OPPOSITION No B 2 879 081

Teconex Société Anonyme, Rue De Magnée, 108, 4610 Beyne-Heusay, Belgium (opponent), represented by Gevers, Brussels Airport Business Park, Holidaystraat 5, 1831 Diegem, Belgium (professional representative)

a g a i n s t

Xiamen Jianwu Industrial Co. Ltd., 3/F-1 (plant), No.288 Qianpuxisan Rd., Siming Dist., 361000 Xiamen, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 11/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 879 081 is partially upheld, namely for the following contested goods:

Class 11: Lamps; diving lights.

2. European Union trade mark application No 16 224 123 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 16 224 123 for figurative mark , namely against all the goods in Classes 9 and 11. The opposition is based on European Union trade mark registration No 9 868 621 (earlier mark 1) for the figurative mark and Benelux trade mark registration No 93 333 (earlier mark 2) and European Union trade mark registration No 11 705 531 (earlier mark 3), both for the word mark ‘TECO’. The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 9 868 621 (earlier mark 1).

1. The goods and services

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

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Couplings, electric; Material for electricity mains (wires, cables); Electric accumulators; Electric battery jars and boxes; Plates for batteries; Chargers for electric batteries; Fuse wire; Amplifiers; Batteries, electric; Electric cables; Sheaths for electric cables; Junction sleeves for electric cables; Electric transformers; Distribution boxes [electricity]; Branch boxes (electricity); Branch boxes [electricity]; Distribution and junction boxes [electricity]; Electric collectors; Electric condensers; Electrical conductors; Junction boxes (electricity) and switchboards; Plugs; Electric loss indicators; Electric connections; Electric relays; Switches; Fuses.

Class 11: Apparatus and installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Lamps; Electric lamps; Lamp chimneys; Luminous tubes for lighting; Light bulbs; Electric light bulbs; Sockets for electric lights, filaments for electric lamps; Filaments (magnesium -) for lighting.

Class 35: Advertising; Business management; Business administration; Office functions; Wholesaling, retailing and online sale of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, electric couplings, materials for electricity mains (wires, cables), electric accumulators, electric battery jars and boxes, plates for batteries, chargers for electric batteries, fuse wire, amplifiers, electric batteries, electric cables, sheaths for electric cables, junction sleeves for electric cables, electric transformers, distribution boxes (electricity), branch boxes (electricity), junction boxes (electricity), electric collectors, condensers (capacitors), electric conductors, electric junction boxes and switchboards, sockets, plugs and other contacts (electric connections), electric loss indicators, electric couplings, electric relays, electric switches and fuses, apparatus and installations for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, lamps, electric lamps, lamp chimneys; Luminous tubes for lighting, light bulbs, electric light bulbs, sockets for electric lights, filaments for electric lamps, magnesium filaments for lighting.

The contested goods are, after partial refusal of the contested application, the remaining following ones:

Class 9: Encoded key cards; Encoded identification bracelets, magnetic.

Class 11: Lamps; Diving lights; Ultraviolet ray lamps, not for medical purposes; Refrigerators; Air deodorising apparatus; Heating apparatus, electric; Anti-splash tap nozzles; Taps [faucets]; Mixer taps for water pipes; Bath fittings; Sanitary apparatus and installations; Hand drying apparatus for washrooms; Water flushing installations; Water purification installations; Heating cushions [pads], electric, not for medical purposes; Heating pads [cushions], electric, not for medical purposes.

Some of the contested goods and services are identical or similar to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

2. Relevant public — degree of attention

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

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

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

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 earlier mark is a figurative mark, consisting of the verbal element ‘Teconex’ in stylized white letters on a blue rectangular background. On its left side is a figurative device depicting a T which consists of various white and green dots on a blue background.

The contested sign is a figurative mark, composed of the verbal element ‘Techo’ in slightly stylized black letters with no further graphical and/or figurative elements.

The element ‘Teconex’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The element ‘Techo’ of the contested sign will be understood by part of the relevant public, namely the Spanish-speaking consumers, as ‘ceiling’. Bearing in mind that the relevant goods in Class 11 are lightning, ventilating, heating and sanitary installations, this element is non-distinctive for part of these goods, namely Lamps; Ultraviolet ray lamps, not for medical purposes; Air deodorising apparatus; Heating apparatus, electric; Sanitary apparatus and installations, since it indicates the place where these products can be placed and/or installed. However, as regards the other parts of the relevant public it has no meaning and is, therefore, distinctive.

Visually, the signs coincide in ‘TEC*O’. However, they differ in the additional letters ‘h’ in the contested sign and ‘nex’ in the earlier mark. They further differ in their respective typographical representation and the additional figurative device of the earlier mark and its colours.

Therefore, the signs are lowly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘TEC*O’ present in both signs. They differ in the sound of the additional letters ‘h’ in the contested sign and ‘nex’ in the earlier mark. For part of the relevant public, such as the French-speaking consumers, the difference is confined to the sound of the last syllable, since ‘Teco’ and ‘Techo’ will be pronounced the same way.

Therefore, the signs are lowly similar, whereas for part of the relevant public, such as the French-speaking consumers, they are similar to an average degree.

Conceptually, for the majority of the public in the relevant territory neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

However, for the Spanish-speaking part of the public in the relevant territory which will perceive the meaning of the earlier mark as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness as result of its long standing and intensive use in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept 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 consists of the following documents:

• 10 Invoices (enclosure 4), dating from 2008 to 2013. The sign appears on the top of the invoices. However, it is unclear for what product it has been used.

• 2 test reports (enclosure 5) for LED panel lights, dating both from 2012. The sign appears.

• 4 EU Conformity certificates (enclosure 6) relating to light bulbs and spot lights, dating both from 2012. The sign appears.

• License agreements for the use of the CEBEC certification mark by the opponent (enclosure 7), dating 2011.

• 5 Press releases issued by the opponent and two trade fair extracts (enclosure 8). However, not in the language of proceedings.

• Print-out from the website www.capxg.com (enclosure 9), dated 17/10/2013 and stating that the opponent’s business is divided into equipment trading accounting 60% of its sales and production and that the group has sales of nearly 20 Million Euros.

• License agreements and catalogue print-outs from (enclosure 10), however not in the language of proceedings.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Although it shows some use of the mark, the evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted.

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

5. Global assessment, other arguments and conclusion

The goods and services are assumed to be identical. Visually the signs are similar only to a low degree. For the majority of the relevant public this finding is also true as regards the aural similarity, whereas for part of the public, such as the French-speaking consumers, the signs are aurally similar to an average degree.

The signs merely coincide in the presence of the letters ‘Tec*o’. However, this coincidence is not sufficient to establish any likelihood of confusion. The earlier sign consists of three syllables (Te-co-nex) whereas the contested one has only two of which only the first coincides with the earlier mark, but the second (cho) differs. Furthermore, the earlier mark differs graphically due to its additional figurative device and the colours.

Finally, the opponent failed to prove the enhanced distinctiveness of the earlier mark.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar it is based on earlier mark 1.

Benelux trade mark registration No 93 333 (earlier mark 2)

6. The goods

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

Class 7: Electrical equipment and apparatus.

Class 9: Electrical equipment and apparatus (except inverters, rectifiers, batteries and stationary).

Class 11: Electrical equipment and apparatus.

Class 17: Porcelain for electricity and industry.

The contested goods are, after partial refusal of the contested application, the remaining following ones:

Class 9: Encoded key cards; Encoded identification bracelets, magnetic.

Class 11: Lamps; Diving lights; Ultraviolet ray lamps, not for medical purposes; Refrigerators; Air deodorising apparatus; Heating apparatus, electric; Anti-splash tap nozzles; Taps [faucets]; Mixer taps for water pipes; Bath fittings; Sanitary apparatus and installations; Hand drying apparatus for washrooms; Water flushing installations; Water purification installations; Heating cushions [pads], electric, not for medical purposes; Heating pads [cushions], electric, not for medical purposes.

In accordance with Article 33 (2) EUTMR the goods and services for which the protection of the trade mark is sought shall be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that sole basis, to determine the extent of the protection sought.

According to the Office’s Guidelines on Classification ‘electric apparatus’ do not provide a clear indication of the goods covered. Electric materials and apparatus – when clearly not specified - can have different characteristics or different purposes, they may require very different levels of technical capabilities and know-how to be produced and / or used, could target different consumers, be sold through different sales channels, and therefore relate to different market sectors.

The term ‘electric materials and apparatus’ in classes 7, 9 and 11 of the opponent’ s list of goods can be generally defined as materials or apparatus that work by means of electricity, rather than using some other source of power. Consequently, although one can vaguely try to describe the meaning of the goods, in the present case their natural meaning cannot be sufficiently identified.

Due to the vagueness of the term electric materials and apparatus it cannot be construed as such as relating to the contested Encoded key cards; Encoded identification bracelets, magnetic in Class 9 and Lamps; Diving lights; Ultraviolet ray lamps, not for medical purposes; Refrigerators; Air deodorising apparatus; Heating apparatus, electric; Anti-splash tap nozzles; Taps [faucets]; Mixer taps for water pipes; Bath fittings; Sanitary apparatus and installations; Hand drying apparatus for washrooms; Water flushing installations; Water purification installations; Heating cushions [pads], electric, not for medical purposes; Heating pads [cushions], electric, not for medical purposes in Class 11, since the purpose, qualities and methods of use have not been expressly identified in the specification. In the absence of an express limitation by the opponent clarifying the vague term ‘electric materials and apparatus’, it cannot be identified if any of the Canon criteria would apply.

The natural meaning of electric materials and apparatus cannot be sufficiently identified, the goods are considered not to be similar.

Likewise, the contested goods are clearly dissimilar to the opponent’s porcelain for electricity and industry in class 17, since neither those goods coincide in any relevant factor such as nature, purpose, producer, distribution channels, relevant public, etc.

7. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected as regards the earlier Benelux trade mark registration No 93 333 (earlier mark 2).

For the sake of completeness and as stated above, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

European Union trade mark registration No 11 705 531 (earlier mark 3)

8. The goods and services

The goods and services on which the opposition is based are, after partial refusal of the earlier mark, the following:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Couplings, electric; Materials for electricity mains [wires, cables]; Accumulators, electric; Electric battery jars and boxes; Plates for batteries; Chargers for electric batteries; Fuse wire; Amplifiers; Batteries, electric; Cables, electric; Sheaths for electric cables; Junction sleeves for electric cables; Transformers [electricity]; Distribution boxes [electricity]; Branch boxes [electricity]; Branch boxes [electricity]; Junction boxes [electricity]; Collectors, electric; Capacitors; Conductors, electric; Junction boxes (electricity) and switchboards; Plugs, sockets and other contacts [electric connections]; Electric loss indicators; Couplings, electric; Relays, electric; Switches, electric; Fuses.

Class 11: Lighting fittings; Lamps; Electric lamps; Lamp chimneys; Luminous tubes for lighting; Light bulbs; Light bulbs, electric; Sockets for electric lights; Filaments for electric lamps; Magnesium filaments for lighting.

Class 35: Wholesaling, retailing and online sale of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, electric connections, material for electricity mains (wires, cables), electric accumulators, jars and boxes for electric accumulators, plates for electric accumulators, chargers for electric accumulators, fuse wire, amplifiers, electric batteries, electric cables, sheaths for electric cables, junction sleeves for electric cables, electric transformers, distribution boxes (electricity), branch boxes (electricity), junction boxes (electricity), electric collectors, condensers (capacitors), electric conductors, electric junction boxes and switchboards, sockets, plugs and other contacts (electric connections), electric loss indicators, electric couplings, electric relays, electric switches and fuses.

The contested goods are, after partial refusal of the contested application, the remaining following ones:

Class 9: Encoded key cards; Encoded identification bracelets, magnetic.

Class 11: Lamps; Diving lights; Ultraviolet ray lamps, not for medical purposes; Refrigerators; Air deodorising apparatus; Heating apparatus, electric; Anti-splash tap nozzles; Taps [faucets]; Mixer taps for water pipes; Bath fittings; Sanitary apparatus and installations; Hand drying apparatus for washrooms; Water flushing installations; Water purification installations; Heating cushions [pads], electric, not for medical purposes; Heating pads [cushions], electric, not for medical purposes.

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 Encoded key cards; Encoded identification bracelets, magnetic are access control and data storage devices serve for the identification and/or access to locked areas. By contrast the opponent’s goods in class 9 are of a different nature, namely apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. The goods serve clearly different purposes. They differ in their producers, distribution channels and relevant public. Furthermore, there are not complementary nor in competition. They are, therefore, dissimilar.

The same finding applies in relation to the opponent’s goods in class 11 which are lamps and their parts and accessories, since neither those goods coincide in any relevant factor. Finally, as regards the opponent’s wholesaling, retailing and online sale services in class 35 there is neither any similarity. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are dissimilar.

Contested goods in Class 11

Lamps are identically contained in both lists of goods.

The contested diving lights and the opponent’s lamps are of the same nature, being both lighting devices. They serve the same purpose and the may coincide in their producers. Therefore, the goods are similar.

However, this is not the case with the contested ultraviolet ray lamps, not for medical purposes which are not lighting devices, but rather emit long-wave UVA radiation and little or no visible light at all. They are used for special purposes, such as tanning lamps, for reptile-keeping or to authenticate oil paintings, antiques and banknotes. This is not the purpose of the opponent’s goods in class 11 which are lighting devices and their parts. The goods do not coincide in their producers, distribution channels and relevant public. Furthermore, they are neither complementary nor in competition. The goods are dissimilar. The same finding applies in relation to the opponent’s goods in class 9, since neither those goods coincide in any relevant factor, being all apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Finally, for the reasons explained above, there is neither any similarity as regards the opponent’s wholesaling, retailing and online sale services in class 35.

The remaining contested Refrigerators; Air deodorising apparatus; Heating apparatus, electric; Anti-splash tap nozzles; Taps [faucets]; Mixer taps for water pipes; Bath fittings; Sanitary apparatus and installations; Hand drying apparatus for washrooms; Water flushing installations; Water purification installations; Heating cushions [pads], electric, not for medical purposes; Heating pads [cushions], electric, not for medical purposes are all apparatus and installations for heating, cooling, drying, ventilating, water supply and sanitary purposes. These goods are dissimilar to all the opponent’s goods in classes 9 and 11, since they do not coincide in any relevant criteria, such as producers, distribution channels, relevant public, complementarity or competition. Finally, for the reasons explained above, there is neither any similarity as regards the opponent’s wholesaling, retailing and online sale services in class 35.

9. 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 are directed at the public at large.

The degree of attention is considered to be average.

10. The signs

TECO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mar is the word mark ‘TECHO’. In the case of word marks it is the word as such that is protected, regardless the way it is written. The contested sign is a figurative mark, composed of the verbal element ‘Techo’ in slightly stylized black letters with no further graphical and/or figurative elements.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Both, the earlier mark ‘TECO’ and the verbal element ‘Techo’ of the contested sign are not meaningful in certain territories, for example in those countries where French is spoken. Furthermore, for this part of the public the elements are pronounced identically. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public such as France, Luxembourg and Belgium.

Since both elements have no meaning for the relevant public, they are distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in ‘TEC*O’. They slightly differ in the additional letter ‘h’ in the contested sign and its typographical representation which, however, is not very elaborated..

Therefore, the signs are highly similar.

Aurally, and despite the presence of the additional letter ‘h’ in the contested sign, the pronunciation of the signs coincides identically.

Therefore, the signs are identical.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

11. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

12. Global assessment, other arguments and conclusion

The goods are partly identical and/or similar and partly dissimilar. The signs are visually highly similar and aurally even identical, whereas the conceptual aspect does not influence the assessment of the similarity of the signs.

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

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The contested sign coincides with the earlier mark in four out of its five letters which are furthermore placed in same order. The differing letter ‘h’ appears in the penultimate position, whereas the beginnings of both signs, which as explained above under part j) are more important, are identical. Finally, apart form the slight typographical stylization of the contested sign, there are no further elements which could have any relevant impact on the overall impression of the contested sign. A likelihood of confusion can, therefore, not be excluded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking 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 11 705 531 (earlier mark 3). As stated above in section j) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing European Union trade mark registration No 11 705 531 (earlier mark 3) due to its extensive use as claimed by the opponent and in relation to identical and similar goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

Martin EBERL

Konstantinos MITROU

Lars HELBERT

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.