OPPOSITION No B 2 915 018

Silver-Stone Technology Co., Ltd., 12F, No.168 Jian-Kang Rd., Chung-Ho City, 235, Taipei, Taiwan (opponent), represented by Zeitler Volpert Kandlbinder Patent- und Rechtsanwälte Partnerschaft MbB, Herrnstr. 44, 80539 Munich, Germany (professional representative)

a g a i n s t

Bally Wulff Games & Entertainment GmbH, Colditz Str. 34-36, 12099 Berlin, Germany (applicant).

On 20/06/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 915 018 is partially upheld, namely for the following contested goods and services:

Class 9: Audiovisual apparatus; Data carriers for computers having software recorded thereon; Data storage media; Plug-in cartridges [electric]; Information carriers [electric or electronic]; Electronic data carriers; Plug-in cartridges [electronic]; Identity cards, magnetic; Identification labels [machine readable]; Identification strips [encoded]; Identification strips [magnetic]; Cards bearing electronically recorded data; Coded bank cards; Identification labels [encoded]; Encoded cards; Cards encoded to access computer software; Encoded cards for use in relation to the electronic transfer of funds; Encoded cards for use in relation to the electronic transfer of financial transactions; Encoded cards for use in point of sale transactions; Plastic cards [encoded]; Encoded magnetic cards; Encoded electronic chip cards; Printed cash cards [encoded]; Information carriers [encoded or magnetic]; Encoded telephone cards; Credit cards; Cash cards [magnetic]; Programme carriers (Magnetic -); Magnetic credit cards; Trading cards [magnetic]; Magnetic payment cards; Printed cash cards [magnetic]; Magnetic strip cards; Magnetic supports for software; Machine readable data carriers; Machine readable information carriers; Optical recording media; Optical discs; Memory cards for video game machines; Memory sticks; USB flash drives; Cards encoded with security features for identification purposes; View data terminals; Graphic display terminals; Graphic terminals; Interactive terminals; File servers; Computer database servers; Magnetic strip readers; Data communications receivers; Apparatus for the transmission of data; Mobile data apparatus; Apparatus for the reproduction of images; All of the aforesaid goods being exclusively in connection with games, slot machines, gaming machines for gambling, video gaming machines or other apparatus with gaming functions.

Class 28: Hand-held electronic video games; Hand-held electronic games; Electronic amusement apparatus incorporating a liquid crystal display; Free-standing video games apparatus; Handheld computer games; Hand held units for playing video games; Hand-held units for playing electronic games; Token-operated video game machines; LCD game machines; Coin-operated video amusement apparatus; Controllers for game consoles; Hand-held games with liquid crystal displays; Portable games with liquid crystal displays; Arcade video game machines; Electronic hand-held game units; Automatic coin-operated games; Arcade games (electronic -) [coin or counter operated apparatus]; Electronic games; Pinball machines; Amusement machines, automatic and coin-operated; Coin-operated electrical amusement apparatus; Bill-operated gaming equipment; Gaming machines for gambling; Games (Apparatus for -); Coin-operated amusement gaming machines; Coin-operated pinball game machines; Coin-operated games; Coin-operated electronic amusement apparatus; Pinball games machines [coin or counter operated]; Pachinkos; Japanese vertical pinball machine (pachinko machines); Automatic gaming machines; Slot machines [counter-freed amusement apparatus]; Amusement apparatus for use in arcades; Arcade games; Games.

Class 42: Design and development of computer game software; Design and development of computer game software and virtual reality software; Computer software programming services; Software design for others; Design, maintenance and up-dating of computer software; Developing and updating computer software; Development of computer game software; Design of games; Creating of computer programs; Software design and development.

2. European Union trade mark application No 16 514 606 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

PRELIMINARY REMARK

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 514 606 ‘RAVEN’S CASTLE’. The opposition is based on European Union trade mark registration No 7 084 635 .

The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

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

In the present case, the applicant has not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR.

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

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

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

1. The goods and services

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

Class 9: Computers; computer hardware and peripherals, namely internal cooling fans for the use in the computer; electrical power supplies; uninterruptible power supply (UPS); computer heat sinks; interface cards for the use in the computer; multimedia accelerator boards; computer keyboards; computer mouse; computer housings; computer joysticks; removable hard drive based computer backup peripherals; mouse pads; earphones; audio speakers.

The contested goods and services are, after a limitation, the following:

Class 9: Audiovisual apparatus; Data carriers for computers having software recorded thereon; Data storage media; Plug-in cartridges [electric]; Information carriers [electric or electronic]; Electronic data carriers; Plug-in cartridges [electronic]; Identity cards, magnetic; Identification labels [machine readable]; Identification strips [encoded]; Identification strips [magnetic]; Cards bearing electronically recorded data; Coded bank cards; Identification labels [encoded]; Encoded cards; Cards encoded to access computer software; Encoded cards for use in relation to the electronic transfer of funds; Encoded cards for use in relation to the electronic transfer of financial transactions; Encoded cards for use in point of sale transactions; Plastic cards [encoded]; Encoded magnetic cards; Encoded electronic chip cards; Printed cash cards [encoded]; Information carriers [encoded or magnetic]; Encoded telephone cards; Credit cards; Cash cards [magnetic]; Programme carriers (Magnetic -); Magnetic credit cards; Trading cards [magnetic]; Magnetic payment cards; Printed cash cards [magnetic]; Magnetic strip cards; Magnetic supports for software; Machine readable data carriers; Machine readable information carriers; Optical recording media; Optical discs; Memory cards for video game machines; Memory sticks; USB flash drives; Cards encoded with security features for identification purposes; View data terminals; Graphic display terminals; Graphic terminals; Interactive terminals; File servers; Computer database servers; Magnetic strip readers; Data communications receivers; Apparatus for the transmission of data; Mobile data apparatus; Apparatus for the reproduction of images; All of the aforesaid goods being exclusively in connection with games, slot machines, gaming machines for gambling, video gaming machines or other apparatus with gaming functions.

Class 28: Hand-held electronic video games; Hand-held electronic games; Electronic amusement apparatus incorporating a liquid crystal display; Free-standing video games apparatus; Handheld computer games; Hand held units for playing video games; Hand-held units for playing electronic games; Token-operated video game machines; LCD game machines; Coin-operated video amusement apparatus; Bags specially adapted for handheld video games; Controllers for game consoles; Hand-held games with liquid crystal displays; Portable games with liquid crystal displays; Arcade video game machines; Electronic hand-held game units; Automatic coin-operated games; Arcade games (electronic -) [coin or counter operated apparatus]; Electronic games; Pinball machines; Amusement machines, automatic and coin-operated; Coin-operated electrical amusement apparatus; Bill-operated gaming equipment; Gaming machines for gambling; Lottery wheels; Games (Apparatus for -); Chips for gambling; Counters for games; Coin-operated amusement gaming machines; Coin-operated pinball game machines; Coin-operated games; Coin-operated electronic amusement apparatus; Pinball games machines [coin or counter operated]; Pachinkos; Japanese vertical pinball machine (pachinko machines); Roulette tables; Roulette sets; Automatic gaming machines; Slot machines [counter-freed amusement apparatus]; Amusement apparatus for use in arcades; Arcade games; Games; Play money; Roulette chips.

Class 41: Providing casino facilities [gambling]; Providing of casino and gaming facilities; Casino services; Bookmaking [turf accountancy]; Casino, gaming and gambling services; Betting services; Conducting lotteries for others; Wagering services; Leasing of casino games; Providing a computer game that may be accessed network-wide by network users; Providing information on-line relating to computer games and computer enhancements for games; Provision of information relating to entertainment online from a computer database of the Internet; Internet games (non-downloadable); Providing slot machine parlors; Amusement arcades; Providing pachinko parlors; Electronic games services provided from a computer database or by means of the internet; Electronic games services, including provision of computer games on-line or by means of a global computer network; Electronic game services provided by means of the internet; Provision of on-line computer games; Game services provided on-line from a computer network; Provision of games by means of a computer based system; Entertainment provided via the internet; Entertainment services relating to competitions; Computer and video game amusement services; Entertainment by means of telephone; Gaming machine entertainment services; Providing games; Rental of video games; Rental of electronic game equipment; Amusement arcade machine rental services; Rental of game machines and apparatus; Rental of amusement machines and apparatus.

Class 42: Design and development of computer game software; Design and development of computer game software and virtual reality software; Computer software programming services; Software design for others; Design, maintenance and up-dating of computer software; Developing and updating computer software; Development of computer game software; Design of games; Creating of computer programs; Software design and development.

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.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods. The term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

Contested goods in Class 9

As regards the comparison of the goods in question in that class, the Opposition Division notes from the outset that the applicant’s restriction all of the aforesaid goods being exclusively in connection with games, slot machines, gaming machines for gambling, video gaming machines or other apparatus with gaming functions has in the present case no material influence on the comparison with the opponent’s goods. Therefore, it will not be repeated in each comparison mentioned.

Having regard to the fact, on the one hand, that computers are devices that compute, and more specifically, programmable electronic machines that perform high-speed mathematical or logical operations, or that assemble, store, correlate, or otherwise process information and, on the other hand, that servers are computers that provide data to other computers, it has to be considered that the contested file servers; computer database servers; data communications receivers; apparatus for the transmission of data; data communications hardware; mobile data apparatus are identical to the opponent’s computers, either because the opponent’s goods include, are included in, or overlap with these contested goods.

Considering that keyboards provided with magnetic strip readers are nowadays very common on the market, and since it cannot be excluded that the opponent's computer keyboards are provided with a magnetic strip reader device, the contested magnetic strip readers overlap with the opponent's computer keyboards. Therefore, they are identical.

Considering that the contested audiovisual apparatus designate any apparatus involving the use of recorded pictures and sound, or the equipment that produces them, it has to be considered that these contested goods include, or overlap with the opponent's computers. These goods are thus identical.

In the same line, it is noted that apparatus for the reproduction of images overlap with the opponent’s computers. Therefore, these goods are identical.

The contested data storage media; information carriers [electric or electronic]; electronic data carriers include, or overlap with the opponent’s removable hard drive based computer backup peripherals. As the Office cannot dissect ex officio the broad categories of the contested goods, these goods are, in all cases, identical.

The contested magnetic supports for software; data carriers for computers having software recorded thereon; information carriers [encoded or magnetic]; programme carriers (Magnetic -); optical recording media; optical discs; memory sticks; USB flash drives; identity cards, magnetic; identification labels [machine readable]; identification strips [encoded]; identification strips [magnetic]; cards bearing electronically recorded data; coded bank cards; identification labels [encoded]; encoded cards; cards encoded to access computer software; encoded cards for use in relation to the electronic transfer of funds; encoded cards for use in relation to the electronic transfer of financial transactions; encoded cards for use in point of sale transactions; plastic cards [encoded]; encoded magnetic cards; encoded electronic chip cards; printed cash cards [encoded]; encoded telephone cards; credit cards; cash cards [magnetic]; magnetic credit cards; trading cards [magnetic]; magnetic payment cards; printed cash cards [magnetic]; magnetic strip cards; machine readable data carriers; machine readable information carriers; memory cards for video game machines; cards encoded with security features for identification purposes form a homogeneous category of data storage media which have strong connections with the opponent’s removable hard drive based computer backup peripherals, irrespective of whether they are blank or not. Firstly, they coincide in their purpose, namely information/data storage and, as a result, they address the same consumers and they are in competition. Finally, they are likely to come from the same undertakings and they are sold in the same outlets. Therefore, they have to be considered highly similar.

A plug on a piece of electrical equipment is a small plastic object, with two or three metal pins which fit into the holes of an electric socket, and connects the equipment to the electricity supply. Therefore, it is considered that the contested plug-in cartridges [electric] are complementary to the opponent’s electrical power supplies with which they also coincide in usual producer, distribution channels and relevant public. Therefore, these goods are at least similar.

The contested plug-in cartridges [electronic]; view data terminals; graphic display terminals; graphic terminals; interactive terminals are similar to the opponent’s computers because they coincide in producer, distribution channels and target public.

Contested goods in Class 28

The contested hand-held electronic video games; hand-held electronic games; electronic amusement apparatus incorporating a liquid crystal display; free-standing video games apparatus; handheld computer games; hand held units for playing video games; hand-held units for playing electronic games; token-operated video game machines; lCD game machines; coin-operated video amusement apparatus; controllers for game consoles; hand-held games with liquid crystal displays; portable games with liquid crystal displays; arcade video game machines; electronic hand-held game units; automatic coin-operated games; arcade games (electronic -) [coin or counter operated apparatus]; electronic games; pinball machines; amusement machines, automatic and coin-operated; coin-operated electrical amusement apparatus; bill-operated gaming equipment; gaming machines for gambling; apparatus for games; games (Apparatus for -); coin-operated amusement gaming machines; coin-operated pinball game machines; coin-operated games; coin-operated electronic amusement apparatus; pinball games machines [coin or counter operated]; pachinkos; japanese vertical pinball machine (pachinko machines); automatic gaming machines; slot machines [counter-freed amusement apparatus]; amusement apparatus for use in arcades; arcade games; games are similar to the opponent’s computers because they coincide in relevant public, usual producer and distribution channels.

In contrast, the contested bags specially adapted for handheld video games; lottery wheels; chips for gambling; counters for games; roulette tables; roulette sets; play money; roulette chips are dissimilar to all the goods covered by the earlier mark because they have nothing in common. They are of a different nature and purpose. They do not follow the same method of use. They are neither complementary nor in competition. They do not target the same end user. They are produced by different companies and they do not share the same distribution channels.

Contested services in Class 41

The contested services in Class 41, namely, providing casino facilities [gambling]; providing of casino and gaming facilities; casino services; bookmaking [turf accountancy]; casino, gaming and gambling services; betting services; conducting lotteries for others; wagering services; leasing of casino games; providing a computer game that may be accessed network-wide by network users; providing information on-line relating to computer games and computer enhancements for games; provision of information relating to entertainment online from a computer database of the Internet; internet games (non-downloadable); providing slot machine parlors; amusement arcades; providing pachinko parlors; electronic games services provided from a computer database or by means of the internet; electronic games services, including provision of computer games on-line or by means of a global computer network; electronic game services provided by means of the internet; provision of on-line computer games; game services provided on-line from a computer network; provision of games by means of a computer based system; entertainment provided via the internet; entertainment services relating to competitions; computer and video game amusement services; entertainment by means of telephone; gaming machine entertainment services; providing games; rental of video games; rental of electronic game equipment; amusement arcade machine rental services; rental of game machines and apparatus; rental of amusement machines and apparatus are essentially different from the opponent’s goods in Class 9 as they have a different nature, purpose and method of use. Moreover, these goods and services have different usual origins, distribution channels and they target different consumers. They are neither complementary nor in competition. Therefore, they are considered to be dissimilar.

Contested services in Class 42

Considering that design of games is a broad category from which the design of computer games cannot be filtered, the contested design and development of computer game software; design and development of computer game software and virtual reality software; computer software programming services; software design for others; design, maintenance and up-dating of computer software; developing and updating computer software; development of computer game software; design of games; creating of computer programs; software design and development are similar to the opponent’s computers because they address the same users, they are complementary and they coincide in distribution channels.

2. Relevant public — degree of attention

The average consumer of the category of products and services 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 relevant goods and services are directed at both non-professionals and professionals. While the professionals will display a heightened level of attention (12/01/2006, T-147/03, QUANTUM, EU:T:2006:10, § 62), the degree of attention of non-professional consumers may vary between average and high (05/05/2015, T-423/12, Skype, EU:T:2015:260, § 22; 27/03/2014, T-554/12, Aava Mobile, EU:T:2014:158, § 27; 08/09/2011, T-525/09, Metronia, EU:T:2011:437, § 37 for the goods in Class 9 and the services in Class 42; 26/03/2015, R 1190/2014-5, D&M Dелай с Мамой (fig.) / dm et al., § 14 for the goods in Class 28).

3. The signs

	RAVEN’S CASTLE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

The contested sign is a word mark consisting of words which are meaningful in English, namely, the words ‘RAVEN’ - which corresponds in English to ‘a large heavily built crow with mainly black plumage, feeding chiefly on carrion’ - and ‘CASTLE’, designating a ‘a large building, typically of the medieval period, fortified against attack with thick walls, battlements, towers, and in many cases a moat’ (definitions extracted from English Oxford Dictionary Online) and in between, the apostrophe ‘S’ expressing the possessive in English.

On the other hand, the earlier mark is a figurative mark which contains the word ‘RAVEN’ and a depiction of what could be described as a raven. The first and last letters of the word ‘RAVEN’ are written in a standard typeface whereas the letter ‘V’ is highly stylised, since it takes the shape of a bird reminiscent of a raven. The applicant disputes that the relevant public will perceive the middle letter as being a letter ‘V’ and considers that its shape makes it more similar to the letter ‘Y’ so that it will be perceived as such.

However, considering, on the one hand, that the letter ‘V’ is depicted in the shape of a bird, and, on the other hand, that as explained above ‘RAVEN’ refers to a bird in English, it can be safely assumed that, at least, the English-speaking part of the public will perceive that bird representation as corresponding to the letter ‘V’.

Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

Neither of the signs contains elements which are descriptive, allusive or otherwise weak in relation to the goods and services in question. Therefore, they are distinctive.

The marks have no element that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘RAVEN’. However, they differ in the specific representation of the letter ‘V’ in the earlier mark, since it has no counterpart in the contested sign. They further differ in the additional elements ‘’S CASTLE’ of the contested sign and, consequently, also in length and structure.

Taking into account that the earlier mark’s word element ‘RAVEN’ is entirely included in the beginning of the contested sign and considering that word elements generally attract more the attention than the figurative aspects, it is concluded that the signs will be perceived as visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‘RAVEN’. The pronunciation differs in the sound produced by the letter ‘S’ and the element ‘CASTLE’ of the contested sign since they have no counterpart in the earlier mark.

Bearing in mind that they coincide in the earlier mark’s only verbal element ‘RAVEN’, the signs will be perceived as aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be perceived as referring to a type of bird, namely, ‘a large heavily built crow with mainly black plumage, feeding chiefly on carrion’ conveyed by the common element ‘RAVEN’. This concept is further reinforced in the earlier mark by the stylisation of the letter ‘V’, reminiscent of a raven. However, they differ in that, in the contested sign, said raven lives in a ‘CASTLE’ or such castle is known for its raven (as indicated by the apostrophe ‘S’). As both marks will evoke the concept of a raven and, in the contested sign, the concept of the castle is secondary, the signs are considered to be conceptually highly similar.

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

4. Distinctiveness of the earlier mark

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

The opponent 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 for which it is registered 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

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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 and services covered are from the same or economically linked undertakings.

The signs have been found to be visually and phonetically similar to an average degree and conceptually similar to a high degree. The goods and services at issue were found to be partly identical, partly similar to different degrees, and partly dissimilar. The earlier mark has a normal degree of distinctiveness and the relevant public’s level of attention will range from average to high.

Because the differences between the signs in conflict in the present case are confined to secondary elements and aspects, namely, the stylisation of the letter ‘V’ in the earlier mark (which reinforces the meaning behind the word element) having no counterpart in the contested sign, and the additional word elements ‘’S CASTLE’ at the end of the contested sign, the Opposition Division considers that a likelihood of confusion between these marks cannot be safely excluded.

Indeed, bearing in mind that the earlier mark’s word element, is fully included in the beginning of the contested sign and the conceptual high degree of similarity that such inclusion provides, it is highly conceivable in the Opposition Division’s view that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-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 7 084 635. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical, highly similar or similar to those of the earlier trade mark.

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

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Nicole CLARKE

Marine DARTEYRE

Julie, Marie-Charlotte HAMEL

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.