OPPOSITION No B 2 949 314

Klaremelk BV, Leuvenumseveld 9, 3852 PE, Speuld, Netherlands (opponent), represented by Arlette Molenaar, Reyer Anslostraat 4 hs, 1054 KV, Amsterdam, Netherlands (professional representative)

a g a i n s t

Koninklijke A-ware Food Group B.V., Catharijne 1, 1358 CC, Almere, Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL, Breda, Netherlands (professional representative).

On 01/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 949 314 is partially upheld, namely for the following goods and services:

Class 29: Milk products; Milk and milk products; Dairy substitutes.

Class 35: Wholesaling and Retailing of dairy products, milk and milk products, dairy substitutes and other foodstuffs and beverages; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet.

2. European Union trade mark application No 16 560 922 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.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 560 922 namely against all the goods and services in Classes 29, 30 and 35. The opposition is based on a trade name ‘KLAREMELK’ used in the course of trade in the Netherlands. The opponent invoked Article 8(4) EUTMR.

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

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.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. Prior use in the course of trade of more than mere local significance

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. Furthermore, such use must indicate that the sign in question is of more than mere local significance.

It must be recalled that the object of the condition laid down in Article 8(4) EUTMR relating to use in the course of trade of a sign of more than mere local significance is to limit conflicts between signs by precluding an earlier right that is not sufficiently definite — that is to say, important and significant in the course of trade — from preventing registration of a new European Union trade mark. A right of opposition of that kind must be reserved for signs with a real and actual presence on their relevant market. To be capable of preventing registration of a new sign, the sign relied on in opposition must actually be used in a sufficiently significant manner in the course of trade, and its geographical extent must not be merely local, which implies, that the sign must be used in a substantial part of that territory in which the sign is protected. In order to ascertain whether that is the case, account must be taken of the duration and intensity of the use of the sign as a distinctive element for its addressees, namely purchasers and consumers as well as suppliers and competitors. In that regard, the use made of the sign in advertising and commercial correspondence is of particular relevance. In addition, the condition relating to use in the course of trade must be assessed separately for each of the territories in which the right relied on in support of the opposition is protected. Finally, use of the sign in the course of trade must be shown to have occurred before the date of the application for registration of the European Union trade mark (29/03/2011, C‑96/09 P, Bud, EU:C:2011:189, § 157, 159-160, 163, 166).

In the present case, the contested trade mark was filed on 06/04/2017. Therefore, the opponent was required to prove that the sign on which the opposition is based was used in the course of trade of more than local significance in the Netherlands prior to that date. The evidence must also show that the opponent’s sign has been used in the course of trade for the following activities:

providing specialized knowledge and knowhow in nutrition for young animals (lambs, calves and piglets) by using high quality milk replacers and by providing support for veal farmers.

The opponent submitted evidence of use in the course of trade. 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 of 01/09/2017 consists of the following documents:

• Four forms for participation in a trade show in Hardenberg in the Netherlands, showing that the opponent participated in the event in 2003, 2004, 2006 and 2011.

• Photo of a stand, showing that the opponent’s company ‘KLAREMELK’ participated in some trade shows (according to the opponent a trade show in Hardenberg).

• A list of participants at Hardenberg trade shows which took place 29, 30 and 31 of October 2013, 28, 29 and 30 of October 2014, 27, 28 and 29 of October 2015 and 1, 2 and 3 of November 2016. The list shows that the opponent was one of the participants at the mentioned trade shows.

• Four leaflets from the opponent in English: (1) ‘Klaremelk! Clear benefits for your calves and your business’. According to the article, the founder of Klaremelk, Mr. H. Klarenbeek established a company producing calf milk replacer in the early 60’s; (2) ‘The ingredients for a good result’, which provides information about the type of Klaremelk products available on the market (Start Red, Fattening Green, Fattening Blue, Fattening Yellow, Fattening Total); (3) ‘A good start for your rosé veal calves’ (which provides information about the Klaremelk calf milk replacers, i.e. product FOKMELK) and (4) ‘This is how calves, kids and lambs grow’ which provides information about the Klaremelk’s rearing milk (i.e. Rearing 0 calf, Super rearing calf, Rearing kid, Rearing lamb).

Furthermore, on 11/03/2018, the opponent also filed the following evidence:

• Exhibit 1: Publication in the official journal of Dutch authorities of 09/04/1969 concerning the establishment of the company Klaremelk N.V. in Speuld in the Netherlands. The document is in Dutch and it is accompanied with a translation in English.

• Exhibit 2: Extract from the Dutch Chamber of Commerce concerning the registration of the company Klaremelk B.V. (registration No 08061913). According to the document, the first registration of the trade name is dated 17/05/1994. In addition a press article dated 07/09/2016 is attached in Exhibit 2, sharing the story of Mr. Kees van Middendorp, an employee who has worked for Klaremelk for 40 years.

• Exhibit 3: Declarations of the opponent’s customers (declaration of 19/02/2018, signed by Mr. W.H.H. van de Born; declaration signed by Mrs Suzanne Janssen of 26/02/2018; declaration of D.A. Faulkner of 19/02/2018, managing director of British company AA & SJ Faulkner Ltd.; declaration of 21/02/2018, signed by Mr. Henk de Weijer), stating that they have been doing business with the company Klaremelk. Exhibit 3 also contains print-outs from two websites i.e. Twitter and http://altafandco.com, stating that Klaremelk has opened its business in Pakistan and offers products that are widely used all around the world because they are an ideal replacement for fresh milk.

• (3A) invoices, covering the period 2010 – 2017, issued by the opponent’s company to different clients in the Netherlands (8 invoices, one invoice per year showing the sale of significant quantities; the invoice of 15/11/2017 dated after the filing date of the contested mark), Belgium (two invoices issued in 2013 and 2015), Germany (two invoices), Italy (two invoices), Romania (one invoice), United Kingdom (one invoice), Hungary (one invoice), Pakistan (one invoice) and Jordan (one invoice). The invoices show the sales of different types of milk replacements for calves, lambs, etc.

• (3B) financial reports for Klaremelk for the period covering the years 1968 until 1972.

• (3C) a declaration of 09/03/2018, signed by J.H. van Lindenberg, acting as a Director of the company Eurolac, confirming that the company has been involved in Klaremelk’s export activities.

• Exhibit 4: Print-outs from Twitter and YouTube, showing that several posts concerning KLAREMELK and advertising videos for Klaremelk in Dutch are available online.

• Exhibit 5: Parking ticket of 09/10/2017 (for a parking lot in Köln) and a print-out, showing that both parties (the opponent and the applicant) were exhibitors at the Anuga event in Köln in 2017.

• Exhibit 6: Photos of an advertising campaign on vans and lorries in 2015 conducted by the advertising agency Henk van de Scher. Exhibit 6 also contains several print-outs from different Dutch websites (i.e. www.nieuweoogst.nl, www.dekalverhouder.nl, etc.), showing information about the new logo of the Klaremelk company.

• Exhibit 7: Extract from the Dutch hand book Tekst & Commentaar (Text & Comments) concerning a provision which defines ‘tortious act’ from the Dutch Civil Code (Article 6:162).

• Exhibit 8: An extract from the decision of the High Court of Netherlands of 20/11/2009 (case EUROTYRES [HR ECLI:NL:HR:2009:BJ9431), concerning the conflict between a prior trade name and a later trade mark. Exhibit 8 also contains an extract from a book titled ‘Kort begrip van het intellectuele eigendomsrecht’.

• Exhibit 9: Copies of parts of a book ‘Tekst & Commentaar Intellectuele Eigendom’), showing the content of Article 1 of Handelsnaamwet (the Dutch Tradename Act), providing the definition of a trade name and also containing a reference to Article 6 of the Dutch Civil Code.

• Exhibit 10: Google image search for the word ‘klaremelk’ and a selection of screen shots taken from Twitter (dated in 2015).

• Exhibit 11: Copies of parts of a book ‘Tekst & Commentaar Intellectuele Eigendom’), providing the content of Articles 5 and 5a of Handelsnaamwet (the Dutch Tradename Act) and the interpretation of the mentioned Articles.

The notion of ‘use in the course of trade’ in accordance with Article 8(4) EUTMR is not the same as ‘genuine use’ in accordance with Article 42(2) and (3) EUTMR (30/09/2010, T-534/08, Granuflex, EU:T:2010:417, § 24-27).

In the present case, the documents submitted by the opponent demonstrate that ‘KLAREMELK’ is indeed a trade name of the opponent. According to the evidence, the opponent’s trade name was established in 1968 and it has been providing specialized dairy products, knowledge about dairy products and knowhow in nutrition for young animals by using high quality milk replacers in the Netherlands and worldwide until today. This is evident from the evidence which is in Dutch and refers to that territory.

The applicant claims that the evidence is insufficient and that continuous and uninterrupted use during 50 years (as claimed by the opponent), has not been shown. Moreover the applicant cites Cancellation Decision 3728 ‘BAMBOLINA’ in which the Cancellation Division held that an earlier non-registered sign relied on in an invalidity action must be in use at the time of filing a declaration of invalidity. This, according to the applicant, applies mutatis mutandis to opposition proceedings.

The invoices that form part of the evidence relate to the territory of the Netherlands (one invoice per year, covering the period of eight years) and contain references to the opponent’s trade name thus confirming the geographic dimension. They were issued to different clients located throughout the territory of the Netherlands, for example companies in Uddel, Zeewolde, De Mortel (cities located in different parts of the Netherlands) which proves the widespread use of the opponent’s trade name in the Netherlands. The invoices are also of particular importance as regards the economic dimension, the length and frequency of use of the trade name. Although only seven relate to the relevant territory and cover the relevant period, they reflect sales of significant quantities for several thousands of euros throughout seven years. They are therefore deemed to be sufficient to prove that the opponent has been producing and selling different types of milk replacements in the Netherlands at least in the years from 2010 until 2016 (and even until 2017) and therefore, at the dates relevant for the present case.

Some evidence goes back as far as 1968, but as the applicant correctly pointed out, the majority is dated between 2010 and 2017. The Opposition Division can safely conclude that it was sufficiently demonstrated that the use was continuous as well as ongoing at the time of the filing of the contested sign.

The remaining evidence i.e. the leaflets and the documents showing that the opponent participated in trade shows, originate from the opponent. There is no information on how many people visited these trade shows or read the respective leaflets. However, this evidence, together with the invoices, shows that the opponent’s sign ‘KLAREMELK’ was used in direct connection with the activities of the opponent to identify their commercial origin and, thus, was used as a trade name.

Consequently, the Opposition Division concludes that the opponent’s trade name ‘KLAREMELK’ was used in the course of trade of more than local significance in the Netherlands for activities providing specialized knowledge and knowhow in nutrition for young animals (lambs, calves and piglets) by using high quality milk replacers and by providing support for veal farmers.

2. The right under the applicable law

Trade names are the names used to identify businesses. Trade names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

In the present case, the opponent relies on the trade name ‘KLAREMELK’ and on Articles 6:162 Burgerlijk Wetboek and Articles 1, 5 and 5a of Dutch Law on Trade Names. The relevant provisions read:

Article 6:162 Burgerlijk Wetboek (Dutch Civil Code)

1. A person who commits a tortious act (unlawful act) against another person that can be attributed to him, must repair the damage that this other person has suffered as a result thereof.

2. As a tortious act is regarded a violation of someone else’s right (entitlement) and an act or omission in violation of a duty imposed by law or of what according to unwritten law has to be regarded as proper social conduct, always as far as there was no justification for this behaviour.

3. A tortious act can be attributed to the tortfeasor [the person committing the tortious act] if it results from his fault or from a cause for which he is accountable by virtue of law or generally accepted principles (common opinion).

Article 1 Handelsnaamwet (Dutch Law on Trade names)

According to this law a trade name is the name under which a company acts.

Article 5 Handelsnaamwet (Dutch Law on Trade Names)

It is prohibited to use a trade name, which, before the company under that name was driven, was already lawfully used by another, or one that only marginally deviates from the trade name, all this insofar as a result, due to the nature of the two companies and the place where they are established, confusion among the public between these companies is to be feared.

Article 5a Handelsnaamwet (Dutch Law on Trade Names)

It is prohibited to use a trade name, which consists of a trademark to which another company is entitled to distinguish its goods, or a name that is only slightly different, as far as, in relation to the nature of both companies and the place where they are established, a risk of confusion between those companies may exist among the public.

In its observations, the applicant claims that the opponent does not explain in detail why any of these Articles explicitly provide the possibility to the owner of a trade name of prohibiting the use of a subsequent trade mark.

As the opponent correctly pointed out, in the present case, the opposition is not based on an earlier trade mark. Moreover, the opponent also points out that there is no specific provision in Dutch law granting or extending the protection of trade names against identical or confusingly similar younger trade marks applied for or registered (this is also supported by an extract from the decision of the High Court of Netherlands – Exhibit 8 listed above in the section a) of this decision). The prohibition of use in the sense of Article 8(4) EUTMR would have to be based on general provisions of tortious acts.

The opponent furthermore provides excerpts from a judgement of 20 November 2009, in which the Supreme Court held that Article 6:162 of the Civil Code provides the user of an older trade name with additional protection against the use of a younger confusingly similar sign. This additional protection fills a gap in the statutory regulations that do not provide for a protection of an older trade name against the use of a younger confusingly similar trademark: ….the fact that for this additional unlawfulness, unlike in the provisions referred above, the likelihood of confusion (‘to be feared confusion’) is not sufficient, but the actual confusion is required and/or other additional conditions must be applied, cannot read either in the judgement or in the proceeding Opinion of the Advocate General’.

As is clear from the wording of the relevant legal texts governing the sign and the extracts from case law showing how the national courts interpret and apply them, one of the requirements for granting protection against subsequent rights is the likelihood of confusion in the mind of the public. Consequently, trade names are generally protected against subsequent marks according to the same criteria that are applicable to conflicts between registered marks, namely identity or similarity between the signs, identity or similarity between the goods or services, and the presence of a likelihood of confusion. In these cases, the criteria developed by the courts and by the Office with regard to Article 8(1) EUTMR can be applied mutatis mutandis when examining Article 8(4) EUTMR.

3. The opponent’s right vis-à-vis the contested trade mark

According to Dutch Trade Name Law, the owner of an older trade name enjoys protection against the use of a younger, confusingly similar trade mark and if this use is a tortuous act.

Therefore, the conditions to be met are that the signs are identical or confusingly similar and that the business operation areas are similar and that the younger sign is used in a manner which may lead to its being confused with the protected sign. Therefore, the comparison of the signs and comparison of the goods and the business activities of the company is required in order to establish the risk of confusion as stated above.

Likelihood of confusion

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 among others include the similarity of the signs, the similarity of the goods and services

The contested trade mark must be likely to lead the public to believe that the goods or services to be offered by the applicant are the opponent’s goods or services. Therefore, it is necessary to examine whether, on a balance of probabilities, it is likely that a substantial part of the relevant public will be misled into purchasing the applicant’s goods or services in the belief that they are of the opponent’s.

Account must be taken that affinity between the business areas involved is needed. This implies points of contact between the goods and services of the companies on the markets and similarities in the distribution channels and the usability of the products and services.

1. The goods and services

The opposition is directed against the following goods and services of the contested trade mark:

Class 29: Milk products; Cheese products; Cheese products, smoked cheese, cheese spread; Edible oils and fats; Milk and milk products; Eggs; Yoghurt and Drinking yogurts, Cream [dairy products], Whipped cream, Smetana [sour cream]; coffee milk; Dairy substitutes.

Class 30: Pastries and confectionery based on dairy; Desserts (confectionery); Edible ices; Ice, Gruel, Puddings, Bavarian cream.

Class 35: Advertising; Advertising; Business management; Business administration; Office functions; Marketing services; Market canvassing, market research and market analysis; Business mediation in the purchase and sale, import and export, and wholesaling and retailing of dairy products, cheese, cheese products, smoked cheese, cheese spread, edible oils and fats, milk and milk products, eggs, yogurt and drinking yogurts, cream, whipped cream, sour cream, coffee milk, dairy substitutes, pastries and confectionery based on dairy, desserts, edible ices, ice, gruel, puddings, Bavarian creams, and other foodstuffs and beverages; Organisation of events for commercial and advertising purposes; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet.

The opponent is using its trade name for providing specialized knowledge and knowhow in nutrition for young animals (lambs, calves and piglets) by using high quality milk replacers and by providing support for veal farmers.

Contested goods in Class 29:

The opponent states that although the contested application was filed for dairy products in the wider sense, it is clearly also being used for dairy farmers, since the website of the applicant is explicitly seeking to collaborate with dairy farmers (the opponent provided evidence in this regard). Also, as stated by the opponent, it has been demonstrated in Exhibit 5, that both the opponent and the applicant attend the same international trade show and thus clearly operate in the same trade circles.

Indeed, there is some connection between the contested milk products; milk and milk products; dairy substitutes since milk and dairy substitutes may be in competition (young calf may be fed by milk replacers or milk) and the goods also have the same general purpose of nutrition. As demonstrated by the opponent, the goods may also target the same end consumer. Therefore, there is some similarity between the applicant’s goods and the opponent’s activities.

On the other hand the contested cheese products; cheese products, smoked cheese, cheese spread; edible oils and fats; eggs; yoghurt and drinking yogurts, cream [dairy products], whipped cream, smetana [sour cream]; coffee milk have nothing in common with the opponent’s provision of dairy products and specialized knowledge and knowhow regarding nutrition for young animals by using high quality milk replacers and by providing intensive support for veal farmers and are considered to be dissimilar.

Contested goods in Class 30:

There is no similarity between the contested goods in Class 30 and the opponent’s activities. The nature and the intended purpose of the applicant’s goods at issue are completely different from the business activities of the opponent’s company. They are also not in competition, nor are they complementary.

Contested services in Class 35:

The contested wholesaling and retailing of dairy products, milk and milk products, dairy substitutes and other foodstuffs and beverages; Consultancy and information regarding the aforesaid services; The aforesaid services also provided via electronic networks, such as the Internet share some similarities with the opponent’s activities. Despite their different nature, the companies providing specialized knowledge and knowhow in nutrition for young animals (lambs, calves and piglets) by using high quality milk replacers and by providing support for veal farmers may also provide related services, such as the retail of dairy products as shown by the opponent in its submissions. Specifically, in relation to the services wholesaling and retailing of foodstuffs and beverages, these are very broadly defined and can encompass also products for animals. They target the same relevant public and are rendered by the same undertakings.

The remaining services advertising; advertising; business management; business administration; office functions; marketing services; market canvassing, market research and market analysis; business mediation in the purchase and sale, import and export, and wholesaling and retailing of cheese, cheese products, smoked cheese, cheese spread, edible oils and fats, eggs, yogurt and drinking yogurts, cream, whipped cream, sour cream, coffee milk, pastries and confectionery based on dairy, desserts, edible ices, ice, gruel, puddings, Bavarian creams; organisation of events for commercial and advertising purposes; consultancy and information regarding the aforesaid services; the aforesaid services also provided via electronic networks, such as the Internet are dissimilar to the opponent’s providing specialized knowledge and knowhow in nutrition for young animals (lambs, calves and piglets) by using high quality milk replacers and by providing support for veal farmers. The nature, the intended purpose, the pertinent distribution channels and the targeted consumers of the goods at issue are completely different from the business activities of the opponent’s company. The goods are not in competition with the opponent’s business activities, nor are they complementary.

2. The signs

KLAREMELK
Earlier sign	Contested sign

The relevant territory is the Netherlands.

The earlier trade name and the contested mark under comparison are both composed of the words ‘KLARE’ and ‘MELK’. In Dutch the word ‘KLARE’ means clear and the word ‘MELK’ means ‘milk’. The contested mark is moreover composed of a figurative element depicting a landscape with a windmill, a house in the distance and a bridge. The opponent argues that the figurative element will immediately create a link between the sign and the fact that the contested mark is a Dutch mark. The Opposition Division agrees that the depiction is so typical that it would bring to mind something of Dutch origin, and therefore the distinctiveness of the figurative element is rather low.

Furthermore, even if the distinctiveness of the expression ‘clear milk’ may be allusive in relation to the activities and goods/services at hand, these considerations are rather immaterial, since the same concept is contained in both verbal components under comparison and they are on equal footing as concerns their distinctiveness.

Visually, the signs coincide in the words ‘KLARE MELK’. They differ in the fact that in the earlier trade name the letters are written together while in the contested mark they are written in two words, however the space in the contested mark introduces only a small visual difference. Furthermore, the signs differ in the figurative element of the contested mark (a landscape with A windmill, a house in the distance and a bridge which has a rather low distinctive character) and in the two lines placed above and below the verbal element ‘KLARE MELK’.

Therefore, the signs are highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛KLARE MELK’, present in both signs. The space in the contested mark is not perceptible aurally.

Therefore, the signs are aurally identical.

Conceptually, as was indicated above, the signs completely coincide in their verbal elements, which are also placed in the same sequence and mirror the same meanings. Furthermore, the contested mark also contains the concept of a landscape with a windmill, a house in the distance and a bridge, which however has a rather low distinctive character in relation to the goods and services. Therefore, the signs are conceptually similar to a high degree.

Taking into account that the signs have been found similar in at least one aspect of the comparison, the examination will proceed.

3. Global assessment of the conditions under the applicable la

A danger 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 signs in question, come from the same undertaking or, as the case may be, from economically-linked undertakings. Whether a danger of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent (i.e. the similarity of the signs, the similarity of the goods and services).

In the present case, it is evident that the danger of confusion exists. The signs are visually and conceptually highly similar and aurally identical. Some of the contested goods and services share some similarities with the opponent’s activities. With regard to these goods and services, there is a risk that they will be taken to be the opponent’s since, as explained above, the signs show strong similarities from all aspects of comparison. Therefore, the opponent’s customers are likely to perceive these goods and services to be marketed under the contested trade mark as originating from the opponent. While this does not necessarily lead to damage being caused in all possible cases, damage is the most likely result, as in the present case,

Consequently, all the conditions required by Dutch national law are fulfilled.

d) Conclusion

Considering all the above, the Opposition Division finds the opposition is partially well founded on the basis of the opponent’s earlier trade name. Therefore, the contested trade mark must be rejected for all the contested goods and services found to have some similarities with the opponent's activities.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the danger of confusion between the signs, the opposition based on this earlier right and the national law invoked by the opponent cannot be successful for these goods and services.

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

Oana-Alina STURZA

Janja FELC

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.