OPPOSITION No B 2 844 846

RS Components Limited, Birchington Road Weldon, NN17 9RS Corby, United Kingdom (opponent), represented by Urquhart-Dykes & Lord LLP, Altius House, 1 North Fourth Street, MK9 1NE Milton Keynes, United Kingdom (professional representative)

a g a i n s t

Compensa Stand S.L., C/ Pablo Picasso s/n, 28320 Pinto (Madrid), Spain (applicant), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative).

On 29/06/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 844 846 is partially upheld, namely for the following contested goods:

Class 9: Optical apparatus and instruments, including glasses; spectacle cases; spectacle frames.

Class 14: Jewellery, horological and chronometric instruments; housings for clocks and watches; cases for watches [presentation]; clock cases; medals; ornaments of jet; watchstraps; watch cases; watch chains.

Class 18: Trunks and travelling bags; attache cases; backpacks; sport bags; beach bags; briefbags; card cases [notecases]; chain mesh purses; bags (game -) [hunting accessories]; handbags; haversacks; keycases; music cases; net bags for shopping; feed bags; wallets; purses; satchels; shopping bags; wheeled shopping bags; vanity cases, not fitted.

2. European Union trade mark application No 16 003 311 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 16 003 311 for the figurative mark . The opposition is based on European Union trade mark registrations No 1 865 310 for the word mark ‘RS’ (earlier mark 1) and No 157 974 for the figurative mark (earlier mark 2). The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of the trade marks on which the opposition is based.

The date of filing of the contested application is 07/11/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union from 07/11/2011 to 06/11/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

Earlier mark 1)

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; 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; alarms; ammeters; amplifiers; bar-code reader; batteries for pocketlamps; batteries; battery chargers; breathing apparatus; cables; calculating machines; callipers; cameras; capacitors; circuit closers; circuit breakers; clothing for protection against accidents, irradiation and fire; compact discs read only memory; computer peripheral devices; recorded computer programmes; computer memory; computer keyboards; conduits; connectors; contacts; control panels; insulated copper wire; copying apparatus and machines; counters; current rectifiers; magnetic data media; data processing apparatus; optical data media; detectors; digital plotters; regulators for lighting dimmers; electricity distribution boxes; electricity distribution boards; dosage dispensers; electric alarm bells; facsimile machines; filters for respiratory masks; fire extinguishing apparatus; floppy discs; frequency meters; fuses; gauges; gloves for protection against accidents; heat regulating apparatus; identification sheaths for electric wires; indicators; inductors; integrated circuits; interfaces for computers; inverters; junction sleeves for electric cables; knee pads; lasers; optical lenses; electric locks; loudspeakers; luminous beacons; magnetic tapes; magnets; magnifying glasses; measuring instruments; electric measuring devices; measuring apparatus; mechanisms for counting apparatus; meters; micrometers; microphones; microprocessors; microscopes; mirror optics; modems; computer monitors; data processing mouse equipment; optical discs; optical fibres; oscillographs; plugs, sockets and other contacts; electric connections; pressure gauges; printed circuits; printers for use with computers; projection apparatus; projector screens; protective helmets; recorded computer software; regulating apparatus; relays; resistances; respirators, other than for artificial respiration; rulers; scales; scanners; semiconductors; smoke detectors; soldering and de-soldering apparatus; soldering irons; spectacles; spirit levels; switches; telephone apparatus; temperature indicators; testing apparatus; thermometers; thermostats; automatic time switches; time recording apparatus; transformers; transistors; transmitters of electronic signals; vacuum cleaners; video tapes; volt meters; weighing apparatus and instruments; weights; welding apparatus; access control systems; accessories for electric conduits; anti-static clothing; anti-static packaging; anti-static containers; cable glands; close circuit television cameras; dials; diodes; disc drives; ear defenders; earplugs; electrical power supply; filters; headphones; light emitting diodes; monitors for closed circuit television; oscillators; potentiometers; printed circuit boards; rechargeable batteries; residual current detectors; safety goggles; safety harness; safety footwear; solder sleeves; solenoids; suppressors; telephone answering machines; thermocouples; trunking; radio and television apparatus and instruments; sound amplifiers; tape recorders; communication, radar and photographic apparatus and instruments; electrical and electronic control apparatus and instruments; electrical and electronic apparatus and instruments; cartridges and styli; cabinets, casings, cases, boxes and housings, all adapted for use with electrical, electronic and scientific apparatus, instruments or components; tubing, casing and trunking for electric wires or cables; calculators; control gear and switch gear; data communications and networking apparatus and instruments; optoelectronic apparatus and indicators; panel meters; power supplies; process control apparatus; resistors; semi-conductors; sensors; transducers; audio and visual apparatus and instruments; shielding apparatus; telecommunication apparatus and instruments; time switches; transformers; ferrites; bench power supplies; electrical test apparatus; laboratory apparatus and instruments; monitoring apparatus; multimeters; oscilloscopes; signal generators; timers; protective clothing; parts and fittings for all the aforesaid goods.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; horological and chronometric instruments; clocks and watches; parts and fittings for all the aforesaid goods.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, cases of leather; toolbags of leather; bags; cases; luggage; parts and fittings for all the aforesaid goods.

Class 35: Advertising, marketing and promotional services, and information services relating thereto; business information services; business information services provided on-line form a computer database or the Internet; compilation of advertisements for use as web pages on the Internet; provision of data information or images all on-line for a database or the Internet; dissemination of advertising materials in form of catalogues, printed publication or by electronic means; on-line checking services for identifying whether or not on-line callers are pre-registered as buyers or as sellers or both for participating in on-line electronic commerce; provision of advertising for accessing via communication and computer networks, including the Internet and web sites; provision of product information for accessing via communication and computer networks; provision of commercial information, provision of data and statistical information, computerised data processing, computerised information storage and dissemination and retrieval services; on-line data processing services, compilation, storage, analysis and retrieval of information and data; management of communication networks; compilation of advertisements, retail and mail order services; retail and mail order services in the field of electric and electronic components; retail and mail order services in the field of chemicals used in industry, science and photography, unprocessed artificial resins, unprocessed plastics, fire extinguishing compositions tempering and soldering preparations, tanning substances, adhesives used in industry, paints, varnishes, lacquers, preservatives against rust and against deterioration of woods, colorants, mordants, raw natural resins, metals in foil and powder form for painters, decorators, printers and artists, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, candles, wicks, plasters, materials for dressings; retail and mail order services in the field of disinfectants; retail and mail order services in the field of air freshening preparations; retail and mail order services in the field of preparations for the treatment of burns; retail and mail order services in the field of disinfectants for hygiene purposes; retail and mail order services in the field of medical dressings; retail and mail order services in the field of eyewash; retail and mail order services in the field of filled first aid boxes; retail and mail order services in the field of plasters for medical purposes, common metals and their alloys, metal building materials, transportable buildings of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery and small items of metal hardware, pipes and tubes of metal, safes, goods of common metal not included in other classes, ores, machines and machine tools, motors and engines (except for land vehicles), machine coupling and transmission components (except for land vehicles), agricultural implements, hand tools and implements (hand operated), cutlery, side arms, razors, scientific, nautical, surveying, electric, photographic, cinematographic, optical, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers and recording discs, automatic vending machines and mechanisms for coin-operated apparatus, cash registers, calculating machines, data-processing equipment and computers, fire-extinguishing apparatus, medical apparatus and instruments, orthopaedic articles apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, air pumps, sack barrows, trolleys, trucks, wheels for barrows, trolleys and trucks, precious metals and their alloys and goods in precious metals or coated therewith, horological and chronometric instruments, paper, cardboard and goods made from these materials, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ material, paintbrushes, typewriters and office requisites, instructional and teaching material, plastic materials for packaging, playing cards, printers’ type, printing blocks, rubber, gutta-percha, asbestos, mica and goods made from these materials, not included in other classes, plastics in extruded form for use in manufacture, packing, stopping and insulating materials, flexible pipes, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, building materials, non-metallic rigid pipes for building, asphalt, pitch and bitumen, non-metallic transportable buildings, furniture, mirrors, and picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother of pearl, meerschaum and substitutes for all these materials, or of plastics, household or kitchen utensils and containers, sponges, brushes, brush-making materials, articles for cleaning purposes, steel wool, unworked or semi-worked glass, glassware, porcelain and earthenware, ropes, string, nets, tents, awning, tarpaulins, sails, sacks and bags, padding and stuffing materials, raw fibrous textile materials, textiles and textile goods, protective clothing and footwear, waterproof clothing, mats and matting, linoleum and other materials for covering existing floors.

Earlier mark 2)

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; 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; alarms; ammeters; amplifiers; bar-code reader; batteries for pocketlamps; batteries; battery chargers; breathing apparatus; cables; calculating machines; callipers; cameras; capacitors; circuit closers; circuit breakers; clothing for protection against accidents, irradiation and fire; compact discs read only memory; computer peripheral devices; recorded computer programmes; computer memory; computer keyboards; conduits; connectors; contacts; control panels; insulated copper wire; copying apparatus and machines; counters; current rectifiers; magnetic data media; data processing apparatus; optical data media; detectors; digital plotters; regulators for lighting dimmers; electricity distribution boxes; electricity distribution boards; dosage dispensers; electric alarm bells; facsimile machines; filters for respiratory masks; fire extinguishing apparatus; floppy discs; frequency meters; fuses; gauges; gloves for protection against accidents; heat regulating apparatus; identification sheaths for electric wires; indicators; inductors; integrated circuits; interfaces for computers; inverters; junction sleeves for electric cables; knee pads; lasers; optical lenses; electric locks; loudspeakers; luminous beacons; magnetic tapes; magnets; magnifying glasses; measuring instruments; electric measuring devices; measuring apparatus; mechanisms for counting apparatus; meters; micrometers; microphones; microprocessors; microscopes; mirror optics; modems; computer monitors; data processing mouse equipment; optical discs; optical fibres; oscillographs; plugs, sockets and other contacts; electric connections; pressure gauges; printed circuits; printers for use with computers; projection apparatus; projector screens; protective helmets; recorded computer software; regulating apparatus; relays; resistances; respirators, other than for artificial respiration; rulers; scales; scanners; semiconductors; smoke detectors; soldering and de-soldering apparatus; soldering irons; spectacles; spirit levels; switches; telephone apparatus; temperature indicators; testing apparatus; thermometers; thermostats; automatic time switches; time recording apparatus; transformers; transistors; transmitters of electronic signals; vacuum cleaners; video tapes; volt meters; weighing apparatus and instruments; weights; welding apparatus; access control systems; accessories for electric conduits; anti-static clothing; anti-static packaging; anti-static containers; cable glands; close circuit television cameras; dials; diodes; disc drives; ear defenders; earplugs; electrical power supply; filters; headphones; light emitting diodes; monitors for closed circuit television; oscillators; potentiometers; printed circuit boards; rechargeable batteries; residual current detectors; safety goggles; safety harness; safety footwear; solder sleeves; solenoids; suppressors; telephone answering machines; thermocouples; trunking; radio and television apparatus and instruments; sound amplifiers; tape recorders; communication, radar and photographic apparatus and instruments; electrical and electronic control apparatus and instruments; electrical and electronic apparatus and instruments; cartridges and styli; cabinets, casings, cases, boxes and housings, all adapted for use with electrical, electronic and scientific apparatus, instruments or components; tubing, casing and trunking for electric wires or cables; calculators; control gear and switch gear; data communications and networking apparatus and instruments; optoelectronic apparatus and indicators; panel meters; power supplies; process control apparatus; resistors; semi-conductors; sensors; transducers; audio and visual apparatus and instruments; shielding apparatus; telecommunication apparatus and instruments; time switches; transformers; ferrites; bench power supplies; electrical test apparatus; laboratory apparatus and instruments; monitoring apparatus; multimeters; oscilloscopes; signal generators; timers; protective clothing; parts and fittings for all the aforesaid goods.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; horological and chronometric instruments; clocks and watches; parts and fittings for all the aforesaid goods.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, cases of leather; toolbags of leather; bags; cases; luggage; parts and fittings for all the aforesaid goods.

According to Article 10(3) EUTMDR, 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 27/06/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 02/09/2019 to submit evidence of use of the earlier trade marks. This deadline was further extended at the request of the opponent and expired on 02/11/2019 (Saturday). On 04/11/2019, the opponent submitted evidence of use. When a time limit that expires on a day on which the Office is not open for receipt of documents or on which ordinary post is not delivered in the locality in which the Office is located (Saturdays, Sundays and public holidays) will be extended to the first working day thereafter. The extension is automatic but it applies only at the end of the time limit (12/05/2011, R 924/2010‑1, whisper power (FIG. MARK) / WHISPER). Therefore, the opponent’s submission of proof of use on 04/11/2019 was sent within the time limit.

The evidence to be taken into account is the following:

• Exhibit 1 – extracts from the UK Companies House website for RS Components Limited showing that the opponent has been active in the field of wholesaling of electronic and telecommunications equipment since 1971 and clarifying that the opponent is a subsidiary of Electrocomponents Plc. Undated extract from the Electrocomponents Plc website showing that is its leading brand and is its private label brand. Undated printout from the website https://www.electrocomponents.com.

• Exhibit 2 – UK and Europe group structure chart for Electrocomponents Plc and its economically related undertakings. Annual report of Electrocomponents Plc dated 31/03/2016, showing the subsidiary relationship of the opponent (RS Components Limited), RS Components GmbH, RS Components SAS and Amidata SA. The document contains information about revenue and investments of the parent company group only, without breaking it into its subsidiaries and different trade marks and goods and services.

• Exhibit 3 – undated extracts from a product catalogue offered by RS Components SAS in France showing various goods, including an inspection camera, digital camera, bags, cases and safety goggles. Some of the goods in the catalogue bear the opponent’s ‘RS’ mark, for example , and , and some originate from other undertakings.

• Exhibit 4 – eight invoices dated 2011-2016 bearing the sign in the upper left corner, showing sales of various goods, such as LCD displays (541 units), safety goggles (10 units), two types of clocks (6 units), organising suitcases (2 units), rolling bags (2 units), tool wallets (2 units), industrial LCD screen (1 unit), by RS Components SAS to various clients in France. One invoice is dated shortly before the relevant period. Each item listed and highlighted by the opponent in the invoices contains a unique product code, further explained in exhibit 5. The rest of the goods listed in the invoices do not match product codes on any other item of evidence submitted by the opponent.

• Exhibit 5 – extracts bearing a printing date of 2019 from the website of RS Components SAS in France showing a picture and the price in EUR of each product highlighted by the opponent in the invoices submitted in exhibit 4. Six of these products (LCD display, safety goggles, two types of wall clocks, toolbox, tool case) bear the sign and the ‘RS PRO’ sign is mentioned in the product description, but the other two products, namely the LCD screen and rolling bags, originate from other producers and do not bear either of the opponent’s marks.

• Exhibit 6 – extracts from a product catalogue offered by RS Components GmbH in Germany dated 2015, showing various goods, including a light meter sensor, infra-red (IR) thermometer, magnifying lamps, safety goggles and compact cameras. Some of the goods presented in the catalogue bear the opponent’s ‘RS’ mark.

• Exhibit 7 – eight invoices dated 2015-2016 bearing the opponent’s sign in the upper left corner, showing sales of various goods, such as LCD displays (9 units), timers (5 units), wall clocks (2 units), organising suitcases (10 units), tool bags (2 units), tool cases (1 unit), industrial LCD screen (1 unit), by RS Components GmbH to various clients in Germany. Each item listed and highlighted by the opponent in the invoices contains a unique product code, further explained in exhibit 8. The rest of the goods listed in the invoices do not match product codes on any other item of evidence submitted by the opponent.

• Exhibit 8 – extracts bearing a printing date of 2019 from the website of RS Components GmbH in Germany showing a picture and the price in EUR of each product highlighted by the opponent in the invoices submitted in exhibit 7. Six of these products (two types of LCD displays, timer, wall clock, toolbox, tool bag) bear the sign and the ‘RS PRO’ sign is mentioned in the product description, but the other two products, namely the industrial LCD screen and one type of tool case, originate from other producers.

• Exhibit 9 – eight invoices dated 2015-2016 bearing the opponent’s sign in the upper left corner, showing sales of various goods, such as safety goggles (50 units), stopwatches (3 units), digital camera (1 unit), wall clocks (3 units), tool bags (3 units), tool cases (3 units), LCD displays (30 units), tool wallets (12 units), by Amidata SA to various clients in Spain. Each item listed and highlighted by the opponent in the invoices contains a unique product code, further explained in exhibit 10. The rest of the goods listed in the invoices do not match product codes on any other item of evidence submitted by the opponent.

• Exhibit 10 – extracts bearing a printing date of 2019 from the website of an RS subsidiary in Spain, showing a picture and the price in EUR of each product highlighted by the opponent in the invoices submitted in exhibit 9. Six of these products (LCD display, safety goggles, clock, stopwatch, toolbox, tool case) bear the sign and the ‘RS PRO’ sign is mentioned in the product description, but the other products, namely two types of tool cases and the digital camera, originate from other producers.

• Exhibit 11 – a copy of a UK promotional document dated June 2014 and a UK brochure dated May 2015. These documents were published by the opponent and show various goods, including ventilators, air conditioners, thermometers, inspection and thermal imaging cameras and safety goggles. The opponent shows use of its trade mark in relation to some of its goods (torches, nut and bolt kits) and various retail services of, inter alia, tools, safety goggles, electronic equipment and electronic accessories in Class 35.

• Exhibit 12 – copies of relevant pages from the opponent’s UK sales catalogue dated 2015 (showing, inter alia, fibre optic connectors, LCD displays, cases, bags, wallets, clocks, timers, cameras, glasses and magnifiers); and a UK promotional document published by the opponent, dated April 2015, showing various products including cases, toolboxes and illuminated magnifiers.

• Exhibit 13 – copies of seven online articles referring to the opponent’s earlier marks and its products in 2012-2016. Three of them relate to the use of the opponent’s mark in the UK, one in Malta and three in Europe (it is not possible to deduce whether the place of use is within the territory of the European Union). One article was published shortly after the relevant period, on 10/11/2016.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office. Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, namely, invoices and catalogues, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods and services for which the earlier marks are registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The invoices, product catalogues and promotional brochures show that the place of use is within the European Union, namely in France, Germany, Spain and the United Kingdom. This can be inferred from the language of the documents (English, French, German, Spanish), the currency mentioned (euro, pound) and some addresses in the abovementioned countries. Therefore, the evidence relates to the relevant territory.

Time of use

The annual report (exhibit 2), 23 invoices (exhibits 4, 7, 9), product catalogue (exhibit 6), promotional brochures (exhibit 11), sales materials (exhibit 12) and six out of the seven online articles (exhibit 13) are dated within the relevant period. In addition, extracts from the opponent’s websites (Exhibits 5, 8, 10) bear a printing date of 2019 but clearly corroborate evidence from the relevant period (e.g. invoices and product codes mentioned therein). Therefore, they are also relevant for the assessment of proof of use.

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

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because the use it refers to is very close in time to the relevant period and these circumstances subsequent to that period may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period (05/03/2020, T‑80/19, DECOPAC, EU:T:2020:81 § 66). In addition, the undated product catalogue, even if not sufficient on its own, combined with the other items of evidence clarifies and supplements the other proof of use submitted by the opponent. This approach has been confirmed by the General Court, which has stated that material submitted without any indication of date of use may, in the context of an overall assessment, still be relevant and taken into consideration in conjunction with other items of evidence that are dated (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 33). In particular, the undated product catalogue (exhibit 3) contains information supplementing the content of the invoices.

Nature of use

In the context of Article 10(3) EUTMDR, 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 paragraph 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.

The opponent’s ‘RS’ mark was used in a trade mark sense, insofar as the evidence shows it as an indication of commercial origin of the specific goods offered and the services rendered by the opponent’s company. In addition, the earlier mark was used in the form as registered in the evidence submitted by the opponent. The use of the earlier mark 2), , in red and with an additional banal and non-distinctive red frame, , is merely decorative. In the case of the earlier mark 1), the word mark ‘RS’, the stylisation is not striking.

The applicant disputed the evidence submitted by the opponent on this point, stating that the opponent’s ‘RS’ mark has been used together with the additional verbal element ‘pro’, namely . However, the Opposition Division finds that this additional element is merely an indication that the designated goods and services are intended for ‘professionals’ or are ‘supporting’ something (25/04/2013, T‑145/12, Eco Pro, EU:T:2013:220, § 29-32). In particular, it is a common business practice to sell to professionals specialised lines of products, which are more durable and designed to be used more frequently than the standard product lines targeting occasional users. Therefore, this additional verbal element is non-distinctive and does not alter the distinctive character of the mark in the form in which it was registered.

In addition, the applicant argued that the opponent used its mark as a company name rather than in accordance with its essential function. The Opposition Division does not concur with the applicant on this point. Use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T‑209/09, Alder Capital, EU:T:2011:169, § 55-56). Use of a business, company or trade name can be regarded as use ‘in relation to goods’ where a party affixes the sign constituting its company name, trade name or shop name to the goods or, even though the sign is not always affixed, the party uses the sign in such a way that a link is established between the company, trade or shop name and the goods or services (11/09/2007, C‑17/06, Céline, EU:C:2007:497, § 21-23). Provided that either of these two conditions is met, the fact that a verbal element is used as the company’s trade name does not preclude its use as a mark to designate goods or services (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, § 38). However, the Opposition Division notes that the presentation of the business name at the top of order forms or invoices, depending on how the sign appears on them, may be suitable to support genuine use of the registered trade mark (06/11/2014, T‑463/12, MB, EU:T:2014:935, § 44-45).

Furthermore, in relation to the extracts from the opponent’s websites (exhibits 5, 8, 10) and the online articles (exhibit 13), the applicant claimed that the mere presence of these trade marks on a website was not, in itself, sufficient to prove genuine use. They were not accompanied with other documentation, such as the number of customer visits, or proof that the number of orders in terms of volume was sufficient. However, the Opposition Division must consider the evidence in its entirety and in light of the independence principle. It is generally true that the value in terms of evidence of internet extracts can be strengthened by submitting evidence that the specific website has been visited and, in particular, that orders for the relevant goods and services have been made through the website by a certain number of customers in the relevant period. However, it is not mandatory and the opponent can submit other items of evidence, which in light of the independence principle can be found sufficient to prove genuine use of the marks. In particular, the invoices prove the sale of goods offered on the websites, and the product catalogues and brochures show that the goods and services were offered for sale.

In view of the above, the Opposition Division considers that the evidence does show use of the earlier mark as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR in relation to the opponent’s goods and services in Classes 9, 14, 18 and 35. They show that the opponent puts on the market a wide range of different goods, such as batteries, air conditioners, safety goggles, chronometers, timers, clocks, tool bags, tool cases. In addition, it provides retail services for other producers (e.g. LCD screens, digital cameras, tool bags).

Extent of use

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).

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.

In the present case, it is clear that the product catalogues (exhibit 6), promotional brochures (exhibit 11), sales materials (exhibit 12) and online articles (exhibit 13), as well as the undated product catalogue (exhibit 3) and extracts from the opponent’s websites (exhibits 5, 8, 10), relate to the opponent’s goods and services in Classes 9, 14, 18 and 35 mentioned in the section regarding the nature of use. The promotional and sales materials were issued in four languages and refer to four different countries, France, Germany, Spain and the United Kingdom, in different years.

Furthermore, the invoices in exhibits 4, 7 and 9 provide objective and quantitative indications of the commercial volume, frequency and duration of use of the mark, regardless of the fact that one of them was issued outside of the relevant period. The volume of the sales demonstrated in the invoices is not particularly high, but some of the goods/services are quite expensive (e.g. retail services of digital cameras). The invoices submitted are not consecutive, but have numbers far apart. They are issued to different persons in different locations in France, Germany and Spain. This shows that the extent of use was sufficiently widespread to amount to a real and serious commercial effort. In addition, the invoices were issued during the whole relevant period. These are indications that the invoices are examples of the total amount of sales that occurred during the relevant period.

The fact that the 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 (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 42). It may be economically and objectively justified for an undertaking to market a product or a range of products even if their share in the annual turnover of the undertaking in question is minimal (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 49). Even though the evidence shows minimal sales of the goods, it also indicates that the goods were sold regularly to different consumers and the opponent offers a very wide range of products and has decided to concentrate its evidence on only part of the goods and services.

Additionally, all the circumstances of the specific case have to be taken into account in conjunction with each other in order to determine whether the mark in question has been genuinely used. The particular circumstances can include, for example, the specific features of the goods/services in question (e.g. low- or high-priced; goods for mass consumption versus specialised goods) or the particular market or business area. The goods offered by the opponent and the services pertaining thereto, except for batteries, are not goods for mass consumption and they are not bought frequently by the relevant consumers.

Furthermore, as the Opposition Division does not assess commercial success, even minimal use (but not mere token or internal use) can be sufficient to be deemed ‘genuine’, as long as it is viewed as warranted in the economic sector concerned to maintain or acquire a share in the market.

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

However, the evidence filed by the opponent does not show genuine use for all of the goods covered by the earlier trade marks.

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.

According to case-law, when applying the abovementioned provision, the following should be considered:

… if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub‑divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45-46.)

In the present case, the evidence shows genuine use of the earlier trade mark 1) and earlier trade mark 2) for the following goods:

Class 9: LCD screens; batteries; safety goggles.

Class 14: Horological and chronometric instruments; watches and clocks.

Class 18: Tool bags; tool cases.

Class 35: Retail and mail order services of LCD screens, digital cameras.

Regarding Class 18, the evidence proves use for tool bags and tool cases. These goods can be considered to form an objective sub‑category of bags and cases, namely tool bags; tool cases. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark at least for tool bags and tool cases.

For the rest of the goods in Classes 9, 14 and 18 the opponent did not submit any evidence at all (e.g. floppy discs, cables, precious metals and their alloys, umbrellas) or the evidence adduced is insufficient. Even though some goods, e.g. air conditioners, are shown on promotional brochures or product catalogues, the opponent did not submit any other proof in relation to the extent of use regarding these goods. Without any additional items of evidence, such as invoices or confirmation of customers’ orders, the Opposition Division cannot reach the conclusion that the use of the mark was not merely token but the opponent seriously tried to create or maintain market share in relation to these goods.

There are also some indications of use for retail services in Class 35, particularly in the product catalogues (exhibit 6), promotional brochures (exhibit 11), sales materials (exhibit 12), as well as the undated product catalogue (exhibit 3) and extracts from the opponent’s websites (exhibits 5, 8, 10). They show that the opponent brings together a series of goods in Class 35 with different trade marks for the benefit of buyers, particularly LCD screens and digital cameras. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark at least for retail and mail order services of LCD screens, digital cameras, which create an objective sub‑category of retail and mail order services in the field of scientific, nautical, surveying, electric, photographic, cinematographic, optical, signalling, checking (supervision), apparatus for recording, transmission or reproduction of sound or images.

However, the evidence submitted by the opponent in relation to its use in Class 35 is insufficient to allow the Opposition Division the finding that the earlier marks have been genuinely used in relation to the remaining services. In particular, the evidence is scarce, it originates from the opponent itself and, apart from exhibit 13, is not supported by solid, objective, third‑party evidence, such as advertisements by the opponent as a retailer, agreements with providers of products, framework agreements, etc. Most of the exhibits are undated or show a small number of goods pertaining to retail services rendered. Furthermore, the opponent does not show sufficient intensity of the promotion of its retail services on the market and also does not prove the sales of products under the other brands. Therefore, the evidence adduced by the opponent is not capable of sufficiently proving the extent of use of its mark in relation to the remaining services in Class 35, taking into consideration that offers on the market with the intention to gain a market share could be genuine use.

In addition, there are no indications regarding the use of the earlier marks on any other goods and services.

Therefore, the Opposition Division will only consider the abovementioned goods 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 No 157 974 for the figurative mark (earlier mark 2).

1. The goods and services

The goods and services on which the opposition is based and at least for which use was shown, are the following:

Class 9: LCD screens; batteries; safety goggles.

Class 14: Horological and chronometric instruments; watches and clocks.

Class 18: Tool bags; tool cases.

Class 35: Retail and mail order services of LCD screens, digital cameras.

The contested goods, after a limitation on 25/04/2017, are the following:

Class 9: Optical apparatus and instruments, including glasses; spectacle cases; spectacle frames.

Class 14: Precious metals and their alloys; jewellery, precious stones; horological and chronometric instruments; agates; anchors [clock- and watchmaking]; barrels [clock- and watchmaking]; beads for making jewelry; housings for clocks and watches; cases for watches [presentation]; clock cases; clock hands; clockworks; coins; copper tokens; dials for clock and watch making; jet, unwrought or semi-wrought; jewel cases; key rings [trinkets or fobs]; medals; movements for clocks and watches; olivine [gems]; ornaments of jet; pearls made of ambroid [pressed amber]; pendulums [clock- and watchmaking]; semi-precious stones; spinel [precious stones]; watchstraps; watch cases; watch chains; watch crystals; watch springs.

Class 18: Leather and imitation leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; attache cases; backpacks; sport bags; leather shoulder belts; beach bags; briefbags; card cases [notecases]; chain mesh purses; clothing for pets; collars for animals; frames for umbrellas or parasols; bags (game -) [hunting accessories]; skin (goldbeaters’ -); gut for making sausages; handbag frames; handbags; haversacks; horse blankets; horseshoes; knee-pads for horses; keycases; music cases; muzzles; net bags for shopping; feed bags; wallets; pouch baby carriers; purses; satchels; shopping bags; sling bags for carrying infants; slings for carrying infants; straps for skates; straps for soldiers’ equipment; suitcase handles; umbrella covers; umbrella handles; umbrella or parasol ribs; umbrella rings; umbrella sticks; vanity cases, not fitted; walking cane handles; walking stick seats; wheeled shopping bags.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested optical apparatus and instruments, including glasses include, as a broader category, or overlap with, the opponent’s safety goggles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested spectacle cases; spectacle frames are similar to the opponent’s safety goggles, since they can coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 14

Horological and chronometric instruments are identically contained in both lists of goods.

The contested jewellery; ornaments of jet are highly similar to the opponent’s horological and chronometric instruments as they have the same nature. In addition, they usually coincide in producer, relevant public and distribution channels.

The contested housings for clocks and watches; clock cases; watchstraps; watch cases; watch chains are components of clocks and watches. They are similar to the opponent’s horological and chronometric instruments since they usually coincide in producer and relevant public. Furthermore, they are complementary.

The contested cases for watches [presentation] are similar to the opponent’s horological and chronometric instruments since they usually coincide in producer and relevant public. Furthermore, they are complementary.

The contested medals are similar to a low degree to the opponent’s horological and chronometric instruments since they usually coincide in producer, relevant public and distribution channels.

The contested key rings [trinkets or fobs] are dissimilar to the opponent’s goods and services in Classes 9, 14, 18 and 35. These goods differ in nature, purposes and methods of use. They are neither complementary nor in competition. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public.

The contested barrels [clock- and watchmaking]; pendulums [clock- and watchmaking]; jewel cases; anchors [clock- and watchmaking]; clock hands; clockworks; dials for clock and watch making; movements for clocks and watches; watch crystals; watch springs are dissimilar to the opponent’s goods and services in Classes 9, 14, 18 and 35. Unlike cases and straps, which above have been found similar to the opponent’s goods, they cannot be changed by the end user. These parts of clocks and watches would only be used by a professional public, and are therefore different in purpose, method of use and distribution channels to the opponent’s goods and services.

The contested precious metals and their alloys; precious stones; agates; beads for making jewelry; jet, unwrought or semi-wrought; olivine [gems]; pearls made of ambroid [pressed amber]; semi-precious stones; spinel [precious stones] are dissimilar to the opponent’s goods in Class 14. The mere fact that one product is used for the manufacture of another will not be sufficient in itself to show that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. Consequently, the fact that the horological and chronometric instruments and clocks may be made of, or at least include, some jewellery items, such as precious stones or metals, does not cause them to be similar. Raw materials are, in general, intended for use in industry rather than for direct purchase by final consumers. Furthermore, the fact that the conflicting goods may be purchased in the same shops, for example jewellery shops, is not sufficient for a finding of similarity between them (13/01/2014, R 465/2013‑1, CLAUDIA BAUKNECHT / BAUKNECHT et al., § 36). Finally, they are not complementary since one is not indispensable for the manufacture or the functioning of the other. For the sake of completeness, these goods are also dissimilar to the opponent’s goods and services in Classes 9, 18 and 35. These goods differ in nature, purposes and methods of use. They are neither complementary nor in competition. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public.

The contested coins; copper tokens are metal objects used, for example, as a medium of exchange and a store of value. They are dissimilar to the opponent’s goods and services in Classes 9, 14, 18 and 35. These goods differ in nature, purposes and methods of use. They are neither complementary nor in competition. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public.

Contested goods in Class 18

The contested trunks and travelling bags; attache cases; backpacks; sport bags; beach bags; briefbags; chain mesh purses; bags (game -) [hunting accessories]; handbags; haversacks; net bags for shopping; feed bags; purses; satchels; shopping bags; card cases [notecases]; keycases; music cases; vanity cases, not fitted; wheeled shopping bags; wallets are all various types of bags and cases used for carrying or storing relatively small objects, such as books, toiletries, clothing and documents. The opponent’s tool bags; tool cases are bags and cases used for carrying mechanical tools. They have the same purpose and method of use, as they are used for carrying or storing other objects. They are sold by the same undertakings and can be produced by the same manufacturers. Therefore, they are similar to at least to a low degree (by analogy, 06/06/2018, R 1336/2017‑2, ISEA (fig.) / IKEA et al., § 37).

The contested handbags frames; suitcase handles are very specific products. They are produced by specialised enterprises active in the field of components for bags and suitcases. They target a specialised public (i.e. those who produce bags and suitcases, respectively). Therefore, these goods are dissimilar to the opponents tool bags and tool cases in Class 18 since the mere fact that a certain product can be composed of several components does not automatically establish similarity between the finished product and its parts (27/10/2005, T‑336/03, Mobilix, EU:T:2005:379, § 61). Moreover, these contested goods are not similar to any other of the opponent’s goods and services in Classes 9, 14 and 35 because they clearly have different purposes, methods of use, distribution channels, relevant publics and producers. In addition, they are not complementary or in competition. Furthermore, the opponent has not adduced any argumentation that would allow a different finding to be reached.

The remaining contested leather and imitation leather; animal skins, hides; umbrellas and parasols; walking sticks; whips, harness and saddlery; leather shoulder belts; clothing for pets; collars for animals; frames for umbrellas or parasols; skin (goldbeaters’ -); gut for making sausages; horse blankets; horseshoes; knee-pads for horses; muzzles; pouch baby carriers; slings for carrying infants; sling bags for carrying infants; straps for skates; straps for soldiers’ equipment; umbrella covers; umbrella handles; umbrella or parasol ribs; umbrella rings; umbrella sticks; walking cane handles; walking stick seats are dissimilar to the opponent’s goods and services in Classes 9, 14, 18 and 35. These goods differ in natures, purposes and methods of use. They are neither complementary nor in competition. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public.

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar to varying degrees are directed at the public at large and at specialised consumers.

In addition, the degree of attention may vary from average (e.g. clocks) to high (e.g. safety goggles on account of their purpose of protecting the eyes), depending on the specialised nature of the goods, the frequency of purchase and their price.

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 letters ‘RS’ present in both signs do not have any meaning for the relevant public. Therefore, this element is distinctive.

The conflicting signs are depicted in slightly stylised typefaces, with the two letters linked together in each sign. This stylisation is not striking and will be perceived by the relevant consumers as purely decorative. The conflicting signs have no element that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘RS’, with the letters joined in a highly similar manner in each sign. The signs differ slightly in their typeface and in that the earlier mark is in bold and the contested sign has normal letters. However, this slight difference in stylisation could probably go unnoticed by the relevant consumers. Therefore, the signs are visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘RS’, present identically in both signs. Therefore, the signs are aurally identical.

Conceptually, the two-letter combination ‘RS’ does not convey any specific meaning in the context of the goods in question from the perspective of the relevant public nor have the parties adduced any argument that would allow a different conclusion. Therefore, 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.

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

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

5. Global assessment, other arguments and conclusion

The goods have been found identical and similar to varying degrees. The signs are visually highly similar and aurally identical, and a conceptual comparison is not possible.

The earlier mark and the contested sign have the letter sequence ‘RS’ in common. These letters are distinctive to a normal degree for the relevant goods. The two letters have phonetically identical sounds and rhythms and are confusingly similar for the consumer. In addition, they convey no concept to separate the signs in the consumers’ minds. The stylisation of the conflicting signs is not striking and could go unnoticed by the relevant consumers. Since the identical letters ‘RS’ in both signs are connected in a highly similar manner in the lower part of the letters, the conflicting signs convey quasi-identical overall impressions, even for the part of the public that displays a high degree of attention.

In addition, 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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

Nowadays companies frequently make small variations in their trade marks (e.g. by altering their typeface or colour) to name new lines of products or to create modernised versions of the marks. The contested sign may be considered to be a new version of the earlier ‘RS’ mark, which has been slightly modernised in an up-to-date font to make it more attractive for the consumers.

Based on the principle of imperfect recollection, it is considered that the similarities established between the signs are sufficient to cause the public to believe that the conflicting goods, which are identical and similar, come from the same or economically liked undertakings.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 157 974.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark. Since the conflicting signs are visually highly similar and aurally identical, there is a likelihood of confusion also insofar as the goods similar to a low degree are concerned.

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

The opponent has also based its opposition on the following earlier trade mark: European Union trade mark registration No 1 865 310 for the word mark ‘RS’ (earlier mark 1).

Since this mark, after the examination of proof of use, covers the same scope of goods, the outcome cannot be different with respect to goods for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods because the signs and/or the goods and services are obviously not identical.

COSTS

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

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

The Opposition Division

Gueorgui IVANOV

Irena LYUDMILOVA LECHEVA

Jakub MROZOWSKI

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.