OPPOSITION No B 2 995 879

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307, Essen, Germany (opponent), represented by Schmidt, Von Der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft MBB, Haumannplatz 28, 45130, Essen, Germany (professional representative)

a g a i n s t

S. Malhotra & CO. AG, Haldenstrasse 5, 6340 Baar, Switzerland (applicant), represented by Sonia del Valle Valiente, C/ Miguel Angel Cantero Oliva, 5, 53, 28660 Boadilla del Monte (Madrid), Spain (professional representative).

On 16/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 995 879 is partially upheld, namely for the following contested goods:

Class 16: Paper and cardboard; printed matter; bookbinding material; photographs; Stationery; adhesives for stationery or household purposes; Artists' materials; paintbrushes; office requisites; Drawing materials.

2. European Union trade mark application No 17 102 419 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 102 419 for the word ‘ALTISSIMO’. The opposition is based on European Union trade mark registrations No 2 019 867, No 3 360 955, No 10 609 295 and No 12 749 586, ‘ALDI’, European Union trade mark registrations No 11 730 322 and No 11 768 041, ‘EINFACH ALDI’, and European Union trade mark registrations No 11 181 807 ‘ALDI TALK’, No 11 181 831 ‘ALDI MOBILE’ and No 14 251 251 ‘Aldissimo’. The opponent invoked Article 8(1)(b) and, in relation to earlier European Union trade mark registration No  3 360 955, ‘ALDI’, Article 8(5) EUTMR.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 251 251 ‘Aldissimo’ in part A).

A) LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR in relation to the opponent’s European Union trade mark registration No 14 251 251 ‘Aldissimo’

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.

a) The goods

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

Class 16: Paper, cardboard; Printed matter; Books; Cookery books; baking books; Catalogues; Informational sheets; Guides; journals; Instructional and teaching material (except apparatus); Photographs; Stationery; Greetings cards; Notelets; Note cards; Blocks of paper; Calendars; Stickers [stationery]; Signboards of paper or cardboard.

The contested goods are the following:

Class 3: Non-medicated soaps; perfumery; essential oils; non-medicated cosmetics; non-medicated hair lotions.

Class 9: Scientific apparatus and instruments; Nautical apparatus and instruments; Surveying apparatus and instruments; Photographic apparatus; Photographic equipment; Photographic instruments; Optical apparatus and instruments; Weighing apparatus and instruments; Measuring apparatus and instruments; Cinematographic apparatus and instruments.

Class 14: Precious metals; Alloys of precious metal; Jewellery; Precious stones; Chronometric instruments; semi precious stones; Horological instruments.

Class 16: Paper and cardboard; printed matter; bookbinding material; photographs; Stationery; adhesives for stationery or household purposes; Artists' materials; paintbrushes; office requisites; Drawing materials.

Class 18: Leather and imitations of leather; animal skins and hides; Luggage; All-purpose carrying bags; umbrellas and parasols; walking sticks; Saddlery; Whips; Harnesses; Clothing for animals; Collars of animals; Animal leashes.

Class 22: Raw fibrous textile materials.

Class 23: Yarns and threads, for textile use.

Class 24: Textiles and substitutes for textiles; household linen; curtains of textile or plastic.

Class 25: Clothing; Footwear; Headgear.

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 16

Paper and cardboard; Printed matter; Photographs; Stationery are identically contained in both lists of goods (including synonyms).

There is an overlap between the contested bookbinding material and the earlier paper insofar as both categories include book repair paper for book binding. Therefore, they are identical.

The contested adhesives for stationery or household purposes; office requisites; drawing materials are included in the broad category of the earlier stationery. Therefore, they are identical.

Stationery includes writing materials, as pens, pencils, writing/letter paper and envelopes. Artists' materials are items that could be find in an art supplies shop. These could include paints, brushes, canvas, chalk, crayon, enamel, glaze, ink, etc. Therefore, the contested artists' materials; paintbrushes are similar to the earlier stationery as they have the same purpose. They usually coincide in producer and distribution channels.

Contested goods in Class 3, 9, 14, 18, 22, 23 24 and 25

The contested goods in these classes are cleaning, perfumery and cosmetics preparations, various specific scientific apparatus and instruments, precious metals and their alloys, jewellery, clocks and precious stones, leather and its imitations, animal skins and hides and goods made from these materials, textiles, yarns and threads, and clothing, footwear and headgear. These contested goods have nothing in common with the opponent’s goods that are paper, cardboard and goods made from these materials, printed matter and stationery. They have a different nature, intended purpose and method of use. Their producers, distribution channels and relevant publics are also different. Furthermore, these goods are neither complementary nor in competition. Consequently, they are dissimilar.

The contested photographic apparatus and instruments are also dissimilar to the opponent’s photographs as they have a different nature and method of use. Their distribution channels do not coincide and the public is aware that the producers of photographic apparatus and instruments are usually not the same as the persons taking pictures.

b) Relevant public — degree of attention

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

In the present case, the goods found to be identical and similar are directed at the public at large which will pay an average degree of attention when purchasing the relevant goods.

c) The signs

Aldissimo	ALTISSIMO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The earlier mark is the word ‘Aldissimo’ and the contested sign is the word ‘ALTISSIMO’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in lower or upper case letters.

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

The element ‘ALTISSIMO’ of the contested sign is composed of the word ‘ALT(O)’ meaning ‘high’ together with the suffix ‘ISSIMO’ and will be understood as ‘very high’ or ‘God’ by the public which speaks Italian, Portuguese and Spanish, due to the identity in Italian or closeness of the word to its equivalent in these languages (altisimo). Although the suffix means extreme, it is unrelated to the relevant goods and is, therefore, distinctive. For the rest of the relevant public it has no meaning and is, therefore, also distinctive.

Visually, the signs coincide in all their letters except in their letter in the third position, ‘D’ in the earlier mark and ‘T’ in the contested sign.

Therefore, the signs are highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in almost all the syllables, present identically in both signs ‘AL/*I/SSI/MO’. The pronunciation only differs slightly in the sound of the letters ‘D’ of the earlier mark and ‘T’ of the contested sign in their second syllables. The signs have the same vowel sequence ‘A-I-I-O’. Therefore, the rhythm and intonation of the signs are the same.

Therefore, the signs are highly similar.

Conceptually, although part of the public in the relevant territory will perceive the meaning of the contested sign as explained above, the other sign has no meaning in those territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the rest of the public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) 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 in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) 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).

The goods are partly identical, partly similar and partly dissimilar, and target the public at large, which will have an average degree of attention. Furthermore, the earlier mark has a normal degree of distinctiveness.

The signs under comparison are visually and aurally similar to a high degree and the conceptual aspect either is not similar or has no influence on the assessment of their similarity.

Both signs are word marks made up of a single word and they coincide in eight letters out of nine. The signs have more similarities than differences and consequently, there is a likelihood of confusion on the part of the relevant public.

Therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 14 251 251 ‘Aldissimo’.

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

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

The opposition will now be examined on the ground of Article 8(1)(b) EUTMR in relation to the rest of the opponent’s European Union trade mark registrations in part B).

B) LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR in relation to the opponent’s European Union trade mark registrations No 2 019 867, No 3 360 955, No 10 609 295 and No 12 749 586, ‘ALDI’, European Union trade mark registrations No 11 730 322 and No 11 768 041, ‘EINFACH ALDI’, and European Union trade mark registrations No 11 181 807 ‘ALDI TALK’ and No 11 181 831 ‘ALDI MOBILE’.

a) The goods

The goods on which the opposition is based are:

‘ALDI’: in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 31, 34, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.

‘EINFACH ALDI’: in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45.

‘ALDI TALK’: in Classes 9, 35, 37 and 38.

‘ALDI MOBILE’: in Classes 9, 35, 37 and 38.

The remaining contested goods are the following:

Class 3: Non-medicated soaps; perfumery; essential oils; non-medicated cosmetics; non-medicated hair lotions.

Class 9: Scientific apparatus and instruments; Nautical apparatus and instruments; Surveying apparatus and instruments; Photographic apparatus; Photographic equipment; Photographic instruments; Optical apparatus and instruments; Weighing apparatus and instruments; Measuring apparatus and instruments; Cinematographic apparatus and instruments.

Class 14: Precious metals; Alloys of precious metal; Jewellery; Precious stones; Chronometric instruments; semi precious stones; Horological instruments.

Class 18: Leather and imitations of leather; animal skins and hides; Luggage; All-purpose carrying bags; umbrellas and parasols; walking sticks; Saddlery; Whips; Harnesses; Clothing for animals; Collars of animals; Animal leashes.

Class 22: Raw fibrous textile materials.

Class 23: Yarns and threads, for textile use.

Class 24: Textiles and substitutes for textiles; household linen; curtains of textile or plastic.

Class 25: Clothing; Footwear; Headgear.

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

b) 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 assumed to be identical are directed at the public at large and at professionals. The relevant public’s degree of attention towards the goods is likely to vary according to the category of goods in question, ranging from average to high depending on the nature and the price of the goods.

The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 2 019 867, No 3 360 955, No 10 609 295 and No 12 749 586, ‘ALDI’.

c) The signs

ALDI	ALTISSIMO
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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

The earlier mark is the word ‘ALDI’ and the contested sign is the word ‘ALTISSIMO’.

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

The element ‘ALTISSIMO’ of the contested sign is composed of the word ‘ALT(O)’ meaning ‘high’ together with the suffix ‘ISSIMO’ and will be understood as ‘very high’ or ‘God’ by the public which speaks Italian, Portuguese and Spanish, due to the identity in Italian or closeness of the word to its equivalent in these languages (altisimo). Although the suffix means extreme, it is unrelated to the relevant goods and is, therefore, distinctive. For the rest of the public this term lacks any meaning and is therefore distinctive.

Visually, the signs coincide in the letters ‘AL*I’. They differ in their third letters ‘D’ of the earlier mark and ‘T’ of the contested sign and in the additional final letters ‘SSIMO’ of the contested sign which have no counterparts in the earlier mark. The signs only coincide in three out of nine letters in the contested sign.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sounds of the first syllable, /al/, whereas their second syllables are pronounced slightly differently, namely as /di/ in the earlier mark and /ti/ in the contested sign. In countries such as Spain, the pronunciation of the signs’ third letters, /d/ versus /t/, will be even more different. Furthermore, the signs differ in the additional syllables /ssi/mo/ in the contested sign which have no counterparts in the earlier mark. The contested sign’s pronunciation is much longer due to the higher number of syllables.

Therefore, the signs are aurally similar to a low degree.

Conceptually, although part of the public in the relevant territory will perceive the meanings of the contested sign as explained above, the other sign has no meaning in those territories. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

For the rest of the public neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) Distinctiveness of the earlier marks

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

According to the opponent, the earlier trade mark No 3 360 955 has an enhanced degree of distinctiveness as a result of the use that has been made of the mark in Germany and the other countries of the European Union in connection with part of the services for which it is registered, namely:

Class 35: Retailing in all product areas; online retailing in all product areas; running supermarkets, retail outlets and discount retail outlets; advertising on the Internet, for others; providing information on the Internet, namely information about consumer products, consumer advice information and customer service information.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 SOH1: A Wikipedia article regarding the history of ALDI.

 SOH 2 and 3: Two studies by the Market Research Institute A.C. Nielsen GmbH, comparing the results of representative surveys in Germany in 1996 and 1997. According to these surveys, the mark ‘ALDI’ seems to have been known by 100% of the public in Germany in 1996.

 SOH 4 An extract from an article titled ‘Aldi avanciert zur Topmarke’, dated 17/09/2004, in which it is stated that Aldi is the fourth most popular trade mark for woman aged between 30 and 49 years.

 SOH 5 An extract from a newspaper dated 15/11/2004, written in German (and translated into English), in which it states that ALDI is the company with the second best reputation in Germany after Porsche.

 SOH 6 A decision from the Appeal Court in Hamm of 01/04/2003, in which it is ascertained that an outstanding reputation is ascribed to ‘ALDI’ as a trade mark in Germany.

 SOH 7 An article from the website www.tagesschau.de, dated 15/11/2004, stating that ‘Germany’s most successful company is the discounter chain ALDI’ because of ‘its reputation as a low-priced supplier’.

 SOH 8, 9 and 10 Results of the Reader’s Digest ‘Most Trusted Brand 2005’ survey, AC Nielsen’s Shopper Trends 2004 and EXBA 2003, all of which confirm that ‘ALDI’ is the strongest trade mark in Germany.

 SOH 11 and 12 A copy of an article dated 8 April 2014 entitled ‘Best Retail Brands: ALDI bleibt starkste deutsch Marke’ in Marknartukl-Magazin.de an EN transl.

 SOH 13 A printout from an article dated 27/05/2015 stating that ‘Aldi overtakes Tesco in Brandz Top 100 global brand value ranking’.

 SOH 14 An article from BrandZ Top 100 Most valuable global Brands 2015’. According to this research, the trademark ‘ALDI’ holds the 90^th place in the Top 100 most valuable global brands.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use for the opponent’s goods and services in question.

The indications on the services for which the earlier mark has become recognised by consumers demonstrate that retail services are the opponent’s services that are offered and provided under the mark ‘ALDI’. The evidence concerns retail services (in general) in Class 35, but no reference is made to the relevant goods and services.

Consequently, the assessment of the distinctiveness of the earlier mark No 3 360 955 ‘ALDI’ will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of all the earlier marks ‘ALDI’ must be seen as normal.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison ‘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).

The opponent has claimed that the earlier mark No 3 360 955 on which the opposition is based have an enhanced degree of distinctiveness as a result of the use that has been made of the mark. However, for the reasons stated above, the opponent has not satisfied the conditions for the application of those arguments and the assessment of a likelihood of confusion must, therefore, be based on the inherent distinctiveness of the mark in question. Therefore, the distinctiveness of all the earlier marks ‘ALDI’ must be seen as normal.

Although the conflicting signs have some letters in common, such as their first two letters and their fourth letter, they also have significant dissimilarities as a result of the differences in the letters ‘D’ versus ‘T’ and the additional letters ‘SSIMO’ in the contested sign. Since the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C 334/05 P, Limoncello, EU:C:2007:333, § 35), the striking dissimilarities present outweigh the signs’ similarities and, consequently, cause a rather different overall impression.

Taking into account that the similarities of the conflicting signs are outweighed by the dissimilar endings, namely ‘DI’ and ‘TISSIMO, these differences between the marks are clearly perceptible. Confusion would be even less likely considering that, for some of the relevant goods, the relevant public is knowledgeable and attentive.

The opponent refers to previous decisions of the Office (3207C LABELLO/LABELLISSIMO of 07/12/2010, B 269 409 NETIS/NETISSIMO of 26/02/2004, B 1 166 578 VITALIS/VITALISSIMO of 26/11/2008 and B 1 527 510 PRESTO/PRESTISSIMO of 28/03/2011) to support its arguments. 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).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings because the number of coinciding letters is higher than in the actual case and the signs were conceptually similar.

Considering all the above, even assuming that the goods in question are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

- European Union trade mark registrations No 11 730 322 and No 11 768 041, ‘EINFACH ALDI’;

- European Union trade mark registration No 11 181 807 ‘ALDI TALK’;

- European Union trade mark registration No 11 181 831 ‘ALDI MOBILE’.

These other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain additional words such as ‘EINFACH, ‘TALK’ and ‘MOBILE’, which are not present in the contested sign. Therefore, no likelihood of confusion exists with respect to those earlier marks.

The opposition will now be examined on the ground of Article 8(5) EUTMR in relation to earlier European Union trade mark No 3 360 955.

C) REPUTATION — ARTICLE 8(5) EUTMR in relation to earlier European Union trade mark No 3 360 955, ‘ALDI’.

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

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation because the evidence concerns retail services in general but no reference is made to the relevant goods and services. Under these circumstances, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Claudia ATTINA

Loreto URRACA LUQUE

Jessica LEWIS

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.