OPPOSITION No B 2 896 945

Quinessence Aromatherapy Limited, Forest Court, Linden Way, Coalville LE67 3JY, United Kingdom (opponent), represented by Swindell & Pearson LTD, 48 Friar Gate, Derby DE1 1GY, United Kingdom (professional representative)

a g a i n s t

Allwang Pty Ltd, Unit 2c, 148-150 Canterbury Road, 2200 Bankstown NSW, Australia (applicant), represented by Riccardo Ciullo, Carrer de Rosselló, 362, 4-3, 08025 Barcelona, Spain (professional representative).

On 02/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 896 945 is partially upheld, namely for the following contested goods:

Class 3: Fragrances; none of the aforesaid goods being skincare, bodycare and haircare products.

2. European Union trade mark application No 16 173 114 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 16 173 114 for the word mark ‘aromabotanical’. The opposition is based on:

1. European Union trade mark registration No 9 094 129 for the word mark ‘AROMA-BOTANICALS’;

2. United Kingdom trade mark registration No 2 355 926 for the word mark ‘AROMA-BOTANICALS’ and

3. United Kingdom non-registered trade mark ‘AROMA-BOTANICALS’.

The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR in relation to earlier marks (1) and (2) and Article 8(4) EUTMR in relation to earlier mark (3).

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 9 094 129 for the word mark ‘AROMA-BOTANICALS’.

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. However, at this point, the Opposition Division considers it appropriate to evaluate this request first in relation to earlier European Union trade mark registration No 9 094 129 for the word mark ‘AROMA-BOTANICALS’ as the examination of the opposition started in relation to this earlier right.

The date of filing of the contested application is 16/12/2016. The opponent was therefore required to prove that the EUTM on which the opposition is based was put to genuine use in the European Union from 16/12/2011 to 15/12/2016 inclusive.

The request was submitted in due time and is admissible given that the earlier trade EUTM 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 on which the opposition is based, namely the following:

Class 3: Non-medicated toilet preparations; skin care lotions and creams; cleansing lotions and creams; hand lotions and creams; body lotions and creams; moisturising lotions and creams; hair lotions; revitalising essence lotions; make-up removers; facial washes; skin toners; facial toners; base creams; base gels; base lotions; shampoo; hair shampoo; anti-wrinkle creams; anti-aging creams; beauty creams; creams for hydrating the skin; non-medicated toilet preparations for hydrating the face; non-medicated massage preparations; gels for use on the body; bath gels; shower gels; bath creams; bath essences and additives; bath lotions; bath preparations; beauty masks; cleansing facial masks; face and body scrubs; facial exfoliators; conditioners; hair conditioners; essential oils; carrier oils; carrier creams; carrier lotions; carrier gels; hydrosols/floral waters being plant extracts for use in aromatherapy; absolutes being floral extracts for use in aromatherapy; flower and plant extracts and essences; water-based preparations containing flower and/or plant extracts or essences; soaps; aromatherapy oils; aromatherapy preparations; fragrance oils and essences; fragrant preparations; fragrances; ingredients for use in all the aforementioned goods.

Class 4: Candles; fragranced candles; nightlights.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 07/02/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 12/04/2018 to submit evidence of use of the earlier trade marks. This time limit has been extended until 12/06/2018. On 12/06/2018, 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 evidence to be taken into account is the following:

• Witness statement of the opponent’s Managing Director and co-founder. It contains a description of the attached exhibits and information about the opponent’s turnover between 2010 and 2016 and marketing costs.

• Copies of some pages and brochures with information about ‘Aroma-botanicals’ skin care products.

• Copies of a number of invoices, dated within the years 2011-2017, addressed to customers in various countries in the European Union. They contain product descriptions and product references evidencing sales of ‘AROMA-BOTANICALS’ products.

• Copy of U.K. trade price list and order form January 2018 for ‘Aroma-botanicals’ products (base creams, base lotions, toners, base gels, masks, shampoos, skin care products, body oils, vaporisers, candles) with product references.

• Images of some ‘aroma-botanicals’ labels for various skin and hair care products.

• A sheet titled ‘Google Adwords’ with figures for 2011-2018. According to the explanation provided in the witness statement, these figures concern the opponent’s spending on product promotion via Google Adwords. Some pages with screenshots of pages with the campaign management and Google search results showing, inter alia, ‘Aroma-botanicals’ products for searches such as: ‘aromatherapy age defying cream’, ‘aromatherapy anti aging cream’ or ‘aromatherapy anti wrinkle cream’.

• Numerous copies of invoices for ‘Google AdWords’, dated between 2011 and 2016, addressed to the opponent.

• Copies of invoices for ‘Amazon’ advertising charges for the period between 03/12/2016 and 02/02/2017.

• Two pages showing products, including ‘aroma-botanicals’, for sale online.

• Some pages with data which, according to the explanation given in the witness statement, consists of a summary of the costs of marketing between 2012 and 2018 with a breakdown per advertiser.

• Copy of advertisement of ‘aroma-botanicals’ products in the magazine Holistic Therapist 2017 with a copy of an invoice for the advertisement in the January 2017 edition of the Holistic Therapist Magazine.

• Copy of the opponent’s annual reports for the years 2011-2016.

• Some pages concerning the opponent (according to the witness statement these are pages from Twitter and Facebook) and pages (according to the witness statement these are pages from the opponent’s website) with information about the awards won by ‘aroma-botanicals’ products.

As far as the witness statement is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

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 for which the earlier mark is 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.

The invoices, pages showing search results and online offers, advertisements show that the place of use is the European Union. This can be inferred from the language of the documents (English), the currency mentioned (‘GBP’) and some addresses in various Member States of the European Union. 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, the evidence referring to use outside the relevant period confirms use of the opponent’s mark within the relevant period. This is because what it refers to is very close in time to the relevant period and helps to better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time.

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 this respect, as far as the applicant’s references to other cases are concerned, it is noted that each case has to be dealt with separately and with regard to its particularities.

The documents filed and in particular the invoices 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.

Although the invoices show rather modest quantities of products sold to individual customers, altogether they demonstrate regular sales throughout the duration of the relevant period and in various Member States of the European Union.

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

The evidence shows that the mark has been used in accordance with its function and as registered.

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

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

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

There are some undated pages showing pictures of candles, their description and prices. However, although the text contains references to ‘aroma-botanicals’ and to the opponent and the witness statement contains an explanation that these are pages from the opponent’s website, the source is not indicated on the pages themselves. Furthermore, since the invoices do not contain references to the mark, only the products that match the references in the attached price list and order form for ‘aroma-botanicals’ products could have been taken into account. As far as candles are concerned, the opponent pointed at the invoice with a reference matching that of the price list and order form. However, an invoice attesting one sale of this product is insufficient to prove genuine use of the sign in relation to these goods in the European Union.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 3: Non-medicated toilet preparations; skin care lotions and creams; cleansing lotions and creams; hand lotions and creams; body lotions and creams; moisturising lotions and creams; facial washes; skin toners; facial toners; base creams; base gels; base lotions; anti-wrinkle creams; anti-aging creams; beauty creams; creams for hydrating the skin; non-medicated toilet preparations for hydrating the face; gels for use on the body; beauty masks; face scrubs; facial exfoliators; carrier creams; carrier lotions; carrier gels.

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.

1. The goods

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

Class 3: Non-medicated toilet preparations; skin care lotions and creams; cleansing lotions and creams; hand lotions and creams; body lotions and creams; moisturising lotions and creams; facial washes; skin toners; facial toners; base creams; base gels; base lotions; anti-wrinkle creams; anti-aging creams; beauty creams; creams for hydrating the skin; non-medicated toilet preparations for hydrating the face; gels for use on the body; beauty masks; face scrubs; facial exfoliators; carrier creams; carrier lotions; carrier gels.

The contested goods are the following:

Class 3: Fragrances; none of the aforesaid goods being skincare, bodycare and haircare products.

Class 4: Scented candles.

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 3

The contested fragrances; none of the aforesaid goods being skincare, bodycare and haircare products are similar to the opponent’s skin care lotions and creams as they may have the same general purpose, namely to protect or enhance the odour or fragrance of the body. Additionally, they may coincide in producers, relevant public and distribution channels.

Contested goods in Class 4

The contested scented candles have different natures and purposes to the opponent's goods belonging to the cosmetic sector. Furthermore, the goods under comparison are not produced by the same manufacturers and are distributed through different channels. Moreover, they are neither complementary nor in competition. Therefore, they are dissimilar.

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 similar are directed at the public at large.

The degree of attention is average.

3. The signs

AROMA-BOTANICALS	aromabotanical
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).

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57).

The consumers in the relevant territory will see in both signs the word ‘AROMA’ as referring to ‘a smell’, in particular a pleasant one, ‘perfume’. They will associate the word ‘BOTANICALS’ of the contested sign and ‘BOTANICALS’ of the earlier mark with the science of plants. Therefore, both signs, as a whole, refer to goods containing plant-based scents.

Since all the words of the signs under comparison refer to characteristics of the relevant goods, namely that they contain extracts from plants which release a pleasant smell, their distinctiveness is limited. However, since this applies to both signs in the present case, it is rather immaterial for their comparison.

Given that the signs are word marks, which are protected for the words themselves and not their specific depiction, the difference in the case lettering is irrelevant to the comparison.

Visually, the signs coincide in the sequences of letters ‘AROMA’ and ‘BOTANICAL’. However, they differ in the hyphen between these letter sequences in the earlier mark and an additional letter ‘S’ at the end, and in that the letters are written together in the contested sign.

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 sequences of letters ‘AROMA’ and ‘BOTANICAL’, present in both signs. The pronunciation differs in the sound of the final letter ‘S’ of the earlier mark, which has no counterpart in the contested sign.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the same concept, they are conceptually identical.

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 within the time limit for substantiation in order to prove such a claim. On 12/06/2018, the opponent filed the evidence as proof of use of its earlier trade marks. In this respect, it should be noted that the evidence filed as proof of use, under Article 42(2) and (3) EUTMR of earlier trade marks, cannot be taken into account as evidence of enhanced distinctiveness because it was received after the date of 21/12/2017 set by the Office for the opponent to submit evidence of the existence, validity and scope of protection of its marks.

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

5. Global assessment, other arguments and conclusion

The goods are similar and the signs are visually and aurally highly similar; they also convey the same concept.

The degree of the earlier mark’s distinctiveness is lower than normal. However, it is recalled that, although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier sign of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70 and the case-law cited therein; 13/09/2010, T-72/08, smartWings, EU:T:2010:395, § 63 and 27/02/2014, T-25/13, 4711 Aqua Mirabilis, EU:T:2014:90, § 38).

Furthermore, 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).

Bearing this in mind, it is considered that, in the present case, given the similarity of the goods, the overall high degree of similarity between the marks is sufficient to justify the conclusion that there is a likelihood of confusion.

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 9 094 129.

It follows from the above that the contested application must be rejected for the goods found to be similar to those of the earlier trade mark.

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

The opponent has also based its opposition on United Kingdom trade mark registration No 2 355 926 for the word mark ‘AROMA-BOTANICALS’.

Since this mark covers a narrower scope of goods and the evidence of use filed by the opponent and examined earlier also concerns this mark, 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 also on the basis of UK trade mark registration No 2 355 926.

REPUTATION — ARTICLE 8(5) EUTMR

The opposition under Article 8(5) EUTMR is based on earlier European Union trade mark registration No 9 094 129 for the word mark ‘AROMA-BOTANICALS’ and United Kingdom trade mark registration No 2 355 926 for the word mark ‘AROMA-BOTANICALS’.

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

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

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

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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

On 16/08/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 21/12/2017.

Within this time limit the opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

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

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opposition under Article 8(4) EUTMR is based on non-registered trade mark ‘AROMA-BOTANICALS’ used in the course of trade in the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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

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

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 16/08/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 21/12/2017.

Within this time limit the opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

In addition, apart from claiming to have the right to prohibit the use of the contested trade mark under the law of passing-off, the opponent did not submit any information on the possible content of the right invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws invoked.

For the sake of completeness, it is noted that in order to succeed under the claim for passing-off the opponent must demonstrate that the applicant’s mark would be likely to lead the public to believe that the applicant’s goods originate from the opponent.

Even if the evidence submitted to prove use of earlier registered marks was taken into account for the purposes of establishing whether the opponent’s non-registered mark enjoys goodwill, the latter would at best have been proven in relation to the same goods for which genuine use was proven.

These goods have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings. The public is unlikely to be misled where the contested goods are dissimilar to those upon which the opponent’s goodwill could have been proven to be built.

It follows from the above that the goods applied for in Class 4 are dissimilar to the goods for which the opponent could have shown that it had acquired goodwill through use. Under these circumstances, the Opposition Division finds it unlikely that the opponent’s customers would mistake the applicant’s goods for those of the opponent even if the signs are similar.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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

Edith Elisabeth VAN DEN EEDE

Justyna GBYL

Keeva DOHERTY

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.