OPPOSITION No B 2 828 021

General Motors LLC, 300 Renaissance Center, 48265-3000 Detroit, United States of America (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB - Patentanwälte Rechtsanwälte, Hollerallee 32, 28209 Bremen, Germany (professional representative)

a g a i n s t

TM Technologie - spółka z o.o., Morawica 355, 32-084 Morawica, Poland (applicant), represented by Triloka Czarnik Ozog Kancelaria Patentowa i Adwokacka sp.p., ul. Kornela Ujejskiego 12/7, 30-102 Kraków, Poland (professional representative).

On 30/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 828 021 is upheld for all the contested goods and services.

2. European Union trade mark application No 15 203 821  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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 shall 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 and services of European Union trade mark application No 15 203 821 for the word mark ‘DELCO’. The opposition is based on, inter alia, European Union trade mark registration No 8 969 313 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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

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

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 European Union trade mark registration No 8 969 313.

1. The goods and services

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

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; chemicals and adhesives used in industry being automotive care and maintenance products; adhesive cement; refrigerant gases; anti-freeze; stain repellants for fabrics; hydraulic fluids consisting of brake fluids, transmission fluids, power steering fluids and clutch fluids.

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting; industrial oils, lubricants and greases; fuels and illuminants; penetrating oils and release agents (in the nature of oils), automotive care and maintenance products.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; agricultural implements; turbines, bearings, pumps, valves, oil seals, filters, atomizers, driving belts, dynamo brushes, carburetors, cooling radiators for internal combustion engines, cooling fans, electric generators, cylinder heads, drive wheels, drive chains, dynamo belts, dynamos, ignition devices, ignition timers, injectors, silencers, fan belts, engine pistons, engine speed governors, compressors, taps being parts of motors.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; electric batteries and accumulators, radio and television apparatus, cassettes and tape recorders, sound disc players, ammeters, anti-theft warning appliances, junction boxes for lighting, electric cables and wires, circuit breakers, speedometers, electric door openers, electric coils, electric terminals and switches, water, fluid and fuel gauges, gradient indicators and meters; computers; micro chips; controllers; thermostats; ignition systems and parts.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning installations, air cooling devices, air heating apparatus, anti-dazzle devices, lamps, bulbs, reflectors, apparatus and installations for lighting, ventilation apparatus, apparatus for demisting and defrosting windows; heat exchangers, radiators, compressors.

Class 12: Vehicles; apparatus for locomotion by land, air or water; motor vehicles and parts thereof.

Class 37: Building construction; repair; installation services; maintenance, repair and servicing of motor vehicles and engines.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; design engineering and consultation services relating to motor vehicles, motor vehicle parts, motor vehicle component systems; consultation and computer services relating to motor vehicles and motor vehicle dealerships.

The contested goods and services, after the limitation requested by the applicant on 10/02/2017, are the following:

Class 9: Electric and electronic apparatus and equipment, namely power supplies, batteries, accumulators, gauges and switches and stabilisers, starters and ignition systems for electric lamps; Electric and electronic evacuation systems, alarm systems, security systems for buildings, fire prevention systems and apparatus and parts therefor, included in this class; Signalling, checking (supervision) and controlling electric and electronic apparatus; Acoustic signal transmitters; Alarms; Burglar alarms; Sound alarms; Fire alarms; Batteries for lighting; Battery jars; Choking coils (impedance); Electromagnetic coils; Coils, electric; Holders for electric coils; Chips (integrated circuits); Gauges; Light-emitting diodes (LEDs); Light (Traffic- -) apparatus [signalling devices]; Bells [warning devices]; Alarm bells, electric; Signal bells; Fluorescent screens; Theft prevention installations, electric; Regulating apparatus, electric; Measuring devices, electric; Gasometers (measuring instruments); Sockets, plugs and other contacts (electric connections); Ducts [electricity]; Electric installations for the remote control of industrial operations; Sprinkler systems for fire protection; Holders for electric coils; Encoded magnetic cards; Encoded magnetic cards; Intercommunication apparatus; Optical lanterns; Transmitters for telecommunication; Transmitters of electronic signals; Temperature indicator labels, not for medical purposes; Objectives [lenses - optics]; Printed circuits; Lens hoods; Lighting (batteries for- ); Prisms (optics); Distribution consoles (electricity); Switchboxes (electricity); Milage recorders for vehicles; Battery boxes; Junction boxes (electricity); Battery boxes; Branch boxes (electricity); Optical lenses; Electric installations for the remote control of industrial operations; Signals, luminous or mechanical; Switchboxes [electricity]; Luminous signs; Light dimmers [regulators], electric; Flashing lights (luminous signals); Distribution boards (electricity); Signalling panels, luminous or mechanical; Remote control apparatus; Optical apparatus and instruments; Plugs, sockets and other contacts (electric connections); Fire escapes; Detectors; Smoke detectors; Telerupters; Telerupters; Optical goods; Electrified rails for mounting spot lights; Road signs, luminous or mechanical; Beacons, luminous.

Class 11: Electric apparatus for lighting and parts therefor; Electric lamps, in particular light fittings, safety lamps, emergency lamps; Electric safety lighting installations; Electric lamps; Miners' lamps; Lamp shades; Lamps (Globes for —); Lamp mantles; Lamp casings; Burners for lamps; reflectors (lamp-); Lamp chimneys; Lamp glasses; Safety lamps; Aquarium lights; Electric lamps; Sockets for electric lights; Laboratory lamps; Luminous tubes for lighting; Lamps; Street lamps; Electric discharge tubes for lighting; Discharge tubes, electric, for lighting; Torches for lighting; Pocket searchlights; Pocket searchlights; Lanterns for lighting; Ceiling lights, luminous tubes for lighting; Lights and lighting; Apparatus and installations for lighting; Ceiling lights; Light bulbs; Bicycle lights; Light diffusers.

Class 37: Factory construction; Interference suppression in electrical apparatus; Office machines and equipment installation, maintenance and repair; Burglar alarm installation and repair; Fire alarm installation and repair; Building construction supervision.

Class 41: Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of workshops [training]; Arranging and conducting workshops (training); Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of conventions.

Class 42: Technical research; Research and development for others; Design of buildings; Technical engineering; Calibration (measuring); Material testing; Technical project studies; Technical project studies; Industrial design; Material testing; Graphic design (art); Industrial design.

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

The term ‘in particular, used in the applicant’s list of goods in Class 11, 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 (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term namely, used in the applicant’s list of goods in Class 9 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.

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 electric and electronic apparatus and equipment, namely power supplies, batteries, accumulators, switches and stabilisers, starters and ignition systems for electric lamps; batteries for lighting; battery jars; choking coils (impedance); electromagnetic coils; coils, electric; holders for electric coils; chips (integrated circuits); light-emitting diodes (LEDs); regulating apparatus, electric; sockets, plugs and other contacts (electric connections); ducts [electricity]; electric installations for the remote control of industrial operations; holders for electric coils; transmitters of electronic signals; printed circuits; lighting (batteries for- ); distribution consoles (electricity); switchboxes (electricity); battery boxes; junction boxes (electricity); battery boxes; branch boxes (electricity); electric installations for the remote control of industrial operations; switchboxes [electricity]; light dimmers [regulators], electric; distribution boards (electricity); plugs, sockets and other contacts (electric connections); telerupters; telerupters; electrified rails for mounting spot lights are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Therefore they are identical.

The contested electric and electronic apparatus and equipment, namely gauges; gauges; measuring devices, electric; gasometers (measuring instruments); temperature indicator labels, not for medical purposes; milage recorders for vehicles are included in, or overlap with, the broad category of the opponent’s measuring apparatus and instruments. Therefore they are identical.

The contested electric and electronic evacuation systems, alarm systems, security systems for buildings, fire prevention systems and apparatus and parts therefor, included in this class; signalling, checking (supervision) and controlling electric and electronic apparatus; alarms; burglar alarms; sound alarms; fire alarms; light (traffic- -) apparatus [signalling devices]; bells [warning devices]; alarm bells, electric; signal bells; theft prevention installations, electric; sprinkler systems for fire protection; signals, luminous or mechanical; luminous signs; flashing lights (luminous signals); signalling panels, luminous or mechanical; fire escapes; detectors; smoke detectors; road signs, luminous or mechanical; beacons, luminous are included in, or overlap with, the broad categories of the opponent’s signalling, checking and life-saving apparatus and instruments. Therefore they are identical.

Optical apparatus and instruments are identically contained in both lists of goods. Therefore they are identical.

The contested optical lanterns; objectives [lenses - optics]; lens hoods; prisms (optics); optical lenses; optical goods are included in, or overlap with, the broad category of the opponent’s optical apparatus and instruments. Therefore they are identical.

The contested fluorescent screens; remote control apparatus are included in, or overlap with, the broad categories of the opponent’s scientific, nautical, surveying apparatus and instruments. Therefore they are identical.

The contested encoded magnetic cards (listed twice) are included in the broad category of the opponent’s magnetic data carriers. Therefore they are identical.

The contested acoustic signal transmitters; intercommunication apparatus; transmitters for telecommunication are included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images. Therefore they are identical.

Contested goods in Class 11

Apparatus and installations for lighting are identically contained in both lists of goods. Therefore they are identical.

The contested electric apparatus for lighting and parts therefor; electric lamps, in particular light fittings, safety lamps, emergency lamps; electric safety lighting installations; electric lamps; miners' lamps; lamp shades; lamps (globes for -); lamp mantles; lamp casings; burners for lamps; reflectors (lamp-); lamp chimneys; lamp glasses; safety lamps; aquarium lights; electric lamps; sockets for electric lights; laboratory lamps; luminous tubes for lighting; lamps; street lamps; electric discharge tubes for lighting; discharge tubes, electric, for lighting; torches for lighting; pocket searchlights; pocket searchlights; lanterns for lighting; ceiling lights, luminous tubes for lighting; lights and lighting; ceiling lights; light bulbs; bicycle lights; light diffusers are included in the broad category of the opponent’s apparatus and installation for lighting. Therefore they are identical.

Contested services in Class 37

The contested factory construction; building construction supervision are included in the broad category of the opponent’s building construction. Therefore they are identical.

The opponent’s services in Class 37 cover repair and installation services.

According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), these terms in Class 37 lack the clarity and precision to specify the scope of protection that they give, as it simply states that these are repair, installation and maintenance services, without indicating their object. As the goods to be repaired, maintained or installed may have different characteristics, the services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors.

Therefore, when comparing the opponent’s repair to the contested interference suppression in electrical apparatus; office machines and equipment maintenance and repair; burglar alarm repair; fire alarm repair, the nature can be considered the same, the purpose is also the same in the broadest sense of the word, i.e. that they “mend something broken” and to that extent these services are considered similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its services, it cannot be assumed that they coincide in other criteria.

Furthermore, when comparing the opponent’s installation services to the contested office machines and equipment installation; burglar alarm installation; fire alarm installation, the nature can be considered the same, the purpose is also the same in the broadest sense of the word ‘installation’ and to that extent these services are considered similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its services, it cannot be assumed that they coincide in other criteria.

Contested services in Class 41

The contested arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of workshops [training]; arranging and conducting workshops (training); arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of conventions are all services of organising gatherings and formal discourse on serious subjects often related to science and scientific research. They are considered similar to the opponent’s scientific services and research, as they have the same purpose (to broaden the knowledge on a specific subject). Moreover, they usually coincide in provider and relevant public.

Contested services in Class 42

The contested technical research; research and development for others; design of buildings; technical engineering; calibration (measuring); technical project studies; technical project studies; industrial design; graphic design (art); industrial design are included in the broad category of the opponent’s scientific and technological services and research and design relating thereto. Therefore they are identical.

The contested material testing (listed twice) is included in the broad category of the opponent’s industrial analysis and research services. Therefore they are identical.

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 and services found to be identical or similar to various degrees are directed at specialised public, business customers with specific professional knowledge as well as at the general public (for example batteries, accumulators, apparatus for lighting, burglar alarms installation and repair, etc.)

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

3. The signs

	DELCO
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.

When assessing the similarity of the signs, an analysis of whether the coinciding or differing components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding or differing components have a lesser or greater capacity to indicate commercial origin. Similarities between signs are higher where the coincidences reside in distinctive elements and the differences are attributed to the non-distinctive elements.

The common element ‘DELCO’ has no meaning for the English-speaking public and has therefore a normal degree of distinctiveness. Additionally, in relation to the relevant goods and services, the differing element of the earlier sign, ‘AC’, may be understood as an abbreviation for ‘alternating current’ by this part of the public. Bearing in mind that the relevant goods are powered by electricity and relevant services may relate to electricity, this element may be perceived as non-distinctive or weak.

Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for which the common element ‘DELCO’ has a normal degree of distinctiveness and the differing element of the earlier sign, ‘AC’, will be perceived as weak or non-distinctive.

The earlier mark is a black and white figurative mark composed of the underlined, slightly stylised verbal element ‘ACDelco’. The letters ‘A’ and ‘D’ have triangular incisions on their top left side.

The applicant claims that the earlier right will be perceived by the relevant public as an acronym ‘A-C-D’ and the element ‘elco’. However, the Opposition Division is of the opinion that it will be perceived by the English-speaking public, or at least by a significant part of it, as a combination of two elements ‘AC’ and ‘Delco’.

Firstly, the Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). The abbreviation ‘AC’ for ‘alternating current’ is commonly known by the English-speaking public (see: https://dictionary.cambridge.org/dictionary/english/ac?q=AC), and even more by the consumers of the relevant goods and services, unlike the acronym ‘ACD’. Therefore, the whole element ‘ACDelco’ is more likely to be read as ‘AC’ and ‘Delco’.

Secondly, according to English pronunciation rules, it is rather impossible to read ‘AC’ as a word, therefore these letters will be spelled separately, whereas starting from the letter ‘D’ the earlier mark creates an easily pronounceable word ‘Delco’. The correct use of upper and lower case letters is an additional visual cue for this interpretation.

Thirdly, the two triangular notches on the first letters of each element may also facilitate the reading of the earlier sign as ‘AC’ and ‘Delco’.

The verbal element of the earlier sign, as a whole, has no meaning for the relevant public and is therefore normally distinctive. However, as mentioned above, its initial part ‘AC’ may be seen as non-distinctive or weak element, whereas the second part, ‘Delco’, has a normal degree of distinctiveness.

The earlier mark has no elements that could be considered more dominant (visually eye-catching) than other elements. Contrary to the argument of the applicant, the standard use of upper and lower case letters does not divide the earlier mark in two elements of different visual importance. The letters ‘elco’ are only slightly smaller than the preceding letters ‘ACD’.

The judgement quoted by the applicant in this respect, 12/09/2012, T-295/11, duschy, EU:T:2012:420, § 66-67, relates to a different factual situation, in which a figurative mark consisting of stylised words was compared to a mark consisting of a stylised word below a significantly larger device of a whale . This judgement has therefore no bearing on the present case. The stylisation of the letters ‘ACDelco’ is not very elaborated or fanciful; it is merely a decoration, which should not be perceived as a distinctive element on its own.

The contested sign is a word mark composed of one element, ‘DELCO’. As mentioned above in case of the earlier mark, this element has no meaning for the English-speaking public and is, therefore, normally distinctive.

Visually, the signs coincide in that the entire contested sign ‘DELCO’ is included in the earlier mark ‘ACDelco’. The signs differ in the beginning letters of the earlier mark, ‘AC’, and the stylisation of characters of whole element ‘ACDelco’ in the earlier sign. These elements have limited distinctiveness, for the reasons explained above, and consequently a limited impact on the perception of the sign by the relevant public.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the element ‛DELCO’, which also forms the entire contested sign. The pronunciation differs in the sound of the letters ‘AC’ of the earlier mark, which have no counterparts in the contested sign. This element has nevertheless a limited impact on the perception of the sign by the relevant public.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs, as a whole, has a meaning for the public in the relevant territory. Although the element ‘AC’ in the earlier mark will evoke a concept, as indicated above, it is not sufficient to establish any conceptual difference, as this element is non-distinctive/weak and cannot indicate the commercial origin. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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 and services 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 an element with a limited distinctiveness in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical and partly similar to various degrees. The degree of attention of the relevant public varies from average to high. The signs are aurally and visually highly similar, and the conceptual aspect does not influence the assessment of the similarity. The distinctiveness of the earlier mark is assumed to be average.

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).

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

Both signs contain the same distinctive verbal element ‘DELCO’ and differ in the element ‘AC’ and the stylisation of the earlier mark, which have a limited impact. It is highly conceivable that the relevant consumer will perceive the contested mark as a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

The applicant quoted also the judgement 27/02/2008, T-325/04, Worldlink, EU:T:2008:51, § 82, regarding the importance of the beginning of the signs. It is undoubtedly true that an impact of an element may be slightly more pronounced on account of its position at the beginning of a mark, however, it is not a general rule and any difference at the beginnings of the signs does not automatically preclude the existence of likelihood of confusion.

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

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 8 969 313. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same, even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 8 969 313 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services 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).

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

Anna BAKALARZ

Anna ZIOLKOWSKA

Begoña URIARTE VALIENTE

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.