OPPOSITION No B 2 803 222

Blue Elephant International Limited, 66 Chiltern Street, London, W1U 4JT, United Kingdom (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat, 5, 1831, Diegem, Belgium (professional representative)

a g a i n s t

EWT Truck & Trailer Handels GmbH, Hornweg 1, 6370 Kitzbühel, Austria (applicant), represented by Rechtsanwälte Vill Penz Rupp, Anichstraße 5a III, 6020 Innsbruck, Austria (professional representative).

On 13/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 803 222 is upheld for all the contested goods.

2. European Union trade mark application No 15 715 303 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626.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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 715 303 for the figurative mark . The opposition is based on, inter alia, European Union trade mark registration No 3 164 092 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of some of the trade marks on which the opposition is based. For reasons of procedural economy, the Opposition Division will first analyse the proof of use in relation to European Union trade mark registration No 3 164 092 for the figurative mark .

The date of filing of the contested application is 03/08/2016. 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 03/08/2011 to 02/08/2016 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, in particular:

Class 29: Milk and milk products.

Class 30: Coffee, tea, coffee substitutes.

Class 43: Providing of food and drink; temporary accommodation; catering services.

According to Article 10(3) EUTMDR (formerly 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 12/06/2017, in accordance with Article 10(2) EUTMDR (formerly Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 17/08/2017 to submit evidence of use of the earlier trade mark. On 17/08/2017, within the time limit, the opponent submitted evidence of use.

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

The Opposition Division will first examine the evidence in relation to the services in Class 43, which is, in particular, the following:

• Extracts from the opponent’s website www.blueelephant.com, dated 08/07/2017, including the text ‘Our Restaurants: 8 stunning restaurants in 7 countries with great food, inspiring ambience and a timeless friendly service’. The locations of the restaurants indicated are ‘London, Paris, Brussels, Copenhagen’. Underneath the text some foodstuffs are depicted and the earlier mark is visible. In relation to the restaurant ‘Blue Elephant London’, the website states, ‘Trading since 1986, Blue Elephant, London was an exceptional Thai restaurant serving Royal Thai cuisine. A phenomenal success from the outset, it has over the years received numerous accolades from the press and the general public both in London and internationally. After 30 wonderful years in London, Blue Elephant, Imperial Wharf has decided to serve its last meal at the restaurant on 27 August 2016 at its present location. We hope to relocate soon to the centre of London or into the city and will keep you informed on our new developments.’ Furthermore, one of the extracts includes the text ‘Our Products: Cook Thai Food at home using our extensive range of ready-to-eat meal kits’.

• Extract from the opponent’s website www.blueelephant.dk relating to the restaurant in Copenhagen, dated 08/07/2017, showing the earlier mark as registered, indicating that the restaurant will be closed for the holidays from 03/06/2017 until 31/07/2017.

• Copies of the menus and wine lists of the restaurants in Paris (in French), London (in English and Thai), Copenhagen (mostly illegible but stating on one page ‘since 1980, 30 years Thai Culinary Ambassador’) and Brussels (in French and Dutch), all undated. The earlier mark appears, sometimes with the additional words ‘Royal Thai Cuisine’, and in some cases only the figurative element is depicted. The menu of the London restaurant also mentions the possibility of home delivery and ‘food service solutions’, indicating that ‘Blue Elephant products’ are also available in most countries around the world, for example in the UK in Harrods, in Belgium in Delhaize, in the Netherlands in Albert Heijn and in France in Galerie Lafayette.

• Pictures of the restaurants in Paris, London, Copenhagen and Brussels, extracted from Google images, dated 08/07/2017.

• Extracts from Google searches for ‘blue elephant Paris’, ‘blue elephant London’, ‘blue elephant Copenhagen’ and ‘blue elephant Brussels’, dated 08/07/2017, showing the addresses of the restaurants, and giving results for some websites referring to the opponent’s restaurants and some indications of the number of reviews (e.g. for the Paris restaurant, there are 348 Google reviews; 1 340 reviews on TripAdvisor, where it is it ranked 1 445 of 17 365 restaurants in Paris; and 3 501 reviews on TheFork). The Google search for the restaurant in Brussels also shows it described as ‘Chic Thai restaurant opened in 1980 with wood panelling, plants and dishes made from fresh spices’.

• Extracts from www.facebook.com, dated 08/07/2017, of the pages ‘Blue Elephant Paris’, ‘Blue Elephant London’ and ‘Blue Elephant Brussels’, showing the earlier mark with an illegible line of text underneath. A rating of 4.7/5 is shown for the restaurant in Paris, 995 people liked the page and 952 people were following the page. For the restaurant in London, a rating of 4.4/5 is shown, and the page has 1 912 likes and 1 646 followers. Furthermore, the London restaurant’s Facebook page states ‘After 30 wonderful years the Blue Elephant London is now closed for business at its present location. We hope to relocate soon to the center of London and will keep you informed on the new developments.’ For the restaurant in Brussels, the page has 1 591 likes and 1 547 followers.

• Extracts from various websites, dated 08/07/2017, relating to the restaurant ‘Blue Elephant Paris’, including from www.bestrestaurantsparis.com, mentioning that it is ‘the guide of the 250 Paris restaurants, among the best’ and showing images of the ‘Blue Elephant’ restaurant, including a depiction of the figurative element of the earlier mark. Extracts from the following websites show the number of reviews: www.tripadvisor.com, 1 340 reviews; http://restaurant.michelin.fr, 132 reviews; www.restovisio.com and www.thefork.com, 3 502 reviews.

• Extracts from various websites, dated 08/07/2017, relating to the restaurant ‘Blue Elephant London’ (located at The Boulevard, Imperial Wharf), including from www.yelp.co.uk, showing 37 reviews, and from www.viamichelin.com, stating ‘Relocated from Fulham Road to these swankier and appropriately exotic premises’.

• Extracts from various websites, dated 08/07/2017, relating to the restaurant ‘Blue Elephant Copenhagen’, including from www.krak.dk, showing the figurative element of the earlier mark next to the name of the restaurant ‘Blue Elephant Copenhagen’, and from www.visitdenmark.com.

• Extracts from various websites, dated 08/07/2017, relating to the restaurant ‘Blue Elephant Brussels’, including from www.tripadvisor.com, indicating that there are 379 reviews, from www.bookatable.co.uk, from https://deliveroo.be, showing that it is possible to add a delivery address and time, from https://en.resto.be, indicating that there are 488 reviews, and from www.thefork.com, indicating that there are 343 reviews and that the restaurant is included in the ‘Michelin Guide Selection’.

• Sample invoices issued by ‘Blue Elephant Thailand’ to the restaurants in Europe: for example an invoice, dated 06/08/2016, issued to ‘Blue Elephant Copenhagen’ for various goods such as wooden bowls and cups; invoices, dated 25/02/2013, 08/09/2013, 04/05/2014 and 16/10/2014, issued to ‘Blue Elephant London’ for goods such as drink list covers, a special London menu card, peanut sauce, jasmine green tea, wine glasses and ceramic ware.

• Extracts from various websites, dated 08/07/2017, relating to the restaurant ‘Blue Elephant Copenhagen’ in Denmark, including from www.tripadvisor.com indicating that there are 151 reviews.

The extracts from the opponent’s and third party websites show that the place of use is Belgium, Denmark, France and the United Kingdom. This can be inferred from the addresses of the restaurants. Therefore, the evidence relates to the relevant territory.

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, although most of the extracts from the internet are dated after the relevant period, it is clear from the references to the establishment and closing dates of the restaurants that the mark was used during the relevant period. The restaurant in London, for example, was opened in 1986 and closed in 2016. The restaurant in Brussels was opened in 1980. Furthermore, use during the relevant period is also confirmed by the invoices dated within the relevant period (2013 and 2014).

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents submitted, namely the information on the locations of the restaurants (in the capital cities of four Member States, including the major cities of London and Paris), the establishment dates of the restaurants (London 1986 and Brussels 1980), and the numbers of reviews on the internet and followers on social media, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Use of the mark need not be quantitatively significant for it to be deemed genuine.

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

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

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

In the present case, although the earlier mark appears in some items of evidence as registered (e.g. on the opponent’s Danish website), it also appears sometimes with the additional words ‘Royal Thai Cuisine’ (e.g. on the menus). As the additional elements ‘Royal Thai Cuisine’ merely describe the type of food offered in the opponent’s restaurants, these elements are non-distinctive and therefore do not alter the distinctive character of the earlier mark. In some cases, the figurative element is depicted separately from the words ‘Blue Elephant’ (e.g. on some third party websites). As the connection between those elements is still clear, the fact that they are not placed one above the other does not affect the distinctive character of the mark. In addition, the fact that in many of the documents the earlier mark is referred to by the verbal elements ‘Blue Elephant’ does not alter this finding, as it is not common to refer to a restaurant in guides and reviews using figurative elements.

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

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

Taking into account the evidence in its entirety, 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 in relation to the services in Class 43 does not show genuine use of the trade mark for all the services covered in that Class.

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 services:

Class 43: Providing of food and drink.

There is no evidence for the remaining services in Class 43 (temporary accommodation; catering services).

For reasons of procedural economy, and in view of the similarities found in the comparison of the conflicting goods and services in section a) below, the Opposition Division will not examine the remaining evidence submitted by the opponent to prove use of the mark for the goods in Classes 29 and 30.

Likewise, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier trade mark for the abovementioned services in Class 43, the issue of whether or not the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the additional evidence submitted on 30/03/2018 can remain open.

Therefore, the Opposition Division will only consider providing of food and drink in Class 43 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.

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 3 164 092.

1. The goods and services

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

Class 43: Providing of food and drink.

The contested goods are the following:

Class 32: Beer and brewery products; non-alcoholic beverages; preparations for making beverages; energy drinks; sports drinks; isotonic beverages.

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.

The opponent’s providing of food and drink in Class 43 mainly covers restaurant services or similar services, such as those of cafeterias and snack bars. These services involve serving food and drinks directly for consumption.

The mere fact that food and drinks are consumed in a restaurant is not sufficient reason to find similarity between them (09/03/2005, T‑33/03, Hai, EU:T:2005:89, § 45; 20/10/2011, R 1976/2010-4, THAI SPA / SPA et al., § 24-26). Nevertheless, in certain situations these goods and services can be complementary (17/03/2015, T‑611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T‑213/09, Yorma’s, EU:T:2011:37, § 46). Goods or services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking.

The mere fact that food and/or drinks are essential to the services of restaurants, bars, cafeterias, etc., does not in itself lead consumers to think that responsibility for the production of those goods and provision of those services lies with the same undertaking (e.g. salt in restaurants).

However, consumers may think that responsibility does lie with the same undertaking if the market reality is that the provision of food and drinks and the manufacture of such goods are commonly carried out by the same undertaking under the same trade mark.

In the present case, contrary to the applicant’s arguments, the contested beer and brewery products; non-alcoholic beverages; preparations for making beverages; energy drinks; sports drinks; isotonic beverages are similar to a low degree to the opponent’s providing of food and drink in Class 43 (15/02/2011, T‑213/09, Yorma’s, EU:T:2011:37, § 46; 16/01/2014, T-304/12, Absacker of Germany, EU:T:2014:5, §29; 17/03/2015, T‑611/11, Manea Spa, EU:T:2015:152, §52; 04/06/2015, T‑562/14, YOO, EU:T:2015:363, §25-27). The contested goods and the opponent’s services are complementary. Indeed, the contested goods are used and offered in the context of restaurant, bar, cafe, cafeteria, canteen and snack bar services. Those goods are therefore closely related to those services. The opponent’s services can be offered in the same places as those in which the goods in question are sold, so they have the same distribution channels. Accordingly, for example, establishments that provide restaurant or bar services offer non-alcoholic drinks to their customers. Furthermore, the goods and services might originate from the same undertakings. There are numerous manufacturers in the field of beers and other non-alcoholic beverages that also cater for guests under their trade mark, for instance in the fields of direct marketing or outside catering.

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 similar to a low degree are directed at the public at large.

The degree of attention is 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.

The coinciding verbal elements, ‘Blue Elephant’ is meaningful in certain territories, for example in those countries where English is understood. Although the letter ‘H’ in the contested sign is highly stylised, it will easily be perceived as the letter ‘H’, not only due to its resemblance to that letter but also because it depicts the concept conveyed by the word, namely an elephant. The expression ‘Blue Elephant’ is not meaningful for the English-speaking public in relation to the relevant goods and services in Classes 32 and 43 and is therefore distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as the relevant public in the United Kingdom, which will perceive the marks as having the same distinctive meaning.

The contested sign includes a figurative element that, although rather unclear, will most likely be perceived as the registered trade mark symbol, ^®. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

Both marks depict an elephant, which is not descriptive or otherwise weak in relation to the relevant goods and services, and is therefore distinctive to an average degree. The ring in which the elephant in the earlier mark is depicted will not evoke any specific concept and will be perceived as a merely decorative element; therefore, this element has a limited impact on the overall impression created by the mark.

Neither of the signs has any element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in their verbal element ‘Blue Elephant’. However, they differ in their figurative elements, stylisation and colours. Although both marks depict an elephant, the specific depiction of those elephants is rather different.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Taking into account the above, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the words ‛Blue Elephant’, present identically in both signs.

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs coincide in the concept of their verbal element, ‘Blue Elephant’, and their figurative elements, both depicting an elephant, albeit in black and white in the earlier mark and in blue in the contested sign, the signs are conceptually at least 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim within the substantiation deadline expiring on 28/03/2017.

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 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.

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. 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, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large, and the degree of attention is average.

Account is 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).

The conflicting goods and services are similar to a low degree.

The signs are visually similar to an average degree, aurally identical and conceptually at least highly similar.

Taking into account the interdependence principle mentioned above, it is considered that, due to the striking visual, aural and conceptual commonalities in the signs, a likelihood of confusion exists for the contested goods that are similar to a low degree to the opponent’s services. Contrary to the applicant’s opinion, the signs’ average degree of visual similarity, aural identity and high degree of conceptual similarity counterbalance the low degree of similarity between the goods and services.

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. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

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 3 164 092. It follows that the contested trade mark must be rejected for all the contested goods.

As earlier European Union trade mark registration No 3 164 092 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268) or the proof of use filed in relation to those earlier rights.

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 (formerly 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

Carlos MATEO PÉREZ

Saida CRABBE

Vita VORONECKAITE

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.