OPPOSITION No B 2 741 422

Kabushiki Kaisha Taito, 6-27-30 Shinjuku, Shinjuku-ku, 160-8447 Tokyo, Japan (opponent), represented by EIP, Fairfax House, 15 Fulwood Place, London, WC1V 6HU, United Kingdom (professional representative)

a g a i n s t

Franckh-Kosmos-Verlags-GmbH & Co. KG, Pfizerstr 5-7, 70184 Stuttgart, Germany (applicant), represented by Dr. Hahn & Kollegen, Zeppelinstr. 128, 70193 Stuttgart, Germany (professional representative).

On 16/07/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 741 422 is partially upheld, namely for the following contested goods:

Class 9: Games software; implementation of board games in the form of game apps, tutorial apps for board games, apps with additional features for board games; recorded mechanical, magnetic and electronic carriers for recording, creating, transmitting and reproducing sound, images, text and software.

Class 28: Games, dice, manipulative puzzles, card games, toys adapted for educational purposes, electric games, board games; toy figurines, card games, toys; toy cars; construction kits for toys.

2. European Union trade mark application No 15 197 114 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 197 114, . The opposition is based on European Union trade mark registration No 5 035 894, . 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 European Union trade mark registration No 5 035 894, .

The date of filing of the contested application is 08/03/2016. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 08/03/2011 to 07/03/2016 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 and services on which the opposition is based, namely the following:

Class 9: Coin operated game machines, coin operated computer game machines, coin operated card game machines, amusement apparatus adapted for use with television receiver only, recorded computer game programs, downloadable computer software, downloadable computer game programs for use with coin operated game machines, downloadable computer game programs for home use game machines, downloadable computer game programs for home use game machines, downloadable roll playing game programs for home use game machines, computer game programs for on line games, game programs for home use game machines, for personal computers for mobile phones and for coin operated game machines, game programs for game websites for online games.

Class 41: Providing amusement arcade services, amusements, entertainment, entertainment information, providing downloadable computer game program through internet, providing game services on line, organization of game competitions, game score ranking information, providing downloadable animations or pictures, providing downloadable music or vocal information, rental of amusement park machines, rental of coin operated game machines, rental of video game machines for arcade use.

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 25/04/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 30/06/2017 to submit evidence of use of the earlier trade mark. At the request of the opponent, this time limit was extended until 31/08/2017. Furthermore, at the joint request of both parties, this time limit was extended by another two months, that is, until 31/10/2017. On 31/10/2018, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• An affidavit dated 24/08/2017 and signed by Mr Yuji Watanabe, manager of Kabushiki Kaisha Taito. The affidavit provides background information regarding the company and the earlier trade mark, and a brief description of the documents submitted in seven exhibits as evidence of use, including a list of sites targeting EU Member States from which the game ‘EXIT’ is available, with references to the languages of those sites.

• Printouts from the company’s website www.taito.co.jp, dated 2017, containing information regarding the company’s corporate profile: the company’s name, business locations and activities, and an outline of its history (marked as Exhibit 1).

• An extract from Wikipedia, dated 27/10/2017, containing a detailed description of the game marketed under the brand ‘EXIT’ and its image, as well as the information that it was released in Europe on 31/03/2006 (marked as Exhibit 4).

• An Excel spreadsheet showing the number of downloads and sales of the game ‘EXIT’ in the EU Member States during the relevant period (marked as Exhibit 5).

• Advertisements and users’ reviews:

• a printout in English from the website www.metactirtic.com, dated 27/10/2017, containing reviews of the game ‘EXIT’ for the PSP and Xbox 360 platforms, with reference to the release dates 14/02/2006 and 24/10/2007 and a depiction of the mark (marked as Exhibit 2);

• an undated extract in English from an issue of Square Enix News containing an advertisement for the game ‘EXIT DS™’, with reference to its release date in October 2008 (marked as Exhibit 3);

• a printout in English from the website www.mobygames, dated 17/08/2017, containing information and reviews regarding the game ‘EXIT’, with reference to its release date, 15/12/2005, and listing, inter alia, distributors in Germany, France and Finland (marked as Exhibit 4);

• a printout in English from the website www.gamefaqs.com, dated 27/10/2017, containing a thorough review of the game ‘EXIT’ posted on 08/08/2011 and mentioning that sequels to ‘EXIT’ on the PSP platform were released only in Japan and Europe (marked as Exhibit 6);

• a printout in English from the website www.gamerselixir.com, dated 27/10/2017, containing an article about the game ‘EXIT’ published on 01/07/2015 (marked as Exhibit 6);

• a printout in English from the website www.videogamer.com, dated 27/10/2017, containing a review of the game ‘EXIT’ published on 16/05/2016, with reference to its release date, 30/03/2006 (marked as Exhibit 6);

• a printout in English from the website spong.com, dated 27/10/2017, containing a summary of the game ‘EXIT’, mentioning its release date in the UK, 31/03/2006, and including a depiction of the mark (marked as Exhibit 6);

• a printout in English from the website marketplace.xbox.com, dated 22/08/2017, showing that the game ‘EXIT’ is available for purchase in various EU Member States in their languages, with references to release dates and prices (in euros) (marked as Exhibit 7).

Assessment of the evidence

The evidence concerning proof of use could include the following documents: invoices, price lists, affidavits, catalogues, surveys, turnover and sales figures, press cuttings, samples of products/packaging, advertisements, offers made to potential clients and other documents confirming that the mark has been genuinely used on the market. The opponent submitted only some of the aforementioned documents, such as an affidavit, users’ reviews, advertisements and financial spreadsheets. Some of the evidence includes images of the earlier trade mark. It must be emphasised that the final outcome depends on an overall assessment of the evidence in the particular case.

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.

Place of use

The various printouts making reference to the European Union (or Member States) and the list of links to sites in various EU languages (e.g. Dutch, Czech, Danish, Spanish, Greek, French, Italian, Hungarian, German, Portuguese, Finnish, Swedish and English) where the game has been made available show that the place of use is the European Union. This can be inferred from the abovementioned list of links to websites in EU languages from which users can obtain the game and information about it (Exhibit 7), the references to distributors in Germany, France and Finland (Exhibit 4), the languages used (e.g. Exhibit 7) and the currency used, that is, euros (Exhibit 7). Therefore, the evidence relates to the relevant territory.

Time of use

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

In the present case, the evidence referring to use outside the relevant period, for example the release dates of the game and its sequels, confirms use of the opponent’s mark within the relevant period. This is because the indications of the release dates in particular parts of the relevant territory and the dates of the evidence submitted indicate a certain continuity of use during the relevant period.

Extent of use

The documents filed, in particular the Excel spreadsheets showing the number of downloads and sales figures within the relevant period (Exhibit 5), although not particularly exhaustive, still provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

Nature of use

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

The evidence listed above demonstrates that the earlier mark was used in such a way as to establish a clear link between the goods and services and the undertaking responsible for their marketing. Therefore, the Opposition Division considers that the evidence shows use of the sign as a trade mark.

The applicant argues that the earlier trade mark has been used with significant alterations of its figurative elements. As can be deduced from the evidence, the mark in question has been used essentially as or .

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.

In the present case, the earlier mark, , is a composite mark composed of word and figurative elements. Changes to certain figurative elements do not normally affect the distinctive character of a mark. The figure of a running man is present in almost all depictions of the earlier mark. Moreover, the background colours and the stylisation of the word element, which is the element by which the users are most likely to identify the mark, are the same.

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

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods and services 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 for the following goods and services:

Class 9: Computer game programs for online games, for personal computers, for mobile phones, game programs for game websites for online games.

Class 41: Providing downloadable computer game program through internet, providing game services online, providing downloadable animations or pictures.

Therefore, the Opposition Division will only consider the abovementioned goods and services 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.

1. The goods and services

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

Class 9: Computer game programs for online games, for personal computers, for mobile phones, game programs for game websites for online games.

Class 41: Providing downloadable computer game program through internet, providing game services online, providing downloadable animations or pictures.

The contested goods, after a limitation of 06/09/2016 that resulted in the deletion of all the applicant’s services in Class 41, are the following:

Class 9: Photographic, cinematographic, optical, weighing, measuring, signalling, checking and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; recorded and blank mechanical, magnetic and electronic carriers for recording, creating, transmitting and reproducing sound, images, text and software; games software; implementation of board games in the form of game apps, tutorial apps for board games, apps with additional features for board games.

Class 16: Paper, namely paper packaging, pockets of paper, pads [stationery], paper boxes, paper emblems; cardboard, namely boxes of cardboard, packaging of cardboard, collapsible cardboard boxes, figurines made from cardboard, unprinted and printed (including colour printed) cardboard; printed matter, books, writing or drawing books, calendars, posters, newspapers, periodicals, magazine; photographs; stationery, artists’ materials, paint brushes; instructional and teaching material (except apparatus); printers’ type printing blocks.

Class 28: Games, dice, manipulative puzzles, card games, toys adapted for educational purposes, electric games, board games; toy figurines, card games, toys; gymnastic and sporting articles, not included in other classes; toy cars; construction kits for toys.

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

As a preliminary remark, 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 9

The contested games software includes, as a broader category, the opponent’s computer game programs for online games. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

An app is a type of software that allows users to perform specific tasks such as playing games on mobile devices (e.g. smartphones, tablets). Consequently, the contested implementation of board games in the form of game apps; apps with additional features for board games overlap with the opponent’s computer game programs for online games. Therefore, they are identical.

The contested tutorial apps for board games are highly similar to the opponent’s computer game programs for mobile phones. Although different in nature, these goods serve the same purpose, that is, amusement. They can have the same method of use and target the same public. Moreover, they can also have the same producers and distribution channels.

The contested recorded mechanical, magnetic and electronic carriers for recording, creating, transmitting and reproducing sound, images, text and software are included in or overlap with the opponent’s game programs for game websites for online games, as these goods are considered recorded content.

The rest of the contested goods in Class 9 are various types of photographic, cinematographic, optical, weighing, measuring, signalling, checking and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; blank carriers for recording, creating, transmitting and reproducing sound, images, text and software. They are considered dissimilar to all the opponent’s goods and services, as they differ in their natures, purposes and methods of use. Goods are tangible, whereas services are intangible. They are neither complementary nor in competition. They do not have the same distribution channels. They do not target the same end users and they are usually produced/provided by different companies.

Contested goods in Class 16

The same conclusion applies to the contested goods in Class 16. These goods are dissimilar to all the opponent’s goods and services because they have nothing in common. They are different in nature and purpose. Goods are tangible, whereas services are intangible. They do not have the same method of use. They are neither complementary nor in competition. They do not have the same distribution channels and do not target the same end users. Furthermore, they are produced/provided by different companies.

Contested goods in Class 28

The contested games, dice, manipulative puzzles, card games, toys adapted for educational purposes, electric games, board games; toy figurines, card games, toys; toy cars; construction kits for toys are at least similar to a low degree to the opponent’s computer game programs for personal computers, for mobile phones. These goods have the same purpose (amusement, education). They may target the same public, have the same producers and be distributed through the same channels.

The rest of the contested goods in Class 28, namely gymnastic and sporting articles, not included in other classes, are dissimilar to the opponent’s goods in Classes 9 and 41. These goods and services have completely different natures and intended purposes. Goods are tangible, whereas services are intangible. Furthermore, they are neither in competition with each other nor complementary. In addition, the goods and services under comparison do not have the same producers/providers or distribution channels.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar (to various degrees) are directed at the public at large. The degree of attention is considered average.

3. The signs

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.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the relevant public, to take into consideration the potential impact of the meaning and the degree of distinctiveness of the words ‘DAS SPIEL’ in the contested mark in relation to the contested goods for this part of the public.

The earlier sign is a figurative mark composed of the word ‘EXIT’, written in standard white and red upper case letters against a brown and yellow background, and a figurative element of a man running through an open doorway.

The contested sign is a figurative mark consisting of the words ‘EXIT’ and ‘DAS SPIEL’, depicted in black upper case letters set against a grey rectangular background. Due to its size and central position, the word ‘EXIT’ is the dominant element in the contested sign. The verbal element ‘DAS SPIEL’ appears underneath in a much smaller font.

The word ‘EXIT’, present identically in both signs, will be understood by the German-speaking public as a basic English word referring to a way out of a building, room or passenger vehicle or an act of leaving a place. Contrary to the applicant’s arguments, this word element should be assessed in relation to the relevant goods and services, which cover a wide range of different products, and not in relation to a particular computer game. Moreover, the element ‘EXIT’ does not refer to any inherent characteristics of the relevant goods and services, does not describe or relate to them in any specific way and is, therefore, distinctive.

The verbal element ‘DAS SPIEL’ in the contested sign is a German expression consisting of the definite article ‘DAS’ and the substantive ‘SPIEL’, which will be understood by the relevant public as referring to a form of competitive activity carried out according to certain set rules or an activity that one engages in for amusement. Considering the nature and purpose of the goods found to be identical or similar (to various degrees), this element is descriptive of their characteristics and is, therefore, non-distinctive.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The element ‘EXIT’ in the contested sign, due to its size and position, is the dominant element as it is the most eye-catching.

The figurative elements and the graphical depictions of both signs should be considered of secondary importance, as these aspects serve a mainly decorative purpose or, in the earlier sign, underline the meaning of the word ‘EXIT’. Moreover, where a trade mark is composed of verbal and figurative elements, the principle has been established that the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is justified by the fact that consumers will more easily retain verbal elements in their memory, and they will refer to the goods in question by their name, rather than by describing the figurative elements of the trade mark.

Visually, the signs coincide in the word ‘EXIT’. They differ in the additional words ‘DAS SPIEL’ of the contested sign, the figurative element of a running man in the earlier mark and their graphical depictions. However, considering that the additional word elements in the contested sign are non-distinctive and the figurative aspects play a secondary role, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛EXIT’, present identically in both signs. The pronunciation differs in the sound of the additional words ‛DAS SPIEL’ of the contested sign, which have no counterparts in the earlier mark. However, as stated above, the additional elements of the contested sign are non-distinctive. Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs coincide in the meaning of the distinctive word ‘EXIT’, which they have in common. In addition, the concept of leaving is reinforced by the figurative element of the running man in the earlier mark. On the other hand, the signs differ in the concept of a game evoked by the additional word elements in the contested sign. However, the differing word elements are not able to differentiate the sign conceptually, as they are considered non-distinctive. Therefore, the signs are also conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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).

Such a global assessment of 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 at issue are partly identical, partly similar (to various degrees) and partly dissimilar. The relevant public’s degree of attention is average and the earlier mark enjoys an average degree of distinctiveness. The signs are aurally and conceptually highly similar and visually similar to an average degree on account of the coinciding word ‘EXIT’, which plays a distinctive and independent role in both signs. The differences between the signs result mainly from the additional word elements in the contested sign, which are considered non-distinctive, or the figurative aspects of the marks, which have a reduced impact on the consumer, who is more likely to focus on the verbal elements of the marks (especially the distinctive ones), as those will be used to identify the signs.

Account should also 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). Therefore, in view of all the relevant factors in the present case and taking into account the principle of interdependence, it may be concluded that, even if average consumers are capable of detecting certain differences between the two conflicting signs, the likelihood that they might confuse the signs with each other is very real.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 5 035 894. 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 found to be identical or similar (to various degrees) to those of the earlier trade mark.

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

COSTS

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

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

The Opposition Division

Michal KRUK

Arkadiusz GORNY

Anna BAKALARZ

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.