OPPOSITION No B 3 012 906

KLK Electro Materiales, Camino de la Peñona, 38 B, 33211, Gijón, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío 4, 28010, Madrid, Spain (professional representative)

a g a i n s t

Kuala Lumpur Kepong Berhad, Wisma Taiko 1, Jalan S.P. Seenivasagam, Perak, 30000 Ipoh, Malaysia (applicant), represented by Ab Initio, 5 rue Daunou, 75002 Paris, France (professional representative).

On 21/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 012 906 is partially upheld, namely for the following contested services:

Class 37: Building construction supervision; construction; construction consultation; construction information; property development [building and construction services]; property maintenance; real estate development; residential, commercial and retail property development services; building of residential and commercial properties; building of shops, office, mills, factories, houses, condominiums apartments; building construction supervision and control, undertaking piling and structural works (building construction); electric appliance structural works (building construction); electric appliance installation and repair; installation of fittings for buildings; installation of mechanical and site equipment used in the construction of building; insulating of building; demolition of building; refurbishment of building; installation, repair and maintenance services of buildings; maintenance and repair of parts and fittings for buildings; road paving; construction of complexes for business and leisure; building sealing; pipeline construction and maintenance; roofing services; advisory services relating to building and construction services; advisory services relating to the development of property; advisory services relating to the renovation of property.

Class 42: Land surveying; construction drafting; engineering services; urban planning; engineering.

2. European Union trade mark application No 17 139 718 is rejected for all the above 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 17 139 718 for the figurative mark . The opposition is based on:

1. European Union trade mark registration No 11 628 617 ;

2. Spanish trade mark registration No 2 826 207 ;

3. Spanish trade mark registration No 742 634 ;

4. Spanish trade mark registration No 742 640 ;

5. international registration No 613 034, designating France ;

6. the trade name ‘KLK ELECTRO MATERIALES’ used in the course of trade in Spain.

The opponent invoked Article 8(1)(b) and Article 8(4) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of four earlier trade marks on which the opposition is based, namely Spanish trade mark registration No 2 826 207 (earlier right No 2), Spanish trade mark registration No 742 634 (earlier right No 3), Spanish trade mark registration No 742 640 (earlier right No 4) and international registration No 613 034 designating France (earlier right No 5).

The request was filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

On 30/07/2018 the opponent was given two months to file the requested proof of use.

The opponent did not submit any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.

According to Article 10(2) EUTMDR, if the opposing party does not provide such proof before the time limit expires, the Office will reject the opposition.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR, insofar as these earlier rights are concerned.

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

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

The examination of Article 8(1)(b) EUTMR will continue solely on the basis of earlier European Union trade mark registration No 11 628 617 (earlier right No 1), not subject to the requirement of proof of use.

a) The goods and services

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

Class 6: Common metals and their alloys; Metal building materials; Transportable buildings of metal; Materials of metal for railway tracks; Non-electric cables and wires of common metal; Ironmongery, small items of metal hardware; Pipes of metal; Safes; Goods of common metal not included in other classes; Ores; Brazing alloys.

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Resistances, electric.

Class 37: Installation, repair and assembly of electrical components and railway applications.

The contested goods and services are the following:

Class 1: Agricultural chemicals, except fungicides, weedkillers, herbicides, insecticides and parasiticides; alcohol for industrial purposes; chemical additives for oils; emollients for industrial purposes; emulsifiers; fatty acids; glycerides; glycerine for industrial purposes; industrial chemicals; oleic acid; stearic acid; surface-active chemical agents; esters of fatty acids for industrial use; oils for the preservation of food.

Class 3: Cosmetics; toiletries; perfumery; essential oils; ethereal oils; cosmetic preparations for skin care; cosmetic creams; skin moisturisers; skin whitening creams; lotions for cosmetic purposes; greases for cosmetic purposes; oils for cosmetic purposes; oils for toilet purposes; make-up preparations; make-up removing preparations; hair care preparations; shampoos; deodorants for personal use; oils for perfumes and scents; soaps for personal use; non-medicated handwashes and body washes; shower and bath gel; non-medicated impregnated wipes for personal use; washing preparations; oils for cleaning purposes; cleaning, polishing, scouring, and abrasive preparations; detergents other than for use in manufacturing operations and for medical purposes; laundry preparations; bleaching preparations [laundry].

Class 4: Industrial oils; industrial greases; biodiesel; gasoline; fuel oils; motor fuel; motor oil; lubricating oil; lubricating grease; moistening oil; oleine; palm oil for industrial purposes; oils for industrial purposes.

Class 5: Pharmaceutical preparations; sanitary preparations for medical purposes; veterinary preparations; pharmaceutical preparations for skin care; medicated bath preparations; deodorants, other than for human beings or animals; capsules for pharmaceutical purposes; oils for pharmaceutical purposes; ointments for pharmaceutical purposes; sunburn ointments; medicinal oils; greases for medical purposes; acids for pharmaceutical purposes; chemical preparations for pharmaceutical purposes; chemical preparations for medical purposes; greases for veterinary purposes; chemical preparations for veterinary purposes; alcohol for pharmaceutical purposes; disinfectants for hygiene purposes; detergents for medical purposes; fungicides; herbicides; insecticides; pesticides; disinfectant soaps; medicated soap.

Class 29: Palm kernel oil; palm oil for food; oils for food; edible oils and fats; fatty substances for the manufacture of edible fats.

Class 31: Raw and unprocessed agricultural, horticultural and forestry products; seedlings; bulbs and seeds for planting; grains [cereals]; cereal seeds, unprocessed; wheat; palm trees; palms [leaves of the palm tree]; plants; trees; livestock.

Class 35: Advertising; business appraisals; business management; business information; business administration; business organisation consultancy; business research; efficiency experts; commercial or industrial management assistance; office functions; marketing.

Class 36: Real estate agencies; real estate appraisal; real estate brokers; leasing of real estate; leasing of farms; real estate management; valuation of real estate; rental of offices [real estate]; rental of real estate; financing of real estate and property developments; insurance relating to real estate; capital investment in real estate, township and property development; real estate affairs, real estate advisory services; research services relating to real estate; real estate investment; real estate acquisition; real estate administration; evaluation of real estate; management of residential, industrial and commercial properties, offices, business centers, departmental stores, shopping centers, shopping malls, retail and wholesale outlets, service apartments, buildings, houses, condominiums, apartments; rent collection; building facilities management; management of property, development advisory; real estate project management and co-ordination; financial affairs; fund investment; financial consultancy; financial management; information and advisory services all relating to the aforesaid services.

Class 37: Building construction supervision; construction; construction consultation; rental of construction equipment; construction information; property development [building and construction services]; property maintenance; real estate development; residential, commercial and retail property development services; building of residential and commercial properties; building of shops, office, mills, factories, houses, condominiums apartments; building construction supervision and control, undertaking piling and structural works (building construction); electric appliance structural works (building construction); electric appliance installation and repair; installation of fittings for buildings; installation of mechanical and site equipment used in the construction of building; scaffolding; insulating of building; demolition of building; cleaning of building; refurbishment of building; installation, repair and maintenance services of buildings; maintenance and repair of parts and fittings for buildings; installation of doors and windows; interior and exterior painting; road paving; construction of complexes for business and leisure; elevator installation and repair; building sealing; pipeline construction and maintenance; roofing services; advisory services relating to building and construction services; advisory services relating to the development of property; advisory services relating to the renovation of property; installation and repair of irrigation systems and devices.

Class 40: Processing of agricultural products; refining services; millworking; processing of oil; timber felling; timber processing; water treating; waste management namely, sorting of waste and recyclable material [transformation], recycling of waste and trash, waste treatment [transformation], incineration of waste and trash, destruction of waste and trash.

Class 42: Scientific services and research and design relating thereto; agricultural research services; agrochemical research services; research relating to plant breeding; chemical analysis; chemical research; technical research; conducting of agricultural surveys; research in the field of environmental protection; material testing; quality control; land surveying; construction drafting; design of plantation buildings, mills and factories; engineering services; urban planning; engineering; mechanical research; water analysis.

Class 44: Agricultural services; horticultural services; forestry services; contract farming [agricultural services]; plant nursery services; reforestation services; aerial and surface spreading of fertilisers and other agricultural chemicals; rental of farming and agricultural equipment and machinery; vermin exterminating for agriculture, horticulture and forestry; weed killing; animal breeding; landscape gardening, landscape design; tree planting for carbon offsetting purposes.

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 Classes 1, 3, 4, 5, 29 and 31

The contested goods in Class 1 cover various chemicals for use in industry.

The contested goods in Class 3 cover various cosmetics and perfumery goods as well as cleaning, polishing, scouring and abrasive preparations, detergents, laundry and bleaching preparations.

The contested goods in Class 4 cover various industrial oils and greases, lubricants, fuels and illuminants.

The contested goods in Class 5 cover various pharmaceuticals, medical and veterinary preparations, sanitary preparations for medical purposes, disinfectants, fungicides, herbicides, insecticides and pesticides.

The contested goods in Class 29 cover various edible oils and fats and fatty substances for the manufacture of edible fats.

The contested goods in Class 31 cover various raw and unprocessed agricultural, horticultural and forestry products; raw and unprocessed grains and seeds, bulbs and seeds for planting, plants, trees and livestock.

They are all considered dissimilar to the opponent’s goods in Class 6 (common metals, their alloys and simple products made of these materials) and Class 9 (apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity), and the opponent’s services in Class 37 (installation, repair and assembly of electrical components and railway applications), as they have different natures, purposes and methods of use. They have different commercial origins and standard distribution channels. Moreover, they are neither in competition nor complementary.

Contested services in Class 36

The contested services cover various insurance, financial affairs, monetary affairs and real estate affairs services. They are considered dissimilar to the opponent’s goods in Class 6 (common metals, their alloys and simple products made of these materials) and Class 9 (apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity), and the opponent’s services in Class 37 (installation, repair and assembly of electrical components and railway applications), as they have different natures, purposes and methods of use. They have different commercial origins and distribution channels. Moreover, they are neither in competition nor complementary.

Contested services in Class 37

The contested electric appliance installation and repair overlaps with the opponent’s installation, repair and assembly of electrical components. Therefore, they are identical.

The contested building construction supervision; construction; construction consultation; construction information; property development [building and construction services]; property maintenance; real estate development; residential, commercial and retail property development services; building of residential and commercial properties; building of shops, office, mills, factories, houses, condominiums apartments; building construction supervision and control, undertaking piling and structural works (building construction); electric appliance structural works (building construction); installation of fittings for buildings; installation of mechanical and site equipment used in the construction of building; insulating of building; demolition of building; refurbishment of building; installation, repair and maintenance services of buildings; maintenance and repair of parts and fittings for buildings; road paving; construction of complexes for business and leisure; building sealing; pipeline construction and maintenance; roofing services; advisory services relating to building and construction services; advisory services relating to the development of property; advisory services relating to the renovation of property are at least similar to a low degree to the opponent’s services installation, repair and assembly of railway applications.

They may coincide in their commercial origin and relevant public. They have the same nature in the broad sense of erecting and maintaining structures. Moreover, some of the contested services may have the same purpose, which will lead to a higher degree of similarity.

The remaining contested services in Class 37, namely rental of construction equipment; scaffolding; cleaning of building; installation of doors and windows; interior and exterior painting; elevator installation and repair; installation and repair of irrigation systems and devices are very specific construction-related services which have no points of contact with the opponent’s services in the railway industry or in the field of electrical components.

They are also dissimilar to the opponent’s other goods in Class 6 (common metals, their alloys and simple products made of these materials) and Class 9 (apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity), as they have different natures, purposes and methods of use. They have different commercial origins and distribution channels. Moreover, they are neither in competition nor complementary.

Contested services in Class 40

The contested services cover various services concerning the treatment of materials. They are considered dissimilar to the opponent’s goods in Class 6 (common metals, their alloys and simple products made of these materials) and Class 9 (apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity), and the opponent’s services in Class 37 (installation, repair and assembly of electrical components and railway applications), as they have different natures, purposes and methods of use. They have different commercial origins and distribution channels. Moreover, they are neither in competition nor complementary.

Contested services in Class 42

The contested land surveying; construction drafting; engineering services; urban planning; engineering are similar to a low degree to the opponent’s services of installation, repair and assembly of railway applications, as they usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The remaining contested services in Class 42, namely scientific services and research and design relating thereto; agricultural research services; agrochemical research services; research relating to plant breeding; chemical analysis; chemical research; technical research; conducting of agricultural surveys; research in the field of environmental protection; material testing; quality control; design of plantation buildings, mills and factories; mechanical research; water analysis, are considered dissimilar to the opponent’s goods in Class 6 (common metals, their alloys and simple products made of these materials) and Class 9 (apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity), and the opponent’s services in Class 37 (installation, repair and assembly of electrical components and railway applications), as they have different natures, purposes and methods of use. They have different commercial origins and distribution channels. Moreover, they are neither in competition nor complementary.

Contested services in Class 44

The contested services cover various agriculture, horticulture and forestry services. They are considered dissimilar to the opponent’s goods in Class 6 (common metals, their alloys and simple products made of these materials) and Class 9 (apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity), and the opponent’s services in Class 37 (installation, repair and assembly of electrical components and railway applications), as they have different natures, purposes and methods of use. They have different commercial origins and distribution channels. Moreover, they are neither in competition nor complementary.

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 services found to be identical or at least similar to a low degree are specialised services directed at business customers with specific professional knowledge or expertise. Moreover, they are expensive, highly sophisticated services which are not purchased frequently.

Therefore, the degree of attention of the relevant public will be high.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

When assessing the similarity of the signs, an analysis of whether the coinciding or differing components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding or differing components have a lesser or greater capacity to indicate commercial origin. Similarities between signs are higher where the coincidences reside in distinctive elements and the differences are attributed to the non-distinctive elements.

For the Spanish-speaking public, the differing element ‘electromateriales’ will be understood as electronic/electrical materials, whereas the common element ‘KLK’ is meaningless. Consequently, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The contested sign is a figurative mark composed of one verbal element, ‘KLK’, written in black, standard upper case characters. The element ‘KLK’ has no meaning for the analysed public and it is therefore of average distinctiveness.

The figurative elements of the contested sign are limited to the minimal stylisation of the characters ‘KLK’ and have no distinctive character on their own. The contested sign is composed of only one, indivisible element and as such it has no element that could be considered clearly more dominant than other elements.

The earlier mark is a figurative mark composed of two verbal elements: the larger ‘KLK’ written in yellow standard uppercase characters on three blue rectangles and the significantly smaller ‘electromateriales’ written in standard grey lower case characters underneath.

The element ‘KLK’, which is the dominant element because of its larger size, has no meaning for the analysed public and is normally distinctive, whereas the secondary inscription ‘electromateriales’ will be associated with the goods which are the subject of the relevant services (in case of services related to railway applications, goods such towers and railway traction lines) and has therefore a low degree of distinctiveness.

The figurative elements of the earlier mark are limited to three blue rectangles constituting a background for the letters ‘KLK’ and have very limited distinctive character.

Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the distinctive element ‘KLK’, which is the dominant element of the earlier mark and the only element of the contested sign. The signs differ in their respective (minimal) stylisations and in the secondary element ‘electromateriales’ of the earlier mark, moreover with very limited distinctive character, which has no counterpart in the contested sign.

Therefore, the signs are visually highly similar.

Aurally, for the part of the public which pronounces the smaller and weakly distinctive element ‘electromateriales’, the signs are highly similar.

However, since it has been confirmed by case-law that consumers generally refer only to the dominant elements in trade marks (03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44) and that, in any case, they tend to shorten marks containing several words, the earlier mark might be referred to aurally by only the verbal element ‘KLK’ by part of the public. Therefore, the signs are aurally identical for that part of the public.

Conceptually, the earlier mark will convey the concept of electronic/electrical material, while the contested sign lacks any meaning. Therefore the signs are conceptually not similar. However, since this concept is conveyed by a secondary element in the sign, it will not have a strong impact on the public.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of a weak element in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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

The goods and services are partly identical, partly similar to at least a low degree and partly dissimilar. The degree of attention of the relevant public is high. The signs are aurally identical or highly similar, visually highly similar, and conceptually not similar on the account of the secondary element, which does not create a strong conceptual difference, due to its limited distinctiveness. The earlier mark, as a whole, has an average degree of inherent distinctiveness, which affords it a normal scope of protection under Article 8(1)(b) EUTMR.

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). Taking into account the high similarities between the signs and the low degree of similarity between some services, this principle is clearly applicable to the present case.

Moreover, 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). 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).

The applicant claimed that, since the opponent did not demonstrate the identity or similarity between the goods and services the opposition is not well reasoned. However, according to Article 2(2)(i) EUTMDR the opponent must indicate in the notice of opposition the goods and services against which the opposition is directed. According to Article 2(4) EUTMDR ‘the notice of opposition may also contain a reasoned statement on the grounds, the facts and arguments on which the opposition relies, and supporting evidence’. According to Article 7(1) EUTMDR the opponent may, but is not obliged to, submit further arguments in support of its opposition. Therefore, the scope of the opposition is determined by the notice of opposition. In the notice of opposition of 20/12/2017, the opponent clearly indicated that the opposition was directed against all the goods and services of the contested sign. Therefore, the applicant’s argument must be set aside as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 11 628 617. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to at least a low degree to those of the earlier trade mark.

The rest of the contested goods and services 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 and services cannot be successful.

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

In the notice of opposition of 20/12/2017 the opponent indicated the trade name ‘KLK ELECTRO MATERIALES’ used in the course of trade in Spain (earlier right No 6) as a basis of the present opposition.

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.

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.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign in the course of trade.

On 08/01/2018 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 13/05/2018.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded, insofar as these grounds are concerned.

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

The Opposition Division

Catherine MEDINA

Anna ZIOŁKOWSKA

Begoña URIARTE VALIENTE

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.