OPPOSITION Nо B 3 005 975

 

Deutsche Telekom AG, Friedrich-Ebert-Allee 140, 53113 Bonn, Germany (opponent), represented by Hogan Lovells International LLP, Alstertor 21, 20095 Hamburg, Germany (professional representative) 

 

a g a i n s t

 

TJ Point S.R.L., Via A.grandi 13a, 60131 Ancona, Italy (applicant), represented by Innova & Partners S.R.L., Via Giacomo Leopardi, 2, 60122 Ancona, Italy (professional representative).

On 22/03/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 005 975 is upheld for all the contested goods.

 

2.	European Union trade mark application No 17 193 921 is rejected in its entirety.

 

3.	The applicant bears the costs, fixed at EUR 620.

 

REASONS

 

On 11/12/2017, the opponent filed an opposition against all the goods of European Union trade mark application No 17 193 921 for the figurative mark . The opposition is based on, inter alia, on European Union trade mark registration No 2 235 034 for the figurative mark .The opponent invoked  Article 8(1)(b) EUTMR and Article 8(5) EUTMR. Furthermore, the opponent invoked Article 8(4) EUTMR in relation to a non-registered trade mark ‘T’ used in the course of trade of more than mere local significance in Germany.

 

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 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 2 235 034 for the figurative mark .  

a)  The goods

 

The goods on which the opposition is based are, among others, the following:

Class 9: Electric, electronic, optical, measuring, signalling, checking (supervision), or teaching apparatus and instruments (included in class 9); apparatus for recording, transmission, processing and reproduction of sound, images or data; machine-readable data recording carrier; automatic vending machines and mechanisms for coin-operated apparatus; data-processing equipment and computers.

The contested goods are the following:

Class 9: Adapters for connecting telephones to hearing aids; Replicating apparatus; Apparatus for the reproduction of images; Portable sound reproducing apparatus; Sound reproduction apparatus; Video reproducing apparatus; Film reproducing apparatus; Record playing apparatus and instruments; Playing devices for sound and image carriers; Radio monitors for reproduction of sound and signals; Video processors for providing an all-around view for a vehicle; Machine readable computer programs for use in the reproduction of music; Display monitors for providing an all-around view for a vehicle; Acoustic membranes used in sound recording or reproducing apparatus; Apparatus for the reproduction of data; Peripheral devices for data reproduction; Digital televisions; Television receivers; Plasma televisions; Stands for televisions; Television decoders; Filters for television sets; Remote controls for televisions; Televisions incorporating video recorders; Anti-glare filters for televisions; Application software for televisions; 3D spectacles for television receivers; Coin-operated mechanisms for television sets; UHD (Ultra High Definition) Televisions; HD (High Definition) televisions; Internet Protocol televisions; DMB (Digital Multimedia Broadcasting) televisions; Liquid crystal display (LCD) televisions; Screen filters for computers and televisions; Organic light-emitting diode televisions; Brackets for setting up flat screen TV sets; LED televisions; Car televisions; Audio apparatus; Audio recordings; Audio digitisers; Audio cable; Amplifiers; Audio receivers; Audio compressors; Audio analyzers; Audio time delay units; Audio expanders; Sound recorders; Sound projectors; Audio mixers; Soundbars; Audio- and video-receivers; Audio electronic apparatus; Speakers [audio equipment]; Electronic audio crossovers; Multi-room audio devices; Digital audio recorders; Digital audio servers; Digital audio players; Audio cassette players; Audio cassette recorders; Prerecorded digital audio tapes; Audio frequency apparatus; Audio frequency amplifiers; Audio conference apparatus; Audio switching apparatus; Audio dubbing apparatus; Audio processing apparatus; Audio transmitter units; Audio speakers for vehicles; Audio effects apparatus; Audio tape players; Power mixers [audio apparatus]; Audiovisual headsets for playing video games; Audio/visual and photographic devices; Audio devices and radio receivers; Digital audio interface apparatus; Information technology and audio-visual, multimedia and photographic devices; Personal stereos; Portable music players; Video telephones; Video monitors; Interactive video apparatus; Video intercom apparatus; Video conferencing apparatus; Apparatus for the transmission of images; Video amplifying apparatus; Video communications apparatus; Video effects apparatus; Video door telephone apparatus; Video editing apparatus; Audiovisual apparatus; High fidelity audio apparatus; Telephone apparatus; Radiotelephones; Digital phones; Satellite telephones; Mobile telephones; Public telephones; Fixed location telephones; VOIP phones; Telephone wires; Digital cellular phones; Car telephones; Conference phones; Telephone headsets; Magnetic telephone wires; Electrical telephone wires; Answering machines; Encoded telephone cards; Telephones incorporating intercommunication systems; Mobile telephones for use in vehicles; Keyboards for mobile phones; Cell phone covers; Mobile telephone batteries; Chargers for mobile phones; Downloadable screen savers for phones; Face plates for cellular telephones; Chargers for smartphones; Power supplies for smartphones; Headsets; Stereo headphones; Headphone amplifiers; Communications head sets; Headsets for use with computers; Internet phones; Wireless headphones; Headsets for mobile telephones; Wireless headsets; Hands-free headsets for cell phones; Personal headphones for sound transmitting apparatuses; Wireless headsets for use with mobile telephones; Virtual reality headsets; Wireless headsets for smartphones; Headsets for virtual reality games; Two-way plugs for headphones; Phone plugs; Headphone consoles; Headphone-microphone combinations; Cabinets for loudspeakers; Stereo amplifying apparatus; Loudspeakers; Power amplifiers; Image intensifiers; Residual light image amplifiers; CD rom drives; Compact disc players; Portable CD players; DVD players; DVD drives; Portable DVD players; Record players; Speakers for record players; Record decks; Needles for record players; Tone arms for record players; Speed regulators for record players; Apparatus for changing record player needles; Graphic equalizers; Equalizers [audio apparatus]; Audio mixing apparatus; Video mixers; Digital mixing desks; Microphone mixers; Sound mixers with integrated amplifiers; Radio cassette tape recorders; Radios; Radio antennas; Broadcasting equipment; Organic light-emitting diodes; OLED (Organic light emitting diode) display panels; Plasma display apparatus; Optical filters for plasma display panel; LCD [liquid crystal display]; LCD large-screen displays; Liquid crystal displays [LCDs] for home theaters; Thin Film Transistor-Liquid Crystal Display (TFT-LCD) panels; LED monitors.

 

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

The contested Adapters for connecting telephones to hearing aids; Replicating apparatus; Apparatus for the reproduction of images; Portable sound reproducing apparatus; Sound reproduction apparatus; Video reproducing apparatus; Film reproducing apparatus; Record playing apparatus and instruments; Playing devices for sound and image carriers; Radio monitors for reproduction of sound and signals; Video processors for providing an all-around view for a vehicle; Machine readable computer programs for use in the reproduction of music; Display monitors for providing an all-around view for a vehicle; Acoustic membranes used in sound recording or reproducing apparatus; Apparatus for the reproduction of data; Digital televisions; Television receivers; Plasma televisions; Television decoders; Televisions incorporating video recorders; UHD (Ultra High Definition) Televisions; HD (High Definition) televisions; Internet Protocol televisions; DMB (Digital Multimedia Broadcasting) televisions; Organic light-emitting diode televisions; Liquid crystal display (LCD) televisions; Organic light emitting diode televisions; LED televisions; Car televisions; Audio apparatus; Audio digitisers; Amplifiers; Audio receivers; Audio compressors; Audio analyzers; Audio time delay units; Audio expanders; Sound recorders; Sound projectors; Audio mixers; Soundbars; Audio- and video-receivers; Audio electronic apparatus; Speakers [audio equipment]; Electronic audio crossovers; Multi-room audio devices; Digital audio recorders; Digital audio servers; Digital audio players; Audio cassette players; Audio cassette recorders; Audio frequency apparatus; Audio frequency amplifiers; Audio conference apparatus; Audio switching apparatus; Audio dubbing apparatus; Audio processing apparatus; Audio transmitter units; Audio speakers for vehicles; Audio effects apparatus; Audio tape players; Power mixers [audio apparatus]; Audiovisual headsets for playing video games; Audio/visual and photographic devices; Audio devices and radio receivers; Digital audio interface apparatus; Information technology and audio-visual, multimedia and photographic devices; Personal stereos; Portable music players; Video telephones; Video monitors; Interactive video apparatus; Video intercom apparatus; Video conferencing apparatus; Apparatus for the transmission of images; Video amplifying apparatus; Video communications apparatus; Video effects apparatus; Video door telephone apparatus; Video editing apparatus; Audiovisual apparatus; High fidelity audio apparatus; Telephone apparatus; Radiotelephones; Digital phones; Satellite telephones; Mobile telephones; Public telephones; Fixed location telephones; VOIP phones; Digital cellular phones; Car telephones; Conference phones; Telephone headsets; Answering machines; Telephones incorporating intercommunication systems; Mobile telephones for use in vehicles; Headsets; Stereo headphones; Headphone amplifiers; Communications head sets; Headsets for use with computers; Internet phones; Wireless headphones; Headsets for mobile telephones; Wireless headsets; Hands-free headsets for cell phones; Personal headphones for sound transmitting apparatuses; Wireless headsets for use with mobile telephones; Virtual reality headsets; Wireless headsets for smartphones; Headsets for virtual reality games; Headphone consoles; Headphone-microphone combinations; Stereo amplifying apparatus; Loudspeakers; Power amplifiers; Image intensifiers; Residual light image amplifiers; CD rom drives; Compact disc players; Portable CD players; DVD players; DVD drives; Portable DVD players; Record players; Speakers for record players; Record decks; Graphic equalizers; Equalizers [audio apparatus]; Audio mixing apparatus; Video mixers; Digital mixing desks; Microphone mixers; Sound mixers with integrated amplifiers; Radio cassette tape recorders; Radios; Broadcasting equipment; OLED (Organic light emitting diode) display panels; Plasma display apparatus; LCD [liquid crystal display]; LCD large-screen displays; Liquid crystal displays [LCDs] for home theaters; Thin Film Transistor-Liquid Crystal Display (TFT-LCD) panels; LED monitors are all devices which serve to record, transmit, process and/or reproduce, sound, images and/or data and therefore, they are either included in, or at least overlap with, the broad category of the opponent’s apparatus for recording, transmission, processing and reproduction of sound, images or data; data-processing equipment and computers. Therefore, these goods are identical.

The contested Coin-operated mechanisms for television sets are included in the broad category of the opponent’s mechanisms for coin-operated apparatus. Therefore, they are identical.

The contested 3D spectacles for television receivers are included in the broad category of the opponent’s optical apparatus and instruments. These goods are identical.

The contested Audio recordings; Prerecorded digital audio tapes are highly similar to the opponent’s data-processing equipment and computers. These goods usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary.

The contested Application software for televisions have some relevant points in common with the opponent’s data-processing equipment and computers. They usually coincide in producer, relevant public and distribution channels. Furthermore they are complementary. Consequently, these goods are similar.

The contested Stands for televisions are similar to the opponent’s apparatus for recording, transmission, processing and reproduction of sound, images or data. They usually coincide in relevant public and distribution channels. Furthermore they are complementary.

The opponent’s broad category of apparatus for recording, transmission, processing and reproduction of sound, images or data; data-processing equipment and computers are apparatus and devices used in order to permit the communication of audio or video information over a distance by means of radio waves, optical signals, etc., or along a transmission line. These products include apparatus such as telephone, television apparatus, etc., as they serve to transmit sounds, data, information and images par excellence. Telephones are devices that convert voice and image signals into a form that can be transmitted to remote devices that receive and reconvert waves into sound and image signals. The contested Filters for television sets; Optical filters for plasma display panel; Remote controls for televisions; Anti-glare filters for televisions; Peripheral devices for data reproduction; Keyboards for mobile phones; Cell phone covers; Mobile telephone batteries; Face plates for cellular telephones; Chargers for mobile phones; Chargers for smartphones; Power supplies for smartphones; Two-way plugs for headphones; Phone plugs; Magnetic telephone wires; Electrical telephone wires; Telephone wires; Audio cable; Screen filters for computers and televisions; Brackets for setting up flat screen TV sets; Optical filters for plasma display panel are various devices, including accessories belonging to telecommunication equipment used together with the opponent’s apparatus for recording, transmission, processing and reproduction of sound, images or data; data-processing equipment and computers. Therefore, they are similar to the opponent’s goods. They can coincide in producer, relevant public and distribution channels. Furthermore, some of them can be complementary such as the contested Mobile telephone batteries.

Encoded telephone cards are cards on which data is stored within the smart card components. They have some relevant points in common with the opponent’s data processing equipment and computers. They can have the same manufacturers and distribution channels and are complementary to each other. Therefore, they are similar

The contested Cabinets for loudspeakers; Needles for record players; Apparatus for changing record player needles; Tone arms for record players; Speed regulators for record players; Radio antennas are similar to the opponent’s apparatus for recording, transmission, processing and reproduction of sound. They can have the same producer, relevant public and distribution channels. Furthermore they are complementary.

The contested Organic light-emitting diodes are light-emitting diodes (semiconductor devices) in which the emissive electroluminescent layer is a film of organic compound that emits light in response to an electric current. These devices are necessary for production of the opponent’s apparatus for recording, transmission, processing and reproduction of sound, images such as OLED television apparatus. They can coincide in producer and distribution channels. Furthermore, they are complementary. Therefore, they are similar.

Downloadable screen savers for phones refer to a downloadable software that enables to save images on phones. Consequently, they are similar to the opponent’s computers. These goods can coincide in producer, relevant public and distribution channels. Furthermore they are 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 goods found to be identical and similar to various degrees are directed at the public at large and professional public.

The public’s degree of attentiveness may vary from average to high, depending in particular on specialised nature, or terms and conditions of the goods purchased.

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 signs coincide completely in their verbal constituent, namely the letter ‘T’, and this letter will be instantly perceived by the relevant public in the relevant territory. Its representation is minimally stylised in both signs. Furthermore, the contested sign contains additional elements, namely hyphen and the verbal element ‘logic’, whose stylisation is rather common and refers to the fact that all the letters appear in lowercase characters in bold.

The hyphen in the contested sign is the punctuation sign, used to join words together to make a compound. The impact of this element on the comparison of the signs will be limited.

As mentioned above, the common letter ‘T’ will be instantly perceived by the relevant public in the relevant territory.

The word ‘LOGIC’ included in both signs will be understood, not only by English-speaking consumers but also by consumers throughout the entire relevant territory, as referring to ‘reasoning conducted or assessed according to strict principles of validity’. This word is used in the same or a slightly different orthographic form in European languages; for instance, ‘Logik’ in German and in Swedish, ‘lógica’ in Spanish and in Portuguese, ‘logique’ in French, ‘logica’ in Italian and in Dutch; ‘logika’ in Polish, Bulgarian and in Czech; logică in Romanian. This word in the above-indicated meaning is considered to have an average degree of distinctive character.

In addition, part of the relevant public may understand ‘LOGIC’ as meaning (electronics, computing) the principles underlying the units in a computer system that perform arithmetical and logical operations. Therefore, if understood in this meaning by part of the relevant public this word may be perceived as weak for at least part of the contested goods as it alludes to their functionalities such as Television decoders; Audio compressors; Audio analyzers. The word ‘logic’ is normally distinctive in relation to the remaining goods such as the contested Stands for televisions; Cabinets for loudspeakers or Needles for record players.

As to the earlier mark, the Opposition Division notes that the Court, in its judgement of 09/09/2010, C-265/09 P, α, EU:C:2010:508, held that the distinctiveness of single-letter trade marks must be assessed according to an examination based on the facts, focusing on the goods or services concerned and the same criteria that apply to other word marks (paras 33-39). Although that judgement deals with absolute grounds, the Office considers that the principle established by the Court (i.e. that the application of the criterion of distinctiveness must be the same for all marks) also applies in inter partes cases when it comes to determining the distinctiveness of single-letter trade marks.

The Court, while acknowledging that it may prove more difficult to establish distinctiveness for marks consisting of a single letter than for other word marks, held that these circumstances do not justify laying down specific criteria supplementing or derogating from application of the criterion of distinctiveness as interpreted in the case-law.

The Office considers the ruling to mean that, when establishing the distinctiveness of an earlier mark, it is not correct to rely on assumptions such as a priori statements that consumers are not in the habit of perceiving single letters as trade marks or on generic arguments such as that relating to the availability of signs, given the limited number of letters.

The General Court has since stated in a number of cases that a trade mark containing a single letter or a single numeral may indeed be inherently distinctive (judgments of 08/05/2012, T-101/11, G, EU:T:2012:223, § 50; 06/10/2011, T-176/10, Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T-378/12, X, EU:T:2013:574, § 37-51).

Consequently, whilst registered earlier trade marks consisting of a single letter (or numeral) represented in standard characters enjoy a presumption of validity, ultimately their degree of inherent distinctiveness will have to be assessed with reference to the goods and/or services concerned.

The above considerations apply both to single-letter/-numeral trade marks represented in standard characters (i.e. word marks) and to stylised single-letter/-numeral trade marks.

As regards the goods in question, the Opposition Division is of the opinion that the common letter mark ‘T’ does not convey any information regarding the essential characteristics of the goods in question. Therefore, its inherent distinctiveness is average in relation to them.

As mentioned above, the figurative component of the earlier mark constitutes merely an element of its stylisation.

The conflicting signs have no elements that could be more dominant (visually outstanding) than other elements.

Visually and aurally, the signs coincide in the letter ‘T’, which constitutes the initial and distinctive element of the contested sign and the only element of the earlier mark.

Consumers generally tend to focus on the first/initial element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right and from top to bottom, which makes the part placed at the beginning of the sign (its initial part) the one that first catches the attention of the reader.

The signs differ visually and aurally in the element ‘logic’ occupying the second position in the contested sign. Furthermore, this element has been found weak in relation to at least some of the goods in question, as analysed above. The Opposition Division is of the opinion that notwithstanding the fact that the term ‘logic’ is distinctive in relation to the remaining relevant contested goods, the coinciding and distinctive initial element of the contested sign ‘T’ will attract the public’s attention to a greater extent, as explained above. The role of the hyphen in the contested sign will have a limited impact on the relevant consumers.

In addition, visually, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Furthermore, in the present case, the stylization of the signs will be perceived by the public as a mere ornamental feature.

Consequently, bearing in mind the above-mentioned, the signs are considered visually and aurally similar from slightly below than average degree, in the scenario, in which the verbal element ‘logic’ of the contested sign is normally distinctive to an average degree, in case when this element is weak for at least part of the goods at issue.

Conceptually, the public under comparison will perceive the letter ‘T’ in both signs and the term ‘logic’ of the contested sign according to the meanings referred to above. As regards the contested sign as a whole, its meaning will not be different from the simple sum of the meaningful elements that compose it and referred to above. As already analysed, the impact of the hyphen introduced in the middle of the contested sign will be limited.

Therefore, the signs are conceptually similar from slightly below than average degree, in the scenario, in which the verbal element ‘logic’ of the contested sign is normally distinctive to an average degree, in case when this element is weak for at least part of the goods at issue.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods have been found identical and similar to various degrees. The signs are considered visually, aurally and conceptually similar from slightly below than average degree, in the scenario, in which the verbal element ‘logic’ of the contested sign is normally distinctive to an average degree, in case when this element is weak for at least part of the goods at issue.

The fact that the conflicting signs comprise the same single letter can lead to a finding of visual similarity between them, depending on the particular way the letters are depicted, which is very relevant for the case at issue. In the present case, the relevant public will perceive the distinctive letter ‘T’ in both signs, which is insignificantly stylised in both signs.

The composition of the contested sign will be perceived as graphic means of bringing the verbal element in question ‘T-logic’, to the attention of the public. The term ‘logic’ of the contested sign occupies further position in it and its inherent distinctiveness is weak for at least part of the goods in question. The remaining differences between the signs are limited to the stylisation of lettering in both signs and the interpunction sign in the contested sign.

Therefore, the fact that the element ‘T’ plays a distinctive and independent role and it is placed at the beginning of the contested sign will have a decisive impact in this case and consequently, the relevant public will at least associate the signs in question.

Account is also 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).

Article 8(1)(b) EUTMR states that, upon opposition, an EUTM application shall not be registered if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark

Indeed, in the present case, the relevant consumers may legitimately believe that the contested trade mark is a new brand line or a recent promotional product of the earlier ‘T’ mark because it is a common market practice for brands to identify new version or a new sub-brand of the main (‘house’) brand by adding additional elements and it belongs to the opponent’s company, which provides identical and similar goods.

Considering all the above, there is a likelihood of confusion in the form of a likelihood of association, on the part of the public in the European Union. The opposition is, therefore, well founded on the basis of the opponent’s European Union trade mark registration No 2 235 034 and the contested trade mark must be rejected in relation to the identical and similar goods, irrespective of their degree of similarity.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

As the earlier European Union trade mark registration No 2 235 034 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Finally, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other grounds of the opposition, namely Articles 8(4) and 8(5) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

 

 

 

The Opposition Division

 

 

Jakub MROZOWSKI

Monika CISZEWSKA

Gueorgui IVANOV

 

 

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.