OPPOSITION No B 2 757 253

Vue Entertainment Holdings (UK) Limited, 10 Chiswick Park, Chiswick High Road, London W4 5XS, United Kingdom (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, City of London, EC4A 1JP, United Kingdom (professional representative)

a g a i n s t

Telefónica Digital España S.L.U., Calle Gran Vía 28, 28013 Madrid, Spain (applicant), represented by Intecser Consultoría, Calle Goya 127, 28009 Madrid, Spain (professional representative).

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

DECISION:

1. Opposition No B 2 757 253 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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 services of European Union trade mark application No 15 323 918 . The opposition is based on European Union trade mark application No 13 661 608 ‘EXTREME’, European Union trade mark registration No 9 004 144 , European Union trade mark registration No 9 004 078 ‘VUE EXTREME, United Kingdom trade mark registration No 3 065 502 ‘EXTREME’ and European Union trade mark registration No 9 004 128 ‘VUE XTREME’. The opponent invoked Article 8(1)(b) and Article 8(5) 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.

Nevertheless, as already notified on 17/10/2017, the request for proof of use was submitted by the applicant together with the submission instead of using a separate document as required by Article 10(1) EUTMDR.

Therefore, the request for proof of use is inadmissible pursuant to Article 10(1) EUTMDR.

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 application No 13 661 608 ‘EXTREME’.

1. The services

After limitation, the services on which the opposition is based are the following:

Class 41: Management and leasing of cinemas; ticket reservation services relating to entertainment; information, advisory and consultancy services, all relating to the aforesaid services; none of the aforesaid in relation to the organisation and provision of live circus shows, live stunt shows or displays, or live extreme sports shows, and information, advisory and consultancy services relating thereto (however the provision of any screening services relating thereto are not excluded).

After limitation, the contested services are the following:

Class 38: Telecommunication services; Streaming of data; Transmission of digital information; Electronic transmission of data and documents via computer terminals and electronic devices; Telecommunication of information (including web pages); Webcasting services; Provision of wireless application protocol services including those utilising a secure communications channel; Broadband services; Provision of broadband telecommunications access; Communications consisting of providing multiple user access to a global computer data network (Internet/Intranet) for the transmission and dissemination of information, images or sound of all kinds; Interactive broadcasting and communications services; Routing and link-up for telecommunications; Communications by fiber optic networks; Communications by computer terminals; Computer supported transmission of messages and images; Satellite transmission, information about telecommunication; Telephone services; Mobile telecommunications services; Providing access to an Internet portal; Mobile telecommunication network services; Fixed line telecommunication services; Transmission of messages by telephone and facsimile; Videoconferencing; Recording, filtering and barring of calls; Chatroom services and operation of chatrooms; Forums [chat rooms] for social networking; Providing access to digital music web sites on the internet; Providing access to weblogs; Provision of electronic communication links; Electronic advertising (telecommunications); Electronic messaging; Message sending and message transmittal services; Providing access to commercial transactions via electronic communications networks; Broadcasting and transmission of information via networks or the Internet; Providing telecommunication connections to the Internet or data bases; Broadcasting services; Services relating to the broadcasting of radio and television programmes; Subscription television broadcasting; Broadcasting services relating to Internet protocol TV; Provision of access to Internet protocol TV; Internet access services; Provision of wireless application protocol services including those utilising a secure communications channel; Email and text messaging services; Information services provided by means of telecommunication networks relating to telecommunications; Services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; Operating of telecommunications equipment; Rental of telecommunication facilities; Providing telecommunication channels for teleshopping services; Providing communication services through the use of phone cards or debit cards; Streaming of data; Transmission of interactive entertainment software; Wireless transfer of data via wireless application protocols; Provision of wireless application protocol services including those utilising a secure communications channel; Data transmission; Data transmission and data broadcasting; Electronic data interchange services; International data transmission; International data transmission; Electronic transmission of data; Electronic transmission of data; Digital transmission of data; Transmission of data by teletypewriter; Telematic [data communication] services; Transfer of data by telecommunications; Transmission of data by radiopaging; Transmission of data by microwave; Transfer of data by telephone; Data transmission for others; Wireless electronic transmission of data; Transfer of information by radio; Transfer of information by radio; Data transmission; Data transmission; Data transmission; Transmission of data by telefacsimile; Transmission of data by cable; Data broadcasting services; Data broadcasting services; Data communication services; Transmission of data via satellite; Transmission of data via the Internet; Data transmission by electronic mail; Data streaming; Electronic data interchange services; Provision of electronic data links; Computer data transmission services; Providing access to databases; Transmission of data by audio-visual apparatus; Transmission of data, messages and information; Wireless transfer of data via the Internet; Transmission of data via ISDN lines; Digital transmission of data via the Internet; Electronic data interchange services; Providing access to databases; Data bank interconnection services; Music broadcasting; Music broadcasting; Music broadcasting; Cable television broadcasting; Television broadcasting; Communications by television for meeting; Cable television broadcasting; Streaming of television over the Internet; Broadcasting of financial information by television; Digital communications services; Transmission of digital information; Wireless digital messaging services; Delivery of digital music by telecommunications; Digital network telecommunications services; Video transmission via digital networks; Wireless transfer of data via digital mobile telephony; Delivery of digital audio and/or video by telecommunications; Automatic transfer of digital data using telecommunications channels; Providing access to digital music web sites on the internet; Video broadcasting; Video telephone services; Video communication services; Inter-active video text services; Video narrowcasting services; Transmission of sound, video and information; Video-on-demand transmission; Teleconferencing and video conferencing services; Streaming of video material on the internet; Interactive transmission of video over digital networks; Telecommunication gateway services; Telecommunication gateway services; Data transmission; Message sending; Satellite transmission; Computer transmission services; Transmission of digital information; Digital transmission services; Transmission of short messages; Electronic instructions transmission services; Transmission of encrypted communications; Telematic sending of information; none of the aforementioned being, or related to, motion pictures, motion picture screens or projectors, film production apparatus or software, cinemas, cinema services, cinema advertising, entertainment booking services, broadcasting of motion picture films.

Class 41: Education services and entertainment; Entertainment; Sporting and cultural activities; Arranging sports and cultural activities; Provision of training courses; Provision of training courses for young people in preparation for careers; Training courses relating to preparation for employment; Organisation of training programmes for young people; Provision of training courses for young people in preparation for careers; Vocational education; Providing courses of instruction for young people; Exhibitions (organization of -) for cultural or educational purposes; Interactive entertainment servies; Electronic games services provided by means of any communications network; Entertainment services provided by means of telecommunication networks; Information services relating to education, training, entertainment, sporting and cultural activities provided by means of telecommunication networks; Providing entertainment and recreation facilities; Production of talent shows; Organisation of shows, presentation and production of live performances, variety shows and concerts, music-halls, theatre productions, balls, music composition, orchestras; Providing entertainment clubs; Rental of music venues and stadiums; Reservation of tickets for shows, Entertainer services; Sporting and cultural activities; Organisation of sports competitions; Entertainment, education and recreation information; Education, entertainment and recreation in holiday clubs and camps; Health club services; Arranging of contests; Arranging and conducting of colloquiums, conferences, congresses, seminars and symposiums; Organization of exhibitions for cultural or educational purposes; Party planning; Publication of books, publication of electronic books and journals on-line, publication of texts, other than publicity texts, scriptwriting services, lending libraries; Production of radio and television programs; Television production and television programming services provided by means of internet protocol technology; Provision of entertainment by means of television and internet protocol television; Recording studios, videotaping and videotape editing, rental of sound recordings, rental of audio equipment, photographic reporting; Provision of instruction relating to computer programming; Provision of instruction relating to computer programming; Training in the use of data processing programs; Tuition in data processing; Electronic data processing training; Production of music; Music publishing services; Recording of music; Music publishing and music recording services; Musical entertainment; Music library services; Musical education services; Musical events (Arranging of -); Television production; Television programming [scheduling]; Television studio services; Television program syndication; Presentation of television programmes; Editing of television programmes; Satellite television series; Production of television films; Satellite television shows; Production of sporting events for television; Providing digital music from the internet; Providing on-line music, not downloadable; Leasing of interactive and digital compression television equipment; Providing digital music from mp3 internet web sites; Providing on-line music, not downloadable; Digital video, audio and multimedia entertainment publishing services; Career counseling [education]; Education in the field of computing; Interactive entertainment services; Arranging of visual entertainment; Entertainment by means of telephone; Production of audio entertainment; Video game entertainment services; Play schemes [entertainment/education]; Entertainment in the nature of mobile phone television; Video editing; Rental of video games; Production of training videos; Production of musical videos; Video equipment hire; Video production services; Videotaping; Audio and video production, and photography; none of the aforementioned being, or related to, motion pictures, motion picture screens or projectors, film production apparatus or software, cinemas, cinema services, cinema advertising, entertainment booking services, broadcasting of motion picture films.

Class 42: Software design and development; Programming of educational software; Design of computer software for commercial analysis and preparation of reports; Software (Updating of computer -); Rental of application software; Rental and maintenance of computer software; Inspection of motor vehicles [for roadworthiness]; Providing of meteorological information via mobile telephone; Computers services, Namely, Creation of indexes and databases organising information content supplied via a global computer network according to user preference; Providing temporary use of online non-downloadable software to enable users to program audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programmes; Scientific and technological services and research and design relating thereto; industry analysis and research services; Hosting computer sites [web sited]; Development of software solutions for internet providers and internet users; Providing temporary use of nondownloadable computer software for shipment processing over computer networks, intranets and the internet; Computer programming for the internet; Computer rental; Rental of web servers; Computer system analysis; Computer virus protection services; Information technology [IT] consultancy; Web site design consultancy; Consultancy in the design and development of computer hardware; Computer software consultancy; Monitoring of computer systems by remote access; Quality control; Conversion of data or documents from physical to electronic media; Data conversion of computer programs and data [not physical conversion]; Creating and maintaining web sites for others; Digitisation of documents (scanning); Computer system design; Industrial design; Duplicating computer programs; Technical project studies; Server hosting; Installation of software; Scientific research; Technical research; Research and development for others; Computer programming; Provision of search engines for the Internet; Recovery of computer data; Cloud seeding, software as a service (SaaS); Configuration of computer software; Rental of software; Updating of computer software; Software engineering; Computer software design; Computer software design; Software development; Software creation; Installation of software; Software creation; Maintenance of software; Software creation; Repair of computer software; Computer software research; Upgrading of computer software; Computer software consultancy; Computer software consultancy; Testing of computer software; Rental of software; Writing of computer programs; Updating of computer programs; Computer software design; Programming of educational software; Maintenance of software; Writing of computer software; Repair of computer software; Updating of computer programs; Updating of computer programs; Maintenance and updating of computer software; Configuration of computer software; Software as a service [SaaS]; Copying of computer software; Computer software design; Software design and development; Computer software development for others; Updating and upgrading of computer software; Computer software design and updating; Development of interactive multimedia software; Updating of computer software; Programming of telecommunications software; Consultancy in the field of security software; Development of virtual reality software; Advisory services relating to computer programming; Advisory services relating to computer programming; Quality control relating to computer software; Configuration of computer networks by software; Creation of computer programmes for data processing; Installation and maintenance of computer programs; Writing of computer programs for medical applications; Writing of computer programs for biotechnological applications; Rental of application software; Application service provider (ASP); Development of computer software application solutions; Providing temporary use of web-based applications; Advisory services relating to planning applications; Application service provider services; Hosting of computerized data, files, applications and information; Consulting in the field of cloud computing networks and applications; Application service provider (ASP); Advice and consultancy in relation to computer networking applications; Providing temporary use of non-downloadable software applications accessible via a web site; Providing temporary use of online, non-downloadable computer software for use in broadcast monitoring applications; Computer programming services for data warehousing; Data mining; Data warehousing; Recovery of computer data; Recovery of computer data; Electronic data storage; Off-site data backup; Rental of data carriers; Data recovery services; Recovery of computer data; Recovery of computer data; Development of data programs; Design of computer databases; Design of computer databases; Maintenance of data bases; Digital compression of computer data; Development of data bases; Data encryption services; Data security services; Data migration services; Data decryption services; Hosting of databases; Data security services [firewalls]; Data conversion of electronic information; Design of computer databases; Data warehousing; Off-site data backup; Data analysis (computing); Programming of data processing equipment; Leasing of data processing systems; Creation of computer programmes for data processing; Compilation of data-processing programs; Updating of software data bases; Preparation of data processing programmes; Compression of data for electronic storage; Data duplication and conversion services, data coding services; Electronic data back-up; Encryption of digital music; Encryption of digital music; Digitization of documents; Services for the digitalization of maps; Digitization of documents [scanning]; Electronic storage of digital music; Electronic storage of digital images; Electronic storage of digital photographs; Digitalization of sound and images; Cross-platform conversion of digital content into other forms of digital content; Cross-platform conversion of digital content into other forms of digital content; Preparation of maps in digital form; Conversion of texts to digital format; Hosting of digital content on the internet; Services for the digitalization of charts; Rendering of computer graphics (digital imaging services); Development of software for digital signal processing; Design of hardware for digital signal processing; Development of hardware for digital signal processing; Development and design of digital sound and image carriers; Hosting of digital content, namely, on-line journals and blogs; Hosting a website for the electronic storage of digital photographs and videos; Computer programming of video games; Electronic storage of videos; Telecommunications engineering; Testing of telecommunication signals; Analysis of telecommunication signals; Cloud computing; Cloud computing; Programming of operating software for accessing and using a cloud computing network; Rental of operating software for accessing and using a cloud computing network; Design and development of operating software for accessing and using a cloud computing network; Providing temporary use of on-line non-downloadable operating software for accessing and using a cloud computing network; none of the aforementioned being, or related to, motion pictures, motion picture screens or projectors, film production apparatus or software, cinemas, cinema services, cinema advertising, entertainment booking services, broadcasting of motion picture films.

Some of the contested services are identical to services on which the opposition is based such as for example the contested reservation of tickets for shows that are included in the broad category of the opponent’s ticket reservation services relating to entertainment. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

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 services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

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

3. The signs

EXTREME
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 earlier mark is a word mark consisting of the word ‘EXTREME’. In the case of word marks, it is the word as such that is protected and not its written form. Therefore, it is irrelevant whether the contested sign is represented in upper characters.

The word ‘EXTREME’ in the earlier mark, will be understood as outermost, farthest from the centre (of any area); endmost, situated at either of the ends (ii) the utmost imaginable or tolerable degree of anything; a very high degree (iii) the utmost point or verge not only by the English-speaking part of the public but also in other European languages as well, since one of these words, or a very similar equivalent of them exist, such as in Spanish (Extremo), French (Extreme), Italian (Estremo), Dutch (Extreem), Portuguese (Extreme), Romanian (Extreme), Bulgarian (Eкстремни), Lithuanian (Ekstremalus), Polish (Ekstremalny). Furthermore, the word ‘EXTREME’ is part of the basic English vocabulary since it belongs to the kind of common, laudatory adjectives which are used generally in trade to enhance certain characteristics of the goods or services (R1512/2009-4 - EXTREM NUTRITION WEST-GERMANY / EXTREME). Therefore, the degree of distinctiveness of this word is low.

The contested sign is a figurative mark consisting of a red square in the lower part of which the verbal element ‘Xtreamr’ is represented in white standard lower case except for the letter ‘X’ that is capitalized. As opposed to the last two letters, ‘mr’, the five first ones, ‘Xtrea’ are in bold. On the top of the verbal element, a figurative element that resembles the ‘more than sign’ and a small triangle are depicted in white.

Even if a part of the public, such as the English-speaking part, might associate the verbal element ‘Xtreamr’ in the contested sign with the word ‘extreme’ in English, it has a normal degree of distinctiveness since it has no meaning as such. The rest of the public will not make such an association and will only see a fanciful and distinctive word. The white figurative elements in the contested sign are equally distinctive since they keep no relation with the services in question. Furthermore, the red square is less distinctive since it is of a purely figurative nature.

For reasons of economy of proceedings, the Opposition Division will assess the signs from the perspective of the part of the public that might associate the verbal element in the contested sign with the word ‘extreme’ as this is the most advantageous scenario for the opponent since a certain degree of conceptual similarity exists for them while, for the rest of the public, as the contested sign will not be associated with any meaning, the signs are not conceptually similar.

Therefore, as both signs will be perceived as making a reference to something ‘extreme’, which is laudatory as already explained above, the signs are, for this part of the public conceptually similar to a low degree.

Visually and aurally, the signs coincide in the letters ‘*XTRE*M*’ and in their corresponding sounds. However, they differ in the additional letters/sounds ‘E’ placed in the first and seventh position of the earlier mark and in the additional letters/sounds ‘A’ and ‘R’ placed in the fifth and seventh position of the contested sign. The signs visually further differ in the stylization of the verbal element, in the white figurative elements and in the red square of the contested sign that have no equivalent in the earlier mark. Taking into consideration the low degree of distinctiveness of the earlier mark and the additional elements of the contested sign, the signs are visually and aurally similar to a low 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all the services in question.

5. Global assessment, other arguments and conclusion

Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case. Likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa. Furthermore, the more distinctive the earlier mark, the greater the risk of confusion. Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17).

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).

In the present case, the signs are visually, aurally and conceptually similar to a low degree because the coincidences between them are limited to some letters that are part of an element of low degree of distinctiveness as already detailed above. The contested services are assumed to be identical to the opponent’s services and they target the public at large and/or a professional public. The degree of attention of the relevant public in relation to those services will vary from average to high.

Account is also taken of the fact that the earlier trade mark enjoys a limited scope of protection because of its low degree of distinctiveness and that, consequently, any additional difference between the signs contribute to modify the overall impression created by them. The differences will therefore not go unnoticed by the consumers, especially bearing in mind that, in relation to the relevant services, their attention will vary from average to high.

Considering all the above, even assuming that the services are identical, there is no likelihood of confusion on the part of the public that will associate the verbal element ‘Xtreamr’ of the contested sign with ‘extreme’. Therefore, the opposition must be rejected.

The risk of confusion is even less likely for the rest of the relevant public since for them, the concept of ‘extreme’ is absent from the contested sign.

The opponent has also based its opposition on the following earlier trade marks:

European Union trade mark registration No 9 004 144 , European Union trade mark registration No 9 004 078 ‘VUE EXTREME, United Kingdom trade mark No 3 065 502 ‘EXTREME’ and European Union trade mark No 9 004 128 ‘VUE XTREME’.

These earlier rights invoked by the opponent are either identical to European Union trade mark application No 13 661 608 ‘EXTREME’ on which the present assessment is based or less similar to the contested mark because they contain an additional word that will even more catch the attention of the consumer because it is placed in the first position. As far as earlier European Union trade mark registration No 9 004 144 is concerned, there is even more distance with respect to the contested sign because it also contains additional letters placed in the front of the sign and because the overall impression created by the figurative elements and colours make it all the more singular.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR (in the version in force at the time of commencement of the adversarial part), the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2)(c) EUTMIR (in the version in force at the time of commencement of the adversarial part), when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 26/08/2016 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit was extended and expired on 28/02/2017.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Pedro JURADO MONTEJANO

Sandra IBAÑEZ

Katarzyna ZANIECKA

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.