OPPOSITION No B 2 712 761

Cognis IP Management GmbH, Henkelstr. 67, 40589, Düsseldorf, Germany (opponent), represented by Noerr Alicante IP, S.L., Avenida México 20, 03008, Alicante, Spain (professional representative)

a g a i n s t

Kyoraku Co., Ltd., 598-1, Tatsumae-cho, Nakadachiurisagaru, Karasuma-Dori, Kamigyo-Ku, Kyoto-Shi, 6020912, Kyoto, Japan (applicant), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802, München, Germany (professional representative).

On 21/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 712 761 is upheld for all the contested goods.

2. European Union trade mark application No 15 012 206 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 15 012 206 ‘Easy Foam Master’. The opposition is based on, inter alia, German trade mark registration No 889 754 ‘FOAMASTER’. 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. The Opposition Division considers it appropriate to examine the proof of use in relation to German trade mark registration No 889 754 ‘FOAMASTER’.

The date of filing of the contested application is 19/01/2016. 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 19/01/2011 to 18/01/2016 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 1: Defoaming agent, especially for synthetic latices and polyvinyl alcohol.

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 06/04/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 11/06/2017 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended until 11/08/207, at the opponent’s request. On 10/08/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

• Annex 1: excerpts from the website Wikipedia; a presentation, dated June 2010, on the company BASF and its acquisition of the opponent; and a table of products divided into groups according to their function. In the chart, the opponent’s goods under the mark ‘FOAMASTER’ are included in the group ‘Defoamers’ and are divided into the subgroups ‘Mineral oil based defoamers’, ‘White oil based defoamers’ and ‘Native oil based defoamers’. The mark ‘Foamaster^®’ is used with various codes, such as ‘Foamaster^® 50’, ‘Foamaster^® 60’, ‘Foamaster^® 111’, ‘Foamaster^® 714’, ‘Foamaster^® 8034’ ‘Foamaster^® DF124 L’, ‘Foamaster^® H2’ and ‘Foamaster^® 223’.

• Annex 2: excerpts, in English, from the website www.btc-europe.com, belonging to BTC, a subsidiary owned by BASF that serves as the European sales organisation for more than 17 000 small and medium-sized customers in a number of countries and focuses on specialised chemicals. The mark ‘Foamaster^®’ is used in connection with ‘Defoamers’, ‘Defoamers for inks and printing’ and ‘Defoamers for seed treatment’, and ‘FOAMASTER’ products such as ‘FOAMASTER MO S160’, ‘FOAMASTER WO 2323’ and ‘FOAMASTER NO 2335’ are mentioned, with brief explanations of their properties being given.

• Annex 3: excerpts from the BASF website, showing goods under the mark ‘FOAMASTER’ available globally for purchase and including a list of the ‘FOAMASTER’ range of products, including ‘FOAMASTER WO 2323’ and ‘FOAMASTER NO 2335’. This annex includes further information on the nature and composition of various ‘FOAMASTER’ mineral oil-based defoamers, such as ‘FOAMASTER MO 2108’, ‘FOAMASTER MO 2111’, ‘FOAMASTER MO 2114’, ‘FOAMASTER MO 2121’, ‘FOAMASTER MO 2134’ and ‘FOAMASTER WO 2323’.

• Annex 4: printouts of the results of Google searches for the keywords ‘BASF FOAMASTER’ and ‘COGNIS FOAMASTER’. The results of the searches refer to the opponent’s mark ‘FOAMASTER’ in connection with defoamers, additives for coatings, formation additives, defoamers for water-based systems, etc. In many of the results, the mark ‘FOAMASTER’ is associated with defoamers with product codes that are the same as those used in the evidence listed above.

• Annex 5: four brochures, in English, issued in 2012, 2014 and 2015, and referring to defoamers, formation additives, resins and additives for the coating industry. The mark ‘FOAMASTER’ is used for defoamers.

• Annex 6: various product information sheets for defoamers under the mark ‘FOAMASTER’, using product codes that are identical to those used in the documents listed above. The information sheets are dated 2011, 2012, 2014 and 2015.

• Annex 8: 23 invoices issued to clients in Germany, Italy and Spain (in German, Italian and Spanish, respectively) by BASF for sales of ‘FOAMASTER’ products. These invoices are dated between 2011 and 2016.

• Annex 9: five invoices in German issued by BASF for sales of ‘FOAMASTER’ products to Germany in the years from 2012 to 2015.

• Annex 10: 18 invoices, in German and Spanish, issued between 2011 and 2016 by BASF for sales of ‘FOAMASTER’ products to clients in Germany and Spain.

• Annex 12: an affidavit by the Global Product Manager of BASF East Asia Regional Headquarters Ltd, stating that ‘FOAMASTER’ trade marks were used in Austria, Benelux, Denmark, Finland, France, Germany, Greece, Italy, Portugal, Spain and Sweden in the years from 2011 to 2016 for goods in Class 1, namely defoaming agents. This document contains annual turnover figures for ‘FOAMASTER’ defoaming agents in the abovementioned countries for the years between 2011 and 2016.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

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).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

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 disputes the probative value of the affidavit. In this respect, it should be noted that 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.

Place of use

The invoices show that the place of use is Germany. This can be inferred from the language used on the invoices issued to clients in Germany, the indication that the currency is euros and some addresses in Germany. Therefore, the evidence relates to the relevant territory.

Time of use

All of the evidence is dated within 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 invoices and the brochures, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The applicant argues at length that, in addition to the use of the mark by third parties, the opponent should also show that it has used itself the mark, ‘for the sake of transparency and legal certainty in opposition proceedings and for the sake of competitors who cannot be hindered from registering or using an allegedly similar trademark, if it has not been proven without a doubt that the prior rights have actually been genuinely used by the opponent or with his consent to create or secure a market share on his behalf’.

Some of the evidence submitted by the opponent relates to the companies BASF and BTC, which, according to the opponent, specifically in the documents in Annexes 1 and 2, are, respectively, the company that has acquired the opponent and its subsidiary that is in charge of sales of the opponent’s goods.

According to Article 18(2) EUTMR use of a European Union trade mark with the consent of the proprietor of the mark is deemed to constitute use by the proprietor.

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). Furthermore, the opponent has also explained, and submitted documents to demonstrate, that the companies mentioned in the evidence are economically linked to it.

Consequently, and in accordance with Article 18(2) EUTMR, the use of the mark by those other companies was with the opponent’s consent and, therefore, is equivalent to use by the opponent itself.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of use of the earlier mark.

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.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of § 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. 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.

Use of the mark as registered

As regards the use of the sign as a trade mark, the evidence shows that the mark has been used in accordance with its function and as registered for all the goods for which it is registered. The fact that in some of the documents the mark ‘FOAMASTER’ appears together with the symbol ‘^®’, which is a symbol generally used in trade to indicate that a mark is registered, is a further indication that it has been used as a trade mark.

Moreover, contrary to the applicant’s arguments, the codes with which the mark ‘FOAMASTER’ is used in most of the evidence (e.g. ‘FOAMASTER MO 2134’, ‘FOAMASTER 8034’ and ‘FOAMASTER NXZ’) are merely product codes, as can be deduced from the various items of evidence in combination. As such, those codes simply serve the function of identifying specific ‘FOAMASTER’ products and are not capable of altering the distinctive character of the earlier mark, which is clearly identifiable as a separate element when used with the codes.

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.

Use in relation to the registered goods

The applicant further argues that the evidence does not show use of the mark in connection with all the goods for which the earlier mark is registered, namely defoaming agent, especially for synthetic latices and polyvinyl alcohol in Class 1, but, rather, shows use only in connection with ‘defoaming agents used for coatings, paints, primers, adhesives, plasters and printing inks as well as for seed treatment in the agricultural industry’. According to the applicant, the earlier mark should be considered registered for those subcategories only.

The Opposition Division disagrees with the applicant’s conclusion. Although the opponent has demonstrated use of the mark in relation to certain specific defoaming agents such as those mentioned above, the fact remains that it would be unfairly burdensome to expect the opponent to show use for every single subcategory of the goods in question. In this respect, it should be recalled that, 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 a 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 (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 46).

Therefore, the Opposition Division considers that use of the earlier mark has been proven for defoaming agent, especially for synthetic latices and polyvinyl alcohol in Class 1. For the sake of clarity, it is noted that the specification especially for synthetic latices and polyvinyl serves only to give examples of the types of defoaming agent in question and does not constitute an extension of the category of defoaming agent.

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).

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 for all the goods for which it is registered.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s German trade mark registration No 889 754 ‘FOAMASTER’, the proof of use of which was assessed in the previous section.

1. The goods

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

Class 1: Defoaming agent, especially for synthetic latices and polyvinyl alcohol.

The contested goods are the following:

Class 1: Foaming aid for plastics (foaming auxiliary for plastics).

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

The term ‘especially’, used in the opponent’s list of goods, indicates that the specific goods 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 (see, by analogy, 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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.

The contested goods are auxiliary materials that facilitate the formation of a foam, such as surfactants or blowing agents. The opponent’s goods are chemical additives, such as insoluble oils, silicones and certain alcohols, that reduce and hinder the formation of foam in industrial process liquids. These goods have the same nature, all being chemical products, can originate from the same undertakings and are sold through the same distribution channels. Furthermore, they can be in competition with each other. It follows that these goods are similar.

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 are specialised chemicals used in the materials processing industry and are directed at professionals in that field, with specific professional knowledge or expertise.

The degree of attention is considered to vary from average to high, on account of the specialised nature of the goods.

3. The signs

FOAMASTER	Easy Foam Master
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).

Both marks are word marks; the earlier mark consists of a single word, ‘FOAMASTER’, and the contested mark of three words, ‘Easy Foam Master’.

It should be noted that in the case of word marks it is irrelevant whether they are in lower case or upper case letters or a combination of both (31/01/2013, T‑66/11, Babilu, EU:T:2013:48, §, 57), as, in principle, it is the word itself that is protected, not its written form.

The word ‘FOAMASTER’ of the earlier mark does not exist as such in German. However, the average consumer is likely to perceive the components ‘FOA(M)’ and ‘MASTER’ on the basis that 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). This is the case here in particular because the relevant public is composed of professionals in the chemicals industry, who can be expected to have some knowledge of English.

Therefore, and in the light of the relevant goods, as explained below, the public is expected to identify in the earlier mark the words ‘FOA-MASTER’, or rather ‘FOAM-MASTER’, as, despite the lack of a double ‘M’, the ‘M’ between the vowels ‘A’ and ‘A’ will be interpreted as both the last letter of the word ‘FOAM’ and the first letter of the word ‘MASTER’, with the lack of a double ‘M’ being perceived as a mere peculiarity of spelling.

The element ‘FOAM’ is an English word meaning ‘a light frothy mass of fine bubbles formed in or on the surface of a liquid or from a liquid’ (information extracted from the Merriam-Webster English Dictionary on 06/06/2018 at https://bit.ly/2sNtk0Z). This word will be associated with the purpose or characteristics of the relevant goods, which include defoaming agent. Since this component does not exist in the relevant language and other words exist in German to describe the meaning of ‘foam’, such as ‘Schaumstoff’, this word must be considered weak in relation to those goods.

The element ‘MASTER’ at the end of the earlier sign has entered German vocabulary in this spelling via English, and is also very similar to the corresponding German word, ‘Meister’. This word will convey the idea of a person with exceptional skill at a certain thing. It is a laudatory term, and therefore is considered weak in relation to the relevant goods.

As regard the words ‘Foam’ and ‘Master’, the same considerations set out above apply also to these elements in the contested mark, and they are deemed weak for the relevant goods in question, which include foaming aid.

The element ‘Easy’, present at the beginning of the contested sign, is an English word referring to something ‘simple, not difficult and not requiring much effort’. It is reasonable to assume that this word will be understood by the relevant German consumers, since it forms part of basic English vocabulary and is used extensively in business and also in marketing and advertising (21/02/2017, R 2048/2015-2, easyTECH (fig.) / EASYGROUP et al.). This element is laudatory, as it alludes to a desirable quality of the goods offered, namely that they are easy to use. It follows that this component must be considered weak for all the goods in question.

It follows that it is not possible to identify in the marks one element that is more distinctive than the others.

Visually, the signs coincide in the sequence of letters ‘FOAM(*)ASTER’, although in the contested mark that sequence is split into two words, ‘Foam Master’, with the addition of a letter ‘M’. Furthermore, the contested mark includes the word ‘Easy’, which appears at the beginning of the mark.

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

Aurally, the pronunciation of the signs coincides in the sound of the syllables ‘FOA-MAS-TER’ and ‘FOAM-MAS-TER’. It follows that these elements in the marks have the same number of syllables and, despite a slight variation in intonation, the same rhythm. The pronunciation differs slightly in that the above sequence contains an additional sound, ‘M’, in the middle of the sequence ‘Foam Master’. The pronunciation of the signs differs in the sound of the additional word ‘Easy’ of the contested mark.

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 the signs will be associated with the same meaning owing to the coinciding, although weak, components ‘FOA(M)’ and ‘MASTER’, the signs are conceptually similar to an average degree.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of weak elements in the mark, as stated above in section c) of this decision.

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).

The goods are similar and the degree of attention of the public is considered to vary from average to high. Furthermore, the signs are similar to an average degree from the visual, aural and conceptual points of view and the earlier sign enjoys an average degree of distinctiveness.

The similarities between the signs lie in the very similar, although weak, word elements ‘FOAMASTER’/‘Foam Master’. The differing verbal element, ‘Easy’, in the contested sign is also weak in relation to the goods in question.

The fact that the main difference between the signs, namely the word ‘Easy’, appears at the beginning of the contested mark cannot be considered to outweigh the similarities in these circumstances, in particular on account of its laudatory character.

In this respect, it must be borne in mind that, although the distinctive character of the 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 weak 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, 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).

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 undertaking or economically linked undertakings.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to outweigh the degree of similarity between them for similar goods. Therefore, taking into account the principle of imperfect recollection, the relevant public may believe that these goods come from the same undertaking or 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 No 889 754 ‘FOAMASTER’. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier German trade mark No 889 754 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268) or the proof of use in relation to them.

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.

The Opposition Division

Jessica LEWIS

Claudia ATTINA

Loreto URRACA LUQUE

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.