OPPOSITION No B 3 082 593

Toptan Evi Iç Ve Dis Ticaret Limited Sirketi, Mücahitler Mahallesi, Gazimuhtarpasa Bulvari, 52075 Nolu Sokak, Kugu Apartmani Alti, No: 12/D, Sehitkamil-Gaziantep, Turkey (opponent), represented by Silex IP, Poeta Joan Maragall 9, Esc. Izq., 3º Izq., 28020 Madrid, Spain (professional representative)

a g a i n s t

Grand Power Petrol Insaat Ic Ve Dis Ticaret Limited Sirketi, Budak Mahallesi, Gazimuhtarpasa Bulvari, 10031 Nolu Sokak, No: 42 Yasem Is Merkezi, Kat: 7 No: 704, Sehitkamil – Gaziantep, Turkey (applicant), represented by Inlex IP Expertise, Plaza San Cristobal 14, 03002 Alicante, Spain (professional representative).

On 16/04/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 082 593 is partially upheld, namely for the following contested goods:

Class 29: All goods in this Class, except for prepared insects and larvae.

Class 30: All goods in this Class.

Class 32: All goods in this Class.

2. European Union trade mark application No 18 014 112 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 014 112 for the figurative sign . The opposition is based on, inter alia, European Union trade mark registration
No 14 861 439 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 14 861 439 for the figurative mark .

a) The goods

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

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products, namely, cheese, yoghurt, yoghurt drinks; edible oils and fats; salami, sausages, fish canned, milk-based beverages flavoured with chocolate.

Class 30: Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice; pasta, stuffed dumplings, noodles; semolina; flour; biscuits; ice milk; milk chocolate; tomato sauce.

Class 32: Beers; preparations for making beer; mineral water, spring water, table water, soda water; fruit and vegetable juices, fruit and vegetable concentrates and extracts for making beverages, non-alcoholic soft drinks; energy drinks.

The contested goods are the following:

Class 29: Birds eggs and egg products; dairy products and dairy substitutes; fish, seafood and molluscs, not live; meats; prepared insects and larvae; processed fruits, fungi and vegetables (including nuts and pulses); sausage skins and imitations thereof; soups and stocks, meat extracts; oils and fats.

Class 30: Coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; processed grains, starches, and goods made thereof, baking preparations and yeasts; salts, seasonings, flavourings and condiments; sugars, natural sweeteners, sweet coatings and fillings, bee products; bread; cereal bars and energy bars; pastries, cakes, tarts and biscuits (cookies); sweets (candy), candy bars and chewing gum; aerated chocolate; almond confectionery; almonds covered in chocolate; apple fritters; banana fritters; baozi [stuffed buns]; burritos; buckwheat jelly (memilmuk); brioches; bibimbap [rice mixed with vegetables and beef]; bean jam buns.

Class 32: Beer and brewery products; non-alcoholic beverages; preparations for making beverages.

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

The term ‘including’, used in the applicant’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

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

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

Contested goods in Class 29

Birds eggs; dairy products; meats; meat extracts; oils and fats are identically contained in both lists of goods (including synonyms).

The contested fish, seafood, not live includes, as a broader category, or overlaps with, the opponent’s fish canned. 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 processed fruits and vegetables includes, as a broader category, or overlaps with, the opponent’s preserved, frozen, dried and cooked fruits and vegetables. 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 soups and stocks are highly similar to the opponent’s meat extracts. The goods under comparison can coincide in nature (both can take liquid or dried forms), method of use (add water), distribution channels, relevant public and producer/provider. They are also in competition in the sense that one can be used in substitution of the other, however, this interchangeability works only one way where meat extracts can be used as simple bouillon broths. They do not, however, have the same purpose, where the purpose of meat extracts is to provide additional flavour to dishes, or to act as an ingredient for broths/soups. Furthermore, they are not complementary as one is not indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods lies with the same undertaking.

Furthermore, the contested dairy substitutes are similar to a high degree to the opponent’s milk products, namely, cheese, yoghurt, yoghurt drinks. They usually coincide in producer, relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested sausage skins and imitations thereof are similar to the opponent’s meat. Meat is a broad category which include raw meat and semi-processed meat products, which are used in the production of sausages. The same refers to sausage skins and imitations thereof. These goods are directed both at the meat industry (including meat processing factories, butchers shops where sausages are prepared for consumers’ convenience etc.) and the general public, or more precisely, culinary enthusiasts who prepare sausages at home. The earlier meat and the contested sausage skins and imitations thereof originate from the same undertakings (slaughterhouses sell not only meat, but also various by-products, such as animal intestines), are sold in the same places and the same public uses these goods for the same purpose, the goods are considered similar.

Likewise, the contested egg products are similar to the opponent’s eggs. They usually coincide in producer, relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested molluscs, not live is also similar to the opponent’s fish canned. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

Furthermore, the contested processed fungi (including nuts and pulses) is similar at least to a low degree to the opponent’s preserved, frozen, dried and cooked vegetables. They usually coincide in producer, relevant public and distribution channels.

The contested prepared insects and larvae (which are for example edible small animals such as ants, beetles and crickets) have no relevant points in common with the opponent’s goods. These contested goods do not have the same or a similar nature as for example the opponent’s meat, fish, poultry and game in Class 29, and all the more, they differ in nature from the opponent’s remaining goods in this class. Although some of these goods may be sold in the same larger supermarkets, they are unlikely to be found in the same section or shelves. Furthermore, they would not usually be produced by the same undertakings as they require entirely different professional expertise and know-how. Therefore, they are dissimilar to the opponent’s goods in Class 29. Likewise, bearing in mind the above arguments, they cannot be found similar to any of the opponent’s goods in Classes 30 and 32.

Contested goods in Class 30

Coffee, teas and cocoa; ice, ice creams; salts; sugars; bread; pastries; yeasts; biscuits (cookies) are identically contained in both lists of goods (including synonyms).

The contested sorbets overlaps with the opponent’s ices. Therefore, they are identical.

The contested seasonings overlaps with the opponent’s spices. Therefore, they are identical.

The contested condiments includes with the opponent’s sauces (condiments). Therefore, they are identical.

The contested natural sweeteners, sweet coatings and fillings, bee products include, as broader categories, or overlap with, the opponent’s honey. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested baking preparations includes, as a broader category, the opponent’s baking-powder. 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 aerated chocolate; almond confectionery; almonds covered in chocolate; sweets (candy), candy bars are included in the broad category of, or overlap with, the opponent’s confectionery. Therefore, they are identical.

The contested cakes, tarts; brioches; apple fritters; banana fritters are included in, or overlap with, the broad category of the opponent’s pastry. Therefore, they are identical.

The contested coffee, teas and cocoa substitutes are highly similar to the opponent’s coffee, tea, cocoa. They usually coincide in producer, relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested frozen yogurts are highly similar to the opponent’s ices. They have the same purpose. They usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested processed grains and goods made thereof; bibimbap [rice mixed with vegetables and beef]; cereal bars and energy bars; baozi [stuffed buns]; burritos; buckwheat jelly (memilmuk); bean jam buns are at least similar to an average degree to the opponent’s preparations made from cereals. They may have the same nature and purpose, and also distribution channels, sales outlets, producers, relevant public and method of use.

The contested chewing gum is similar to at least an average degree to the opponent’s confectionery, since these goods commonly target the same public through the same distribution channels and are often produced by the same undertakings.

The contested flavourings are similar to the opponent’s spices. They have the same purpose. They usually coincide in relevant public, distribution channels and method of use.

The contested starches and goods made thereof are similar to the opponent’s flour. Starch may take the consistency of flour and be used to thickening other foodstuffs on account of their starch content. They are deemed to be similar, since they can be in competition, and also coincide in producers, relevant public and distribution channels.

Contested goods in Class 32

Beer is identically contained in both lists of goods (including synonyms).

The contested brewery products overlaps with the opponent’s beers. Therefore, they are identical.

The contested non-alcoholic beverages includes, as a broader category, the opponent’s mineral water. 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 preparations for making beverages overlaps with the opponent’s extracts for making beverages. Therefore, they are identical.

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 (to varying degrees) are directed at the public at large, and to a very limited extent also to professionals (e.g. sausage skins and imitations thereof). The degree of attention may vary from below average to average as some of these products are rather cheap and for daily consumption.

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 earlier mark is a figurative sign composed of three speech bubble-like devices of the same size containing some verbal elements, namely ‘Nosor’, ‘Baladna’ and ‘ALL THE GOODNESS’. On each bubble a line and depictions of a bird and a gate with two towers appear. Two of these speech bubbles contain also devices that will be seen as Arabic script.

The contested sign is a figurative sign composed of the verbal elements ‘Khairat’ and ‘Baladna’, the sign ® and a device that can be seen as Arabic script. It consists also of a representation of a leaf. All these elements are placed against an oval background.

It should be noted at the outset, that a negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign. The earlier mark contains some very small verbal elements, namely ‘Nosor’ and ‘ALL THE GOODNESS’. Due to their very small size, it is considered that consumers would disregard them in the overal perception of the sign and, therefore, these elements will not be taken into account in the comparison, since they are considered negligible.

Furthermore, the ® symbol in the contested sign, placed above the letter ‘a’ in its verbal element ‘Balanda’, does not have any trade mark significance as such. It just serves to indicate that it is a registered mark. Therefore, it will be disregarded in the following comparison.

The verbal element ‘Baladna’, present in both signs, has no meaning for the relevant public and is, therefore, distinctive.

The verbal element ‘Khairat’ in the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The figurative devices written in Arabic letters are also meaningless for the relevant public and are, therefore, distinctive. As the Arabic scripts, are unintelligible for the relevant consumer, they will be given secondary importance (11/12/2014, T-480/12, Master, EU:T:2014:1062, § 45).

The earlier mark is composed also of some other figurative elements having a concept, namely depictions of a bird and a gate with two towers. As such, they have no direct meaning for the relevant goods and are, therefore, distinctive.

The aforesaid figurative element being a leaf in the contested sign will be associated with agricultural products. Bearing in mind that the relevant goods are food-related, this element is weak for some of these goods, namely for the goods in Classes 29 and 30. For the remaining goods it is normally distinctive.

Furthermore, the signs under comparison comprise some other figurative elements, such as a curved line in the earlier mark and backgrounds, the latter present in both signs. They serve purely decorative purposes and are, therefore, either secondary or non-distinctive. The stylisation of the letters in the signs under comparison is rather commonplace and, therefore, secondary. Furthermore, colours used in the signs play a secondary role in the comparison.

The element ‘Baladna’ in the earlier mark, being placed centrally and much larger than other verbal and figurative components, is the dominant element as it is the most eye-catching.

The contested sign has no element that could be considered clearly more dominant than other elements.

Furthermore, 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 verbal element ‘Baladna’. They differ mainly in the verbal element ‘Khairat’ of the contested sign. Furthermore, the signs differ in their figurative elements (e.g. Arabic letters) and backgrounds, as well as colours, that play a secondary or even non-distinctive role in the comparison.

Therefore, the signs are visually similar to a below average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛Baladna’, present identically in both signs. The pronunciation differs in the sound of the letters ‘Khairat’ of the contested sign, which has no counterparts in the earlier mark. The Arabic letters will not be pronounced by the relevant public.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with dissimilar concepts, namely the concept of a bird and a gate with two towers (earlier mark) and the concept of a leaf (contested sign), the signs are conceptually not similar. This conceptual difference in the contested sign has little impact on the comparison.

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 Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods are partly identical, partly similar (to varying degrees) and partly dissimilar. They target the general public, and to a limited extent also professionals, whose degree of attention may vary from below average to average. The signs are visually similar to a below average degree and aurally similar to an average degree. The signs are not conceptually similar. Furthermore, the earlier mark has a normal degree of inherent distinctiveness.

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).

The signs under comparison coincide in their verbal element ‘Baladna’, which is the dominant and distinctive element in the earlier mark. As explained above the element ‘Baladna’ in the earlier mark is placed centrally and much larger than other verbal and figurative components. The signs differ mainly in the verbal element ‘Khairat’ of the contested sign and also in some minor, secondary and non-distinctive elements contained in both signs, such as the stylisation of the letters, certain basic geometrical figurative elements and backgrounds. Furthermore, they differ in the distinctive figurative elements (e.g. elements resembling Arabic script) which, however, will have less impact on the consumer than the verbal elements as explained above. Therefore, these differences between the signs cannot outweigh their visual and aural similarities.

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 covered are from the same or economically linked undertakings. In the present case, it is highly conceivable that the relevant consumer will perceive the contested sign as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of foodstuffs/beverages that it designates. It constitutes frequent practice nowadays for companies to make small variations of their trade marks, for example by altering their typeface or colour, or adding terms or elements to them, in order to name new lines of products, or to create a modernised version of the mark.

The applicant refers to previous decisions of the Office to support its arguments (i.e. decisions of the Opposition Division: B 3 074 980, B 3 065 661, B 3 061 560 and B R 1347/2017-2). 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 applicant are not relevant to the present proceedings since they concern different factual circumstances as they concern trade marks with different distinctiveness and structure (including different verbal and figurative elements) as well as different goods and services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the 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 14 861 439 for the figurative mark .

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar (to varying degrees) to those of the earlier trade mark, even with regard to the goods found to be similar at least to a low degree.

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

- European Union trade mark registration No 17 003 856 for the figurative mark (registered for the goods in Classes 29 and 30),

- European Union trade mark registration No 17 966 351 for the figurative mark (registered for the services in Class 35).

The other earlier right, namely European Union trade mark registration
No 17 003 856, invoked by the opponent, covers goods in Class 29, namely meat, fish, poultry and game; processed meat products; dried pulses; soups, bouillon; processed olives, olive paste; milk and milk products, butter; edible oils; dried, preserved, frozen, cooked, smoked or salted fruits and vegetables; tomato paste; prepared nuts and dried fruits as snacks; hazelnut spreads and peanut butter; tahini (sesame seed paste); eggs and powdered eggs; potato chips, and in Class 30, namely coffee, cocoa; coffee or cocoa based beverages, chocolate based beverages; pasta, stuffed dumplings, noodles; pastries and bakery products based on flour; desserts based on flour and chocolate; bread; honey, bee glue for human consumption, propolis for food purposes; condiments for foodstuff, vanilla (flavoring), spices, sauces (condiments), tomato sauce; yeast, baking powder; flour, semolina, starch for food; sugar, cube sugar, powdered sugar; tea, iced tea; confectionery, chocolate, biscuits, crackers, wafers; chewing gums; ice-cream, edible ices; salt; cereal-based snack food, popcorn, crushed oats, corn chips, breakfast cereals, processed wheat for human consumption, crushed barley for human consumption, processed oats for human consumption, processed rye for human consumption, rice; molasses for food; dried thyme; halva, which are clearly different to the remaining contested goods . The above mentioned arguments shall apply accordingly. Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

The other earlier right, namely European Union trade mark registration
No 17 966 351, invoked by the opponent covers services in Class 35 such as the bringing together, for the benefit of others, of a variety of goods, namely, meat, fish, poultry and game, processed meat products, dried pulses, soups, bouillon, processed olives, olive paste, milk and milk products, butter, edible oils, dried, preserved, frozen, cooked, smoked or salted fruits and vegetables, tomato paste, prepared nuts and dried fruits as snacks, hazelnut spreads and peanut butter, tahini (sesame seed paste), enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of a variety of goods, namely, eggs and powdered eggs, potato chips, coffee, cocoa, coffee or cocoa based beverages, chocolate based beverages, pasta, stuffed dumplings, noodles, pastries and bakery products based on flour, desserts based on flour and chocolate, pita bread, sandwiches, pies, cakes, desserts based on dough coated with syrup, puddings, custard, rice pudding, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of a variety of goods, namely, honey, bee glue for human consumption, propolis for food purposes, condiments for foodstuff, vanilla (flavoring), spices, sauces (condiments), tomato sauce, yeast, baking powder, flour, semolina, starch for food, sugar, cube sugar, powdered sugar, tea, iced tea, confectionery, chocolate, biscuits, crackers, wafers, chewing gums, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of a variety of goods, namely, ice-cream, edible ices, salt, cereal-based snack food, popcorn, crushed oats, corn chips, breakfast cereals, processed wheat for human consumption, crushed barley for human consumption, processed oats for human consumption, processed rye for human consumption, rice, molasses for food, enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues, which are clearly different to those applied for in the contested trade mark. Retail (being a synonym to bringing together, for the benefit of others, of a variety of goods) is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale). Retail services in general are not similar to any goods that are capable of being sold by retail. Apart from being different in nature, given that services are intangible, whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with, nor necessarily complementary to, each other. When goods sold at retail are dissimilar to the actual goods themselves, no similarity can be found between them. Therefore, the remaining contested goods, that is, prepared insects and larvae, are dissimilar to the opponent’s services (as prepared insects and larvae are dissimilar to the goods that are subject of these services). Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods.

Since the opposition is partially 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 extensive use as claimed by the opponent and in relation to identical and similar (to varying degrees) goods. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

Vít MAHELKA

Michal KRUK

Chantal VAN RIEL

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.