea and tea-type products (herbal and fruit teas)’ and indicates the sales figures (in customer units) of the products under the mark ‘Herba’ from 2012 to 2015, by product category (black tea, herbal and fruit tea) and packaging format (boxes containing teabags and 100g or 200g pouches), making also reference to gross turnover in the same time period (nearly EUR 20 million). Photos of the packaging of the product range in German (translation provided by the opponent: black tea, fennel, camomile, herbal mix, peppermint, mallow, fruit mix, rose hip and hibiscus, blackberry flavour, fruit mix and red fruits), showing the mark , are also included under Enclosure 1a, for example:

 Enclosure 2: fifteen (exemplary) invoices dated from 23/10/2012 to 13/10/2015, issued by Teekanne GmbH & Co. KG to various clients in Germany, and referring to, inter alia, the sale of products under the mark ‘Herba’, such as ‘Schwarzertee’, ‘Pfefferminze’, ‘Hagebutte m. Hibi’, ‘Kamille’, ‘Früchte-Mischung‘, ‘Fenchel’ or ‘Kräuter-Mischung’. Even if the descriptions of the goods are in German, they correspond to the products shown in the packaging and the translations provided by the opponent thereof.

 Enclosure 3: three excerpts in German, with a reference to 19/01/2013, from the website www.discounto.de, showing the figurative mark ‘HERBA’ in relation to the sale of tea products by the retailer ‘Mäc-Geiz’, as well as the geographical location of some of its stores in Germany, i.e. in Berlin, Hamburg, etc.

 Enclosure 4: extract of a Google search report for the entry ‘Herba Teekane’, limited to Germany as a territory and dated between 13/06/2011 and 12/06/2016. By way of example, it can be seen that on 26/07/2011 the website www.kaffee24.de and on 05/08/2015 the website www.bueromarkt-ag.de offered a range of ‘Herba’ teas.

Firstly, the Opposition Division points out that the fact that the opponent submitted evidence of use of its marks by a third party, namely by the company Teekanne GmbH & Co. KG, implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

In this regard, 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.

As far as the affidavit is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The affidavit, invoices and internet extracts show that the place of use is Germany. This can be inferred from the language of the documents (German), the currency mentioned (Euro) and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

All of the evidence is dated within the relevant period or refers to this time period.

The documents filed, namely the affidavit together with the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. In particular, the invoices show substantial sales during, at least, three years of the relevant period.

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.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor (emphasis added). When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the earlier word mark is used on the product packaging in capital letters against a green oval background and frame around it as show above. As correctly stated by the opponent, the distinctive character of the mark used is not altered since the typeface is fairly standard and the oval element is a commonplace element widely used in labels in the market of foodstuffs. Therefore, these figurative additions do not change the overall impression of the sign. Furthermore, contrary to the applicant’s claim, the fact that this slight figurative representation is also protected by a trade mark registration is not relevant as stipulated by the EUTMR.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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.

In the present case, the evidence shows genuine use of the trade mark at least for the following goods:

Class 30: Tea; tea-like products (herbal and fruit teas), also flavored, (excluding tea and tea-like products in liquid ready-to-drink form).

There is no reference to any tee-like products enriched with vitamins and/or in instant form.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

The goods on which the opposition is based, and for which the opponent showed use, are the following:

Class 30: Tea; tea-like products (herbal and fruit teas), also flavored, (excluding tea and tea-like products in liquid ready-to-drink form).

After the limitations filed by the applicant on 22/09/2016, 26/01/2017 and 08/03/2017, and the partial refusal in opposition decision B 2 766 478, dated 20/10/2017, the contested goods are the following:

Class 5: Slimming tea for medical purposes.

Class 30: Tea-based beverages; tea-based beverages; tea-based beverages with fruit flavoring; tea substitutes; yerba mate; teas and substitutes therefor; Chinese matrimony vine tea (Gugijacha); tea-based beverages; preparations for making beverages [tea based]; tea cakes; Tea cakes; iced tea; iced tea (non-medicated -); flowers or leaves for use as tea substitutes; theine-free tea; tea pods; burdock root tea (Wooungcha); rosemary tea; acanthopanax tea (Ogapicha); barley-leaf tea; white lotus tea (Baengnyeoncha); tea of parched powder of barley with husk (mugi-cha); chrysanthemum tea (Gukhwacha); herbal flavourings for making beverages; herbal preparations for making beverages.

As a preliminary remark, the applicant raises the issue of the different market sectors that allegedly distinguish the conflicting signs. In particular, the applicant claims that the opponent produces tea and flavoured drinks whereas it operates in the market of healthy lifestyle products and life through the power of ‘Nature and plants’. In this regard, it should be pointed out that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods and/or services. The actual or intended use not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71). Consequently, the applicants’ claim must be set aside.

Furthermore, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

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 5

Teas in Class 5 have a medical purpose which would supplement the usual properties that herbs have. Teas in Class 30, without such medical purpose, although having properties that may be diuretic or for cleansing or a natural energy boost (detox tea), do not contain anything else but herbs. Therefore, the contested slimming tea for medical purposes in Class 5 and the opponent’s tea in Class 30 are similar as they have the same nature. Furthermore, they usually coincide in relevant public, distribution channels and method of use.

Contested goods in Class 30

The contested tea-based beverages (listed three times); tea-based beverages with fruit flavoring; tea substitutes; yerba mate; teas and substitutes therefor; Chinese matrimony vine tea (Gugijacha); tea cakes; Tea cakes; iced tea; iced tea (non-medicated -); flowers or leaves for use as tea substitutes; theine-free tea; tea pods; burdock root tea (Wooungcha); rosemary tea; acanthopanax tea (Ogapicha); barley-leaf tea; white lotus tea (Baengnyeoncha); tea of parched powder of barley with husk (mugi-cha); chrysanthemum tea (Gukhwacha) are identical to the opponent’s tea; tea-like products (herbal and fruit teas), also flavored, (excluding tea and tea-like products in liquid ready-to-drink form), either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include, or overlap with, the contested goods. The exclusion contained in the opponent’s list does not affect the above findings.

The contested preparations for making beverages [tea based]; herbal flavourings for making beverages; herbal preparations for making beverages are similar to a low degree to the opponent’s tea; tea-like products (herbal and fruit teas), also flavored, (excluding tea and tea-like products in liquid ready-to-drink form), as they usually coincide in relevant public, distribution channels and method of use.

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 found to be identical or similar to varying degrees are directed at the public at large and at professionals with specific professional knowledge or expertise in the medical and dietetic fields.

The public’s degree of attentiveness may vary from average, for the goods in Class 30, to higher than average, in relation to the goods in Class 5, due to the consequences that these goods may have in patient’s health.

In this regard, it is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. These premises may be applied to the contested goods in Class 5, taking into account that they are for medical purposes, despite not being medicines stricto sensu.

c) The signs and distinctiveness of the earlier mark

Herba
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).

Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof. Consequently, the difference in the signs under comparison in this regard is immaterial.

The verbal element ‘herba’ of the earlier mark means herb, plant or grass in Latin. It does not exist as such in German, where the equivalent words would be, respectively, (Heil)kraut, Pflanze and Gras. The average German-speaking consumer cannot be expected to have a sufficient command of Latin. Therefore, a part of the public will see this word as a fanciful term. However, it cannot be excluded that a part of the public will associate this term with the concept of herbs or (herbal) ingredients of plant origin, given that this element is used in composite words referring to plants, for example, Herbarium: systematic collection of pressed and dried plants and plants parts, or herbizid: chemical preparation for destroying weeds (information extracted from Duden online dictionary on 27/03/2019 at www.duden.de). For this part of the public, this term will have some allusive connotations in relation to the relevant goods, which are herbal products to be consumed as beverages. For the part of the public who will not make a link to the concept of herb/herbal, this term will be of average distinctiveness.

In its observations, the applicant argues that the earlier trade mark is wholly descriptive given that many trade marks include the element ‘Herba’. In support of its argument the applicant refers to several trade mark registrations all around the world.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘Herba’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, the Opposition Division points out that when dealing with the distinctiveness of the earlier mark as a whole, the latter should always be considered to have at least a minimum degree of inherent
distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a
‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012,
C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the
registration of a European Union trade mark, the validity of national trade marks may
not be called into question’. The Court added that ‘it should be noted that the
characterisation of a sign as descriptive or generic is equivalent to denying its
distinctive character’.

Consequently, since the opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for the goods in question from the perspective of part of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal for this part of the public, whereas it will be slightly reduced for the part of the public grasping its allusive connotations.

As regards the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). Therefore, although the verbal element of the contested sign as a whole does not have any meaning for the public in the relevant territory, the average consumer is likely to dissect it into the elements ‘bio’ and ‘herba’.

In this regard, it should be noted that the element ‘bio’ of the contested sign is a prefix existing in German, and commonly used in trade in the relevant territory, that will be associated with a reference to something produced or involving production without the use of chemical fertilizers, pesticides, or other artificial chemicals and will be understood as an indication of something of a natural, organic or biological origin. Bearing in mind that the relevant goods are tea products that may be produced with organic farming methods, this element is non-distinctive for all the goods concerned.

In connection with the element ‘herba’, the same reasoning made as regards this element in the earlier mark is applicable to the element of the contested sign. Therefore, this element is either distinctive in the context of the relevant goods or merely allusive.

The figurative element of the contested sign consisting of a blue irregular element resembling a cupped hand from which two green leaves sprout, may be understood as a reference to tea leaves, or, in relation of the concept of ‘bio’, may be associated to goods of biological origin. Therefore, this element is weak for all the relevant goods.

The signs have no element that could be considered clearly more dominant (visually eye-catching) than other elements.

However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Moreover, regarding the fairly standard typeface and colour in which the verbal element of the contested mark is represented, this stylisation must be considered not that elaborated or sophisticated that it will lead the consumer’s attention away from the verbal element they embellish, whereas the figurative device has been found weak for the goods concerned.

Furthermore, even if consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T-344/09, ‘Cosmobelleza’, EU:T:2013:40, § 52). In the present case, the difference in the beginning of the signs must have a lowered consideration on account of the non-distinctive character of the first verbal element ‘bio’ of the contested sign.

Visually and aurally, the signs coincide in the sequence of letters and sounds ‘herba’ which constitute the only element of the earlier mark and the most distinctive element of the contested sign. The signs differ in the descriptive prefix ‘bio’, as well as, visually, in the figurative element and colours of the contested sign. The latter are, however, weak or have a lower impact within the sign. Furthermore, as explained above, the fact that the signs do not coincide in their first verbal element has a lowered importance in the present case.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated by part of the public with a similar (allusive) meaning, whereas the additional meanings of the contested sign are non-distinctive or weak, the signs are conceptually similar to an average degree.

For the part of the public not associating the common element ‘herba’ with any meaning, taking into consideration the meanings conveyed by the contested sign, even if these are non-distinctive or weak, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods are partly identical and partly similar to varying degrees to the goods on which the opposition is based. They are directed at the public at large and at professionals with specific professional knowledge or expertise, with a degree of attention that will vary from average to higher than average.

It has also been concluded that the signs are visually, aurally and, for part of the public, conceptually similar to an average degree, as far as they fully coincide in the element ‘herba’ which is the only element of the earlier mark and the element on which the distinctive character of the contested mark rests in essence. The signs are not conceptually similar for other part of the public on account of the non-distinctive or weak meanings of the contested sign. The fact that the verbal difference between the signs is placed at the beginning of the contested mark cannot prevail in the present case on account of its non-distinctive character. Furthermore, the graphical elements do not set the signs apart sufficiently.

The distinctive character of the earlier mark is normal for part of the public (these not associating it with any meaning), whereas it will be slightly reduced for the part of the public grasping its allusive connotations. In any event, although the distinctive character of an earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of reduced distinctive character, on the one hand, and a trade mark applied for which is not a complete reproduction of it, on the other, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 61). Furthermore, as explained before, the additional elements of the contested sign are not able to safely differentiate between the marks as they will not be seen by consumers as business identifiers.

Furthermore, account should be 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 with 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).

It should also be borne in mind that 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 and services covered are from the same or economically linked undertakings. Indeed, as claimed by the opponent, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), in particular a bio line of its products.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical and similar goods, even those similar to a low degree. Therefore, the relevant public, despite paying a higher than average degree of attention in connection with part of the goods, may believe that these goods come from the same undertaking or, at least, economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 39 410 132. It follows that the contested trade mark must be rejected for all the contested goods.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Manuela RUSEVA

Eva Inés PÉREZ SANTONJA

Victoria DAFAUCE MENENDEZ

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.