OPPOSITION Nо B 3 083 166

Sevenfriday AG, Staffelstraße 10, 8045 Zürich, Switzerland (opponent), represented by Balder IP Law, S.L., Paseo de la Castellana 93, 28046 Madrid, Spain (professional representative)

a g a i n s t

Takko Holding GmbH, Alfred-Krupp-str. 21, 48291 Telgte, Germany (applicant), represented by Löffel Abrar Rechtsanwälte PartG mbB, Schirmerstraße 80, 40211 Düsseldorf, Germany (professional representative).

On 03/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 083 166 is partially upheld, namely for the following contested goods:

Class 14: Jewellery; horological and chronometric instruments.

Class 18: Leather and imitations of leather, bags; travelling bags; umbrellas, sun umbrellas, parasols.

Class 25: Clothing, footwear, headgear.

2. European Union trade mark application No 17 980 100 is rejected for all the above goods. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 17 980 100 ‘Smart Friday’ (word mark), namely against all the goods in Classes 14, 18 and 25. The opposition is based on the following earlier rights:

 international trade mark registration designating the European Union No 1 105 144, ‘SEVENFRIDAY’ (word mark);

 European Union trade mark registration No 13 500 533, ‘SEVENFRIDAY’ (word mark);

 European Union trade mark registration No 15 005 333, ‘SEVENFRIDAY’ (word mark).

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

PRELIMINARY REMARKS

The applicant claims that one of the trade marks on which the opposition is based, namely European Union trade mark registration No 13 500 533, was entirely refused for all goods falling into Classes 9, 16 and 18, on which the present opposition is, inter alia, based. The applicant claims that the opponent tried to ‘deceive the Office and the applicant by founding and reasoning the opposition on a trade mark application being void’ and refers to: 10/10/2016, B 2 527 649; 02/05/2017, R 2292/2016‑2, SEVENFRIDAY / SEVEN et al.; 27/09/2018, T‑449/17, SEVENFRIDAY / SEVEN et al., EU:T:2018:612; and 19/03/2019, C‑733/18P, SEVENFRIDAY / SEVEN et al., EU:C:2019:223.

The Opposition Division notes that Opposition No B 2 527 649 (later confirmed by the decisions that followed, mentioned above and referred to by the applicant) was filed against some of the goods of European Union trade mark application No 13 500 533, namely against some of the goods in Classes 9 and 18 and all the goods in Class 16. The opposition was upheld for all the contested goods, and the contested mark could finally proceed to registration for the remaining goods (i.e. all the non-contested goods), which were some of the goods initially applied for in Classes 9 and 18.

Therefore, earlier mark No 13 500 533 is currently registered for the goods indicated above, as reflected in the relevant official online database (EUIPO’s eSearch plus) and in the opponent’s eSearch plus extract, which was submitted as Item 18 on 11/10/2019.

Since the present opposition is based on all the goods in Class 18 insofar as this earlier right is concerned, and Class 18 was only partially refused in the proceedings mentioned above, the opposition can proceed as based on, inter alia, the goods in Class 18 for which earlier mark No 13 500 533 has been allowed to proceed to registration.

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 international trade mark registration designating the European Union No 1 105 144, ‘SEVENFRIDAY’ (word mark) on which the opposition is, inter alia, based.

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

The date of filing of the contested application was 02/11/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 02/11/2013 to 01/11/2018 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones, in particular amulets, pins, bracelets, rings, brooches, earrings, clip earrings, tiaras, rings, wedding bands, ankle bracelets, neck chains, cuff links, tie pins; horological and chronometric instruments, in particular wristwatches, sports watches, chronographs, electric clocks, travelling alarm clocks, jewelry watches, desk clocks, sundials, stopwatches, watches, diving watches, desk table clocks, clocks for motor cars, clocks comprising a radio, alarm clocks, watch trinkets, watch bands, watch fobs, cases for clock and watch-making, movements for clocks and watches, clock cases, pendulums, clock dials, clockworks, dials, watch clasps.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 09/08/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 14/10/2019 to submit evidence of use of the earlier trade mark. On 11/10/2019, within the time limit, the opponent submitted evidence of use.

By letter of 21/10/2019, the Office informed the opponent that, after examining the evidence submitted on 11/10/2019, it was considered that it did not comply with the requirements of Article 55(2), since the index was missing. The opponent was invited to remedy the deficiency by 26/11/2019. The index was submitted on 06/11/2019.

The evidence to be taken into account is the following:

 ENCLOSURE 1: (Documents 1 to 3): website extracts

The opponent explains that the documents originate from its website and are ‘dedicated to sales to the public’, and that the website is accessible throughout the EU. The opponent claims that they clearly demonstrate use of the earlier mark in relation to watches, bracelets and wristwear accessories.

The enclosure contains extracts from the opponent’s website www.sevenfriday.com. The text is in English. The extracts were printed on 02/10/2019, which is out of the relevant period, and do not contain any indication as regards when the information was available online. However, there is a reference to the year 2017 in the copyright (i.e. year of the first publication of the work) at the end of the document. The goods that appear as available for purchase on the website are watches, chronographs, bracelets and watch straps.

From the information submitted it is not possible to know whether the content was available online during the relevant period or whether the goods shown were available for sale at that time. It is also not possible to know whether the website’s content was accessed by consumers or their location. In addition, the currency in which the prices of the goods are shown is the United States dollar, which indicates that the information was most likely meant to be accessed by consumers in the United States of America. The website gives the user the option to choose between different locations, including Europe, in order to see the goods available. However, from the evidence submitted it is not possible to know which kind of goods were available in Europe.

 ENCLOSURES 2-4: (Documents 4 to 6): invoices

o Document 4: six invoices issued to clients in France from 2013-2018. The document also contains a list of almost 40 points of sale in France.

o Document 5: six invoices issued to clients in Germany from 2013-2018. The document also contains a list of points of sale in Germany.

o Document 6: six invoices issued to clients in the United Kingdom from 2013-2018. The document also contains a list of 11 points of sale in the United Kingdom.

The invoices are in English. They are issued to various clients in the abovementioned countries, who seem to be retailers or distributors, since the invoices show sales of more than one item of the same kind, including parts, and the clients’ information sometimes includes the word ‘distribution’ or similar terms. The prices are in Swiss francs (currency of Switzerland and Liechtenstein), however some state that the amounts can be paid in euros. Some of the invoices show Zürich as the address of the opponent’s headquarters.

The goods that appear in the product description are watches and chronographs of various types and materials, referred to as ‘P1’, ‘P2’ and ‘P3’, accompanied by a brief description of their characteristics (see Document 11 below). Some of the invoices also include a number of different goods in the product description under the title, ‘Spare Parts’. Most of these are meant to be used with the watches referred to above, since they are also labelled ‘P1’, ‘P2’ and ‘P3’. An example of this follows:

The mark appears at the top of the invoices as shown below. In some cases, the mark is accompanied by the registered trade mark symbol and/or a figurative element and the slogan, ‘FRESH FROM THE PRESS’, as a reference to the way in which the goods are manufactured/produced:

The ‘press’, referred to above for the manufacture of the goods, appears in Document 17 below, in which the following image is included:

The lists of clients show that they are located in different cities of the territories referred to.

 ENCLOSURE 5: Document 7

This shows what the opponent describes as ‘total sales from 2015 to 2018 to different customers in Europe, specifically France, Spain, Portugal and Germany’. The one-page document lists customer names and references, including country codes. However, there is no indication as regards the kind of goods to which the figures refer, neither in the document nor in the opponent’s arguments, which refer to the goods only as ‘goods in Class 14’.

 ENCLOSURE 6: Documents 8 to 12

o Document 8: screenshot from Amazon Fashion. The document is in Spanish and the printing date is 02/10/2019. One of the search criteria on the left-hand side of the page is ‘Marca’ (trade mark) under which ‘Seven Friday’ appears as the option selected. The prices of the goods are in euros.

The goods displayed in the online store are different kinds of watches and chronographs on which the earlier mark is clearly visible, for instance as follows:

o Document 9: screenshots from the website www.pedroluisolivaresjoyero.com, official distributor of Seven Friday watches. The document is in Spanish, the printing date is 02/10/2019 and the copyright of the document is dated 2016. According to the information on the website, the store to which the website belongs is located in Murcia, Spain. It contains a brief description of the earlier mark: ‘Relojes Seven Friday SEVENFRIDAY es una marca de estilo de vida global que diseña, fabrica y vende relojes, brazaletes, gafas de sol y prendas de vestir inspiradas en la industria para personas de todo el mundo que viven todos los días como si fuera el viernes #liveSEVENFRIDAY’. The document contains images of watches and chronographs for sale and the prices are indicated in euros. They contain the earlier mark in the same or in a similar way to the ones previously described in Document 8.

o Document 10: screenshots of a jeweller’s website, www.monge1891.com. According to the information on the website, the store to which the website belongs is located in Bilbao, Spain.

o Document 11: screenshots of a jeweller’s website, www.valinojoyeria.com. According to the information on the website, the store to which the website belongs is located in Barcelona, Spain.

o Documents 10 and 11: same characteristics as the one described previously as regards the printing date, language, currency in which the prices are indicated, the kind of goods for sale and the way in which the earlier mark is used. In Document 11 the names of some of the watches and chronographs include ‘P1’, ‘P2’ or ‘P3’ as part of their name. These references were already referred to in the description of the invoices above (Documents 4-6).

The earlier mark is also used, besides the forms previously described, as follows:

o Document 12: screenshots from the website www.chrono24.com, ‘Chrono24 The World’s Watch Market’. The information is in English and the printing date is 03/10/2019. The document shows 137 results for the search under the following criteria: ‘Sevenfriday’, ‘Belgium’, ‘Czech Republic’, ‘Finland’ and ‘France’. The results consist of different watches and chronographs under the earlier mark, accompanied by other elements or codes, such as ‘P3’. The prices are in sterling, and according to the website the information is also available in Spanish and the prices can be shown in euros. Next to the item’s information is an indication of the country where the dealer is located, which includes France, Italy, Portugal, Spain and the UK.

 ENCLOSURE 7: Documents 13 to 17: presence of the opponent in social media

Facebook screenshot for the profile @sevenfridayfftp. The mark is used by itself and also accompanied by the following figurative element: . According to the information submitted the profile was created on 24/04/2012 and is also accompanied by, inter alia, the following information:

Instagram screenshot from the profile @sevenfriday. The profile description states: ‘SEVENFRIDAY We create watches, eyewear, accessories and apparel for individuals who live every day like it’s Friday’. The mark is used by itself and also accompanied by the following figurative element: . According to the information submitted, on 02/10/2019 (i.e. the printing date) the profile had 2 972 publications and 312 000 followers. The mark appears on watches and chronographs in the same or in a similar way as described in previous documents.

Twitter screenshot from the profile @sevenfridayfftp. According to the information submitted the profile was created in 2012 and the document was printed on 02/10/2019. It has 2 996 followers. The document contains text in Spanish and English. The profile description states: ‘Lifestyle brand uniting those who seize every day. Watches, guitars, HDB & more, all inspired by industrial design. Snapchat: @SEVENFRIDAY’.

Pinterest screenshot from the profile SEVENFRIDAY. The document is in Spanish and English and was printed on 02/10/2019. It shows the following description: ‘Lifestyle brand uniting those who seize every day. Watches, guitars & more, inspired by industrial design #SEVENFRIDAY’. Even though images are not shown, the blank squares in which they were supposed to be included are accompanied by the earlier mark and other references to the model of the product, for instance ‘P3C/02 Watch by SEV.’ The mark appears in a word and figurative format, as follows:

The opponent also submitted ‘Social media Proof UK’ (Document 17): an Excel table with references, images and links to publications of the earlier mark and products under the earlier mark. Despite the title, it does not refer only to the presence of the mark in the UK, but also in other territories. The publications are dated from 2013-2018, and belong to Facebook and Instagram. According to the information submitted they were published in France, Germany and the UK. The pictures show images of watches and chronographs in which the earlier mark is clearly visible.

 ENCLOSURE 8: Document 18

Extract from eSearch plus on EUTM No 13 500 533.

 ENCLOSURE 9: Document 19

Certificate of registration of EUTM No 13 500 533.

The applicant argues that not all of the evidence indicates genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered. The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Although some documents are not dated and/or their printing date is out of the relevant time period, a significant amount of evidence (e.g. invoices) demonstrates use of the earlier mark during the relevant period or refers to the relevant period.

The mark is used as registered or with small variations (e.g. adding small figurative elements, a slogan or merely a decorative typeface, very close to regular font), which do not alter the distinctive character of the mark as registered.

The mark is clearly used as a trade mark and in relation to goods.

The evidence demonstrates use of the mark in various Member States of the European Union, and therefore in a significant part of the relevant territory.

On the basis of the screenshots, where the mark is clearly visible in relation to the goods, watches, bracelets and parts thereof, as well as considering the amount of sales shown within EU territory and the marketplaces where the goods are publicly offered for sale, it may be concluded that the opponent made serious attempts to achieve a market share by using its mark in the relevant territory.

Therefore, the documents described above, as a whole, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark for the following goods:

 Class 14: Horological and chronometric instruments.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition, as regards this earlier right.

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.

a) The goods

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

 goods of international trade mark registration designating the European Union No 1 105 144:

Class 14: Horological and chronometric instruments.

 goods of EUTM registration No 13 500 533 (see Preliminary Remarks):

Class 18: Parasols; saddlery; worked or semi-worked hides and other leather; coverings of skins [furs]; leather cloth; leather for furniture; leather for shoes; leather and imitation leather; straps for soldiers’ equipment; moleskin [imitation of leather]; trimmings of leather for furniture.

 goods of EUTM registration No 15 005 333:

Class 25: Clothing; knitted clothing; athletic clothing; jerseys [clothing]; bottoms [clothing]; playsuits [clothing]; boys’ clothing; beach clothing; ties [clothing]; jackets [clothing]; collars [clothing]; shorts [clothing]; denim jeans; dresses; evening dresses; jumper dresses; tops [clothing]; underwear; leggings [trousers]; shoes; hats; gloves; skirts; cardigans; belts [clothing]; socks; coats; clothing for leisure wear; blazers; trainers [footwear]; shirts; t-shirts; waistcoats; leather waistcoats.

The contested goods are the following:

Class 14: Precious metals and alloys thereof; jewellery, precious stones; horological and chronometric instruments.

Class 18: Leather and imitations of leather, bags, trunks and travelling bags; umbrellas, sun umbrellas, parasols.

Class 25: Clothing, footwear, headgear.

An interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or in different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 14

The contested horological and chronometric instruments are also covered in Class 14 of the opponent. Therefore, these are identical.

The contested jewellery is highly similar to the opponent’s horological and chronometric instruments in Class 14. They coincide in nature, distribution channels/points of sale, can target the same consumers and can originate from the same kind of undertakings.

The contested precious metals and alloys thereof; precious stones are dissimilar to all the opponent’s goods. The contested goods are raw materials meant to be used by professionals for, for instance, the manufacture of jewellery. The opponent’s goods are used for different purposes, none being for manufacturing jewellery. Therefore, these goods are considered dissimilar since they differ in nature, purpose and method of use. They differ in distribution channels/points of sale, are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kind of undertakings.

Contested goods in Class 18

The contested leather and imitations of leather; parasols are identically covered by Class 18 of the opponent.

The contested bags are similar to the opponent’s clothing in Class 25, since they can coincide in distribution channels/points of sale, can target the same consumers and can originate from the same undertakings.

The contested umbrellas, sun umbrellas are at least similar to the opponent’s parasols in the same class, since they coincide in nature, purpose and distribution channels/points of sale. They can also originate from the same kind of undertakings and target the same consumers.

The contested travelling bags are similar to the opponent’s straps for soldiers’ equipment, since they can coincide in distribution channels/points of sale, can target the same consumers and frequently originate from the same kind of undertakings.

The contested trunks are containers for carrying luggage, that target the public at large. The opponent’s goods are for totally different purposes (e.g. sun protection, parts of goods meant for manufacturers, raw materials, etc.). Therefore, these contested goods are considered dissimilar to all the opponent’s goods, since they differ in nature, purpose and method of use. They also differ in distribution channels/points of sale, are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kind of undertakings.

Contested goods in Class 25

The contested clothing is identically covered by Class 25 of the opponent.

The contested footwear covers, as a broad category, the opponent’s trainers [footwear] in the same class. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested headgear covers, as a broad category, the opponent’s hats in the same class. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

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 or similar/highly similar are directed at the public at large and in part also at professionals.

The degree of attention will vary from average (e.g. in relation to umbrellas) to higher than average. The public is likely to pay a higher-than-average degree of attention to the goods that are expensive and not frequently purchased (e.g. jewelry and horological and chronometric instruments). In its decision of 09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22, the Board held that consumers generally put a certain amount of thought into the selection of these goods. In many cases the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed in relation to the goods in Class 14.

c) The signs

Since all of the earlier marks are identical (i.e. all being the word mark ‘SEVENFRIDAY’), in order to simplify the analysis and references to them, they will all be referred to in singular form as ‘the earlier mark’.

SEVENFRIDAY	Smart Friday
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). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public such as consumers in Ireland, Malta and the United Kingdom, since, from their perspective, the signs present additional or stronger coincidences (i.e. conceptual) which may not arise from the perspective of the remaining part of the public.

English-speaking consumers will carry out a mental dissection of the earlier mark into the words ‘SEVEN’ and ‘FRIDAY’, since they will be recognised as independent English terms.

The coinciding element ‘FRIDAY’/‘Friday’ is recognised as the name of one of the days of the week, the word ‘SEVEN’ in the earlier mark is the word used to refer to number ‘7’ and the term ‘Smart’ in the contested sign means, inter alia, ‘fashionable and expensive’ (information extracted from Cambridge Dictionary Online on 16/10/2020 at www.dictionary.cambridge.org/dictionary/english-spanish/smart).

The words ‘SEVEN’ and ‘FRIDAY’ of the earlier mark have an average degree of distinctiveness in relation to the relevant goods of the opponent.

The word ‘Friday’ of the contested mark has an average degree of distinctiveness for the goods concerned, whereas the word ‘Smart’ has a low degree of distinctiveness, as it could be perceived as a reference to the fashionable or expensive nature of the goods concerned.

Part of the public will see the contested sign as an expression meant to be the opposite of ‘casual Friday’ which is, in some organisations or companies, a day (often Friday) when employees can wear more informal clothes (information extracted from Cambridge Dictionary Online on 16/10/2020 at www.dictionary.cambridge.org/dictionary/english/casual-friday). Therefore, for at least part of the public, ‘Smart Friday’ is perceived as a reference to the idea of wearing more formal clothes on a specific day of the week. From this perspective, the words combined are of a lower-than-average degree of distinctiveness in relation to the goods in Class 25, as they are perceived as a reference to the clothes not being casual. They are of an average degree of distinctiveness as regards the goods in Classes 14 and 18, since the kind of goods these classes cover are not really related to the concept described above.

As the applicant claimed, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. However, even if the only difference is at the beginning of the signs, as is the case here, they share the same structure and are formed by only two terms. It is likely, therefore, that consumers will clearly spot the coincidence of the second word. In addition, the signs also coincide in their first letters ‘S’.

Visually and aurally, the signs coincide in ‘FRIDAY’/‘Friday’ (and their sound) and in the first letter ‘S’ (and its sound).

The signs differ in ‘*EVEN’ and ‘*mart’ (and their sound).

Taking into account the impact/weight of each of the elements forming the signs, for the various reasons described above, it is considered that the signs are visually and aurally similar to a degree that varies from lower than average to average, depending on the various scenarios described above.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs are perceived as having the concept of ‘Friday’. The signs differ in the concept of the number ‘7’ in the earlier mark and of ‘smart’ in the contested sign. Even if the contested sign is perceived as an expression meant to be the opposite of ‘casual Friday’ (see definition above), from this perspective the coinciding concept of ‘Friday’ is still understood and perceived.

Therefore, the signs are considered conceptually similar to a degree that varies from lower than average to average, depending on the various scenarios described above.

d) Distinctiveness of the earlier marks

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

e) Global assessment, other arguments and conclusion

The goods compared are partly identical, partly similar (to an average or high degree) and partly dissimilar. They target the public at large and, in part, also professionals, whose degree of attention during the purchase will vary from average to higher than average.

The signs are visually, aurally and conceptually similar to a degree that varies from lower than average to average, depending on the various scenarios described above. The earlier marks are of an average degree of distinctiveness.

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. Indeed, in the present case, even if consumers do perceive certain differences at the beginnings of the signs, and taking into account the kind of goods found to be identical or similar/highly similar, it is highly conceivable that, in relation to those goods, the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public, and therefore the opposition is partly well founded on the basis of the opponent’s international trade mark registration designating the European Union No 1 105 144, the European Union trade mark registration No 13 500 533 and the European Union trade mark registration No 15 005 333, all for the word mark ‘SEVENFRIDAY’.

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 goods found to be identical or similar/highly 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 opponent refers to previous decisions of the Office 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 concern the comparison of signs, which have already been considered similar (to a low or average degree). Since the opposition is refused in relation to the part of the goods found dissimilar, there is no reason to enter into further examination of the cases referred to by the opponent, since they cannot alter the findings in the comparison of goods above.

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

Eva Inés PÉREZ SANTONJA

María del Carmen SUCH SANCHEZ

Manuela RUSEVA

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.