OPPOSITION No B 2 954 140

Blue Indico Investments, S.L., Paseo de Recoletos, 10, 28001 Madrid, Spain (opponent), represented by Baker & Mckenzie, Calle de José Ortega y Gasset, 29, 28006 Madrid, Spain (professional representative)

a g a i n s t

Abox42 GmbH, Amalienbadstr. 41, 76227 Karlsruhe, Germany (applicant), represented by Tobias Sedlmeier, Sickingenstraße 1a, 69126 Heidelberg, Germany (professional representative).

On 08/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 954 140 is upheld, with the exception of all contested services in Class 35, namely:

Class 35: Computerized file management; consultancy relating to data processing; computerized file management; computerised data processing; computerised data verification; computerized file management; computerized file management; compilation of statistics; marketing services; merchandising; online advertisements; systemization of information into computer databases; advertising; compilation of information into computer databases.

2. Consequently, European Union trade mark application No 16 962 011 may proceed for the aforementioned services only.

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 16 962 011 ‘dotIO’ (word). The opposition is based on Spanish trade mark registration No 3 605 106 (figurative). 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.

1. The goods and services

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

Class 9: Scientific, nautical, geodetic, photographic, cinematographic, optical, weighing, measuring, signaling, checking (inspection), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, distributing, transforming, accumulating, regulating or controlling electricity; apparatus for the recording, transmission or reproduction of sound or images; magnetic record carriers, acoustic discs; CDs, DVDs and other digital recording media; mechanisms for prepaid devices; cash registers, calculating machines, data processing equipment, computers; software; fire extinguishers; software development tools; software development kits(sdk).

Class 42: Scientific and technological services, as well as research and design services in these areas; industrial analysis and research services; design and development of computer and software equipment; software update; consultancy in design and development of software; consultancy in design and development of hardware; creation, design, development and maintenance of web pages for third parties; expert advice related to technology; design and development of new technologies for third parties; research on technology; technology consultancy services.

The contested goods and services are the following:

Class 9: Alarms; alarms and warning equipment; apparatus for analysis [other than for medical use]; connections for electric lines; antennas; automatic control apparatus; fire control apparatus; integrated circuit chips; magnetic encoders; computers; computer operating systems; computer databases; computer hardware; peripherals adapted for use with computers; computer software; data processing apparatus; detectors; diagnosis apparatus (not for medical purposes); theft prevention apparatus, other than for vehicles; burglar alarms; electronic baby monitoring devices; electronic burglar alarms; electronic checking apparatus; electronic meters; electronic switchgear; electronic safety monitoring apparatus; electronic controllers; electronic control instruments; electronic control units; electronic control systems; electronic systems for home networks; electronic surveillance apparatus; target surveillance apparatus [electronic]; electric cables; audio- and video-receivers; remote controllers for controlling electronic products; remote control apparatus; fire alarms; frequency meters; receivers of electronic signals; hydrometers; hygrometers; semiconductors; data processing equipment; interactive touch screen terminals; interfaces for computers; gradient indicators; joining units [electrical contacts]; life-saving apparatus and instruments; readers [data processing equipment]; air analysis apparatus; manometers; mathematical instruments; measuring apparatus; microprocessors; monitors [computer hardware]; gradient indicators; target surveillance apparatus [optical]; programmable controllers; projection apparatus; pyrometers; smoke detectors; smoke detectors; sound locating instruments; commutators; scanners [data processing equipment]; transmitters of electronic signals; security control apparatus; voltmeters; computer memory devices; temperature indicating apparatus; video surveillance systems; anemometers; wireless local area network devices; access control devices.

Class 35: Computerized file management; consultancy relating to data processing; computerized file management; computerised data processing; computerised data verification; computerized file management; computerized file management; compilation of statistics; marketing services; merchandising; online advertisements; systemization of information into computer databases; advertising; compilation of information into computer databases.

Class 42: Updating of computer software; updating of software data bases; consultancy in the area of information technology (IT); consulting services in the field of computer software development and design; provision of search engines for the internet; consultancy in the field of computers; design of computer databases; recovery of computer data; computer hardware and software consultancy; advisory services relating to computer programming; computer system analysis; computer systems design; cloud computing; software design for others; computer virus protection services; design and development of computer hardware; design and development of computers and software; development of computer software; troubleshooting of computer hardware and software problems; monitoring of computer systems by remote access; computer software research; creating and maintaining web sites for others; hosting computer sites; implementation of computer programs; infrastructure as a service [IaaS]; installation of software; conversion of computer programs and data, other than physical conversion; conversion of data or documents from physical to electronic media; duplicating computer programs; custom design of software packages; software customisation services; platform as a service [PaaS]; quality control relating to computer systems; quality control relating to computer software; computer software (maintenance of –); maintenance of data bases; server hosting; software as a service [SaaS]; computer software design; software creation; software engineering; studies (technical project-); computer software technical support services; technical support relating to computer software; technological consultation services; rental of computers and computer software; computer rental; rental of web servers; maintenance of software; recovery of computer data; providing opportunities for use of computer software and computer systems over data networks through rental of computer software and computer systems.

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

Computers, data processing equipment, life-saving apparatus and instruments and measuring apparatus are identically contained in both lists of goods.

The contested alarms; alarms and warning equipment; fire control apparatus; theft prevention apparatus, other than for vehicles; burglar alarms; electronic baby monitoring devices; electronic burglar alarms; electronic safety monitoring apparatus; electronic surveillance apparatus; target surveillance apparatus [electronic]; fire alarms; target surveillance apparatus [optical]; security control apparatus; video surveillance systems; access control devices are, or include among others, different types of warning equipment, which often warns by signalling, e.g. by producing a sound or light. Because of this overlap, identity is found between the listed contested goods and the opponent’s signalling apparatus and instruments.

The contested apparatus for analysis [other than for medical use]; diagnosis apparatus (not for medical purposes); air analysis apparatus; sound locating instruments are goods that (usually) function by measuring certain values. Therefore, they at least overlap with the opponent’s measuring apparatus and instruments and hence - are identical to them.

The contested connections for electric lines; integrated circuit chips; electronic switchgear; electronic control instruments; electric cables; semiconductors; joining units [electrical contacts]; commutators are different types of apparatus and instruments for electricity. As such, they are included in the broad category of the opponent’s apparatus and instruments for conducting, distributing, transforming, accumulating, regulating or controlling electricity and are therefore, identical to them.

The contested antennas; audio- and video-receivers; receivers of electronic signals; monitors [computer hardware]; projection apparatus; transmitters of electronic signals are, or include among others, different apparatus, used in the process of transmission and reproduction of sound or image. Therefore, they are included in the broad category of apparatus for the recording, transmission or reproduction of sound or images of the opponent. Hence, these goods are identical.

The contested automatic control apparatus; electronic controllers; electronic control units; remote controllers for controlling electronic products; remote control apparatus; programmable controllers are different types of controllers. A controller is a device that controls the transfer of data from an apparatus (e.g., a computer) to a peripheral device and vice versa (e.g., a console, keyboard, printer, mouse or screen). The opponent’s data processing equipment is generally deemed to include any equipment or interconnected system or sub-system of equipment used in the acquisition, access, interaction, storage, manipulation, management, control, display, switching, interchange, transmission or reception of data or information. Consequently, the listed contested goods are identical to the opponent’s data processing equipment, which as a broader category, includes them (05/09/2012, R 98/2011-2, Dominion, § 24).

Further, magnetic encoders of the contested goods, are devices, circuits, transducers, software programs or algorithms that convert information from one format or code to another, for the purpose of standardisation, speed, secrecy, security or saving space by reducing size. Hence, they are included in the earlier mark’s data processing equipment and are therefore, identical to it.

The contested computer operating systems; computer software; interfaces for computers are, or include, among others, software. Therefore, they are identical to the opponent’s software.

The contested computer hardware; peripherals adapted for use with computers; data processing apparatus; electronic systems for home networks; electronic control systems; interactive touch screen terminals; readers [data processing equipment]; scanners [data processing equipment] are, or include, among others, data processing equipment. Therefore, they are identical to the opponent’s data processing equipment.

Further, the contested detectors; electronic checking apparatus; smoke detectors (listed twice) are different types of checking devices. Some apparatus and instruments check by measuring, e.g. supervising processes by checking gauges which are measuring certain values. Because of this overlap, identity is found between these goods and the opponent’s measuring apparatus and instruments.

The contested electronic meters; frequency meters; hydrometers; hygrometers; manometers; mathematical instruments; gradient indicators; pyrometers; temperature indicating apparatus; voltmeters; anemometers are, or include among others, measuring apparatus and instruments, and as such, fall under the broad notion of measuring apparatus and instruments of the opponent. These goods are therefore identical.

The contested computer memory devices includes among others the earlier right’s CDs. Since the Opposition Division may not dissect ex officio the broad category of the contested goods, they are considered identical to the mentioned goods of the opponent.

The contested computer databases; microprocessors and wireless local area network devices may share with the opponent’s software the same manufacturer, distribution channels and end users. They further are complementary. Hence, they are considered similar.

Contested services in Class 35

As a first note, the opponent refers to previous decisions of the Office to support its argument that the contested services in Class 35 are similar to its services in Class 42. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

The contested services computerized file management (listed four times); consultancy relating to data processing;; computerised data processing; computerised data verification; compilation of statistics; systemization of information into computer databases; compilation of information into computer databases are all office functions. They are aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose. They mainly cover activities that assist in the running of a commercial enterprise. It follows from this that these contested services have a different purpose from the opponent’s goods and services in Classes 9 and 42, which are among others, IT related. The companies that assist other companies in the organisation and normal running of their business do not tend to be involved in the production, retail, or rendering of IT goods and services, since these services are commonly provided by different specialised companies. Furthermore, they differ in pertinent distribution channels and are neither in competition with nor complementary to each other. The mere fact that computers may be used for the provision of some of the contested services, such as computerized file management, does not render them similar, since the consumer will not expect the manufacturer of these goods to render such services or vice versa. Therefore, the Opposition Division concludes that the services under comparison are dissimilar.

Further, the contested marketing services; merchandising; online advertisements; advertising are advertising–related services, which also have nothing in common with the goods and services of the opponent. Advertising services are provided by undertakings specialized in this particular field. The fact that they can be provided via or by using the help of information technologies, does not make them similar in purpose, nature or manner of provision to the opponent’s goods and services. Their end users and distribution channels are completely distinct and they are neither complementary nor in competition. Hence, these services of the application are dissimilar to the goods and services of the opponent.

Contested services in Class 42

The contested updating of computer software is identical to the earlier software update, since these are synonym.

The contested design and development of computer hardware and design and development of computers and software are identical to the opponent’s design and development of computer and software equipment, since they either include or overlap with these services.

Consultancy in the area of information technology (IT) of the contested services is a broad term, including among others the opponent’s consultancy in design and development of software. Since the Opposition Division may not dissect ex officio the broad category of the contested services, the referenced services are considered identical.

Consulting services in the field of computer software development and design is identical to the earlier mark’s consultancy in design and development of software, since these are synonyms.

Computer software research of the contested sign is included, and is therefore, identical to the opponent’s industrial analysis and research services.

The contested consultancy in the field of computers and computer hardware consultancy are included in, and/or overlap with the opponent’s consultancy in design and development of hardware. Hence, these services are identical.

Computer software consultancy of the contested sign includes the opponent’s consultancy in design and development of software. Since the Opposition Division may not dissect ex officio the broad category of the contested sign, the referenced services are considered identical.

Creating and maintaining web sites for others of the contested sign is included in, and/or overlaps with the opponent’s creation, design, development and maintenance of web pages for third parties. Hence, these services are identical.

The contested software engineering falls under the general category of scientific and technological services, as well as research and design services in these areas of the opponent. These services are therefore identical.

Studies (technical project-) of the applicant are included in the earlier mark’s research on technology. These services are therefore identical.

Technological consultation services of the applicant and technology consultancy services of the opponent are synonyms referring to the same thing. These services are therefore identical.

The remaining services of the contested sign, namely updating of software data bases; provision of search engines for the Internet; design of computer databases; recovery of computer data; advisory services relating to computer programming; computer system analysis; computer systems design; cloud computing; software design for others; computer virus protection services; development of computer software; troubleshooting of computer hardware and software problems; monitoring of computer systems by remote access; hosting computer sites; implementation of computer programs; infrastructure as a service [IaaS]; installation of software; conversion of computer programs and data, other than physical conversion; conversion of data or documents from physical to electronic media; duplicating computer programs; custom design of software packages; software customisation services; platform as a service [PaaS]; quality control relating to computer systems; quality control relating to computer software; computer software (maintenance of –); maintenance of data bases; server hosting; software as a service [SaaS]; computer software design; software creation; computer software technical support services; technical support relating to computer software; rental of computers and computer software; computer rental; rental of web servers; maintenance of software; recovery of computer data; providing opportunities for use of computer software and computer systems over data networks through rental of computer software and computer systems are all software- and/or hardware-related services, which are considered similar to the opponent’s software or computers in Class 9, respectively. These services are closely linked to the respective goods. This is because in the field of computer science, producers of computers and/or software will also commonly provide computer and/or software-related services (as a means of keeping the system updated, for example). Consequently, and in spite of the fact that the nature of the goods and services is not the same, both the end users and the producers/providers of the goods and services coincide. Furthermore, they are goods and services that are complementary.

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 found to be identical or similar are partially directed at the public at large, as well as at business customers with specific professional knowledge or expertise (e.g., computer software; remote controllers for controlling electronic products). Due to their highly specialised nature, another part of these goods and services are exclusively directed at business customers (e.g., anemometers; quality control relating to computer systems).

The degree of attention with respect to the goods and services targeting the general public, as well as professional public, may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price. As for the goods and services directed at professional public only, given their specialised nature and requirements as to technical characteristics, the degree of attention is considered to be high.

3. The signs

	dotIO
Earlier trade mark	Contested sign

The relevant territory is Spain.

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 composed of a figurative devices and the verbal element ‘DATIO’. The figurative element, represented in blue, grey and white, may be seen by part of the public as a ball-and-stick model of a molecular structure. Others will not perceive any concept in it. In view of the goods and services in question, the distinctiveness of this element is normal, irrespective of how it is perceived.

The word element ‘DATIO’ is represented in a quite standard typeface, where the first three letters ‘DAT’ are in grey, while the fourth and fifth ‘IO’ – in blue. On account of the fact that the Spanish word ‘DATOS’ has the meaning of ‘information in a digital form’ and that ‘IO’ is a standard suffix in Spanish for forming adjectives and nouns, it is likely that the vast majority of the Spanish public sees ‘DATIO’ as an in invented (Spanish-like) word, alluding to the concept of ‘data’. The different colours of ‘DAT’ and ‘IO’ does not necessarily mean that the public will break down the element into these two components, given that as will be analysed below, a very minor part of the consumers might see a particular meaning in ‘IO’.

Since part of the relevant goods and services are related to data and databases, it is considered that ‘DATIO’ will be of lesser distinctiveness with respect to part of the goods and services (e.g. data processing equipment), since it will allude to characteristics they have, and of normal distinctiveness for the rest (e.g. life-saving apparatus and instruments).

Even though it is not excluded that, as the applicant claims, a very limited part of the professional public sees in ‘IO’ the meaning of an abbreviation of the English ‘input/output’, and thus – breaks the element into ‘DAT’ (referring to ‘data’) and ‘IO’, this would be a very minor part of the relevant consumers. The Opposition Division does not consider that ’IO’ is a commonly used abbreviation and as such – known by the majority of the public. The evidence (a print-out from Wikipedia, where a significant number of meanings into English language of ‘IO’ are included), submitted by the applicant, does not prove this, either. Moreover, it is the Spanish public that is relevant for the case at hand. Upon considering that part of the goods and services are directed also at the public at large, that the abbreviation is not common and that the public is not generally familiar with English language, it is considered that the vast majority of the public would not see any meaning in ‘IO’.

It is settled case-law that, even if likelihood of confusion exists only for part of the relevant public, namely a non-negligible part of the relevant consumers, such a finding would be sufficient, since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (10/11/2011, T‑22/10, (Representation of a letter on a pocket), EU:T:2011:651, § 120; 20/07/2017, T‑521/15, D, ECLI:EU:T:2017:536, § 69). On a stronger argument, finding likelihood of confusion for the majority of the relevant public is sufficient for an opposition to be successful. Therefore, the possible perceptions of minor parts of the public will not be taken into account in the below analysis, which will focus on the perception of ‘DATIO’ as a single indivisible element.

Despite the somewhat weak connotations that ‘DATIO’ will evoke, given that (i) this is the only verbal element of the sign and as such will be the only element that is capable of being pronounced to refer to the sign, (ii) the figurative element of the earlier mark is not particularly imaginative or creative, while (iii) the verbal element, even though based on a weaker concept, is an invented word and as such – will be remembered by consumers, it is considered that without overshadowing the figurative device, ‘DATIO’ will be immediately grasped and remembered by the consumers.

Further, it is considered that none of the earlier mark’s elements will be clearly more eye-catching than the others.

The contested sign comprises of the single word element ‘dotio’. The fact that ‘dot’ is written in small letters, while ‘IO’ – in capital letters, is irrelevant, since word marks protect the word element(s) as such and not the way they are represented. The mark does not have any meaning. The public is not likely to break it down into separate elements, since none of its parts has a clear meaning for it. The distinctiveness of ‘dotio’ is therefore normal.

Visually, D*TIO’, which are four out of the five letters of the single element, the earlier mark is composed of, are identically present in the same order in the only word element of the earlier mark. The second letter of the respective verbal elements differ, which is ‘A’ in the earlier mark and ‘O’ in the contested sign. The marks further differ in the additional elements of the earlier mark (the figurative device, the colours used and the font of the word element). The colours of the earlier mark are not particularly striking to attract the attention, the font is quite standard, and the figurative device, without being particularly original or striking, is not capable of diminishing the existing similarity between the verbal element of the earlier mark and the only element of the contested sign.

On account of the above considerations, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘D*TIO’ and differs in the sound of the second letter of the signs, i.e. ‘A’ versus ‘O’. Given the coincidence is in four out of five letters in the same sequence, and that the differing letter is a vowel in both signs, which means that the rhythm of pronunciation will be identical, the signs are aurally similar at least to an average degree.

Even if it might be possible that a small part of the public pronounces the contested sign as [dot][ai][ou], it is not clear why the same approach would not be applied with respect to the word ‘DATIO’, since it identically contains the letters ‘IO’ at the end. The fact that these letters are written in capital letters in the contested application is irrelevant, since it is the word as such that would be protected, if the mark is registered, and not a specific way of representation. Thus, the sign could easily be reproduced in different ways, e.g. with capital letters only or with small letters, etc.

Hence, the arguments of the applicant on different pronunciation of the signs for the mentioned reasons are not accepted.

Conceptually, although the relevant public in the relevant territory will perceive a meaning in 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.

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 and services in question from the perspective of the relevant public in the relevant territory, despite the somewhat weak connotations that one of its elements may create in relation to part of the goods and services at issue, as discussed above. 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).

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).

It has been established that part of the goods and services are identical or similar and that part of them are directed at the general public and professional public, while another part – exclusively at professional public. Part of the services, namely all services in Class 35 of the contested sign, have been found to be dissimilar. The degree of attention of the relevant public regarding the goods and services, found identical or similar, varies between average and high. The signs are visually similar to an average degree, aurally similar to at least an average degree and conceptually not similar for the vast majority of the public, which will perceive the earlier mark’s verbal element ‘DATIO’ as an invented unit, without breaking it down into components.

Despite the somewhat weak connotations that the verbal element of the earlier sign may create in relation to part of the goods and services in question, it should be noted, that it is settled case-law that the finding that the earlier mark has weak distinctive character does not, in itself, preclude a finding that there is a likelihood of confusion. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Accordingly, even in a case involving an earlier mark of weak distinctive character, and a trade mark applied for which is not a complete reproduction of it, there may be a likelihood of confusion on account, in particular, of a similarity between the marks and between the goods or services covered (27/04/2006, C‑235/05 P, FLEX AIR, EU:C:2006:271, § 53).

In this particular case, the weaker connotations of ‘DATIO’ in relation to part of the goods and services may not preclude the existence of similarity between the signs, given that four out of the five letters of the single element of the contested mark are contained in the same order in the only verbal element of the earlier mark, which element has an independent distinctive role in the sign’s overall perception.

In view of the above findings, the Opposition Division finds that on the basis of the opponent’s Spanish trade mark registration, there is a likelihood of confusion for the public that does not break down ‘DATIO’ of the earlier mark, with respect to the goods and services found identical or similar. It is true that the level of attention of the relevant public is or could, inter alia, be high, but this is not considered sufficient to blur the similarities in the signs. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Since for an opposition to be successful it is sufficient that likelihood of confusion is found for a non-negligible part of the public, it follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark, namely all contested goods in Class 9 and all contested services in Class 42.

The rest of the contested services, namely those in Class 35, 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 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

Richard BIANCHI

Teodora Valentinova TSENOVA PETROVA

Alicia BLAYA ALGARRA

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.