DECISION

of the Second Board of Appeal

of 9 March 2021

In case R 1631/2020-2

Bruno De Sola
201 Chemin des serres et des plaines 83490 Le Muy France
World Threads LLC
111 NE 1st Street 8th Floor #359 Miami 33132 United States of Amercia	Applicants / Appellants

represented by SCP Le Stanc - Carbonnier, 105 avenue de Lodève, 34070 Montpellier, France

v

Alpargatas S.A.
Avenida das Nações Unidas Nº 14261 Ala A 9ºao 11º Andar São Paulo SP 04794-000 Brazil	Opponent / Defendant

represented by Sugrañes Patentes y Marcas, Calle de Provenza, 304, 08008 Barcelona, Spain

APPEAL relating to Opposition Proceedings No B 3 087 152 (European Union trade mark application No 18 031 601)

The Second Board of Appeal

composed of S. Stürmann (Chairperson), H. Salmi (Rapporteur) and A. Szanyi Felkl (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 6 March 2019, Bruno De Sola and World Threads LLC (‘the applicants’) sought to register the word mark

Hawaiianize

for the following list of goods:

Class 25 - Men's clothing; Women's clothing; Hats; Footwear.

2. The application was published on 27 March 2019.

3. On 25 June 2019, Alpargatas S.A. (‘the opponent’) filed an opposition against the registration of the published trade mark application for all the goods.

4. The grounds of opposition were those laid down in Article 8(1)(b) and Article 8(5) EUTMR.

5. The opposition was based on the following earlier rights:

1. EUTM registration No 12 092 722 for the figurative mark

filed on 27 August 2013 and registered on 8 January 2014 for the following goods:

Class 25 - Clothing, footwear, headgear.

2. EUTM registration No 7 156 128 HAVAIANAS filed on 11 August 2008 and registered on 23 March 2009 for the following goods:

Class 25 - Clothing, footwear, headgear.

3. EUTM registration No 3 772 431 for the figurative sign depicted below filed on 29 April 2004, registered on 20 September 2005 and duly renewed.

for the following goods:

Class 25 - Clothing, footwear and headgear.

4. UK trade mark registration No UK 00 003 292 186 HAVAIANAS filed on 23 February 2018 and registered on 27 July 2018 for the following goods:

Class 25 - Clothing; footwear; headgear.

6. By decision of 18 June 2020 (‘the contested decision’), the Opposition Division refused the trade mark applied for, for all the contested goods. It gave, in particular, the following grounds for its decision:

Proof of use

• The applicants have not submitted the request for proof of use by way of a separate document as required by Article 10(1) EUTMDR. Therefore, the request for proof of use is inadmissible.

Likelihood of confusion

• The opposition is examined in relation to EUTM No 7 156 128 ‘HAVAIANAS’ (word mark).

• The goods are identical.

• The goods found to be identical are directed at the public at large. Their degree of attention is average.

• The signs to be compared are as follows:

  HAVAIANAS	Hawaiianize
  Earlier mark	Contested sign

• The relevant territory is the European Union.

• Both signs are word marks and therefore protected as such, regardless of the typescript used.

• The earlier mark as well as the contested sign will be associated, through the letters ‘HAVAI’ and ‘Hawaii’, with the notion of ‘Hawaii’ which is an island or an archipelago in the Pacific Ocean. This association will be created in the minds of the consumers in the whole European Union because both word elements are based on the universally understandable root ‘Havai’ / ‘Hawai’. However, strictly speaking, the word ‘HAVAIANAS’ only exists in Portuguese (a female adjective in the plural form based on ‘Havai’) and ‘Hawaiianize’ exists in English (a verb based on ‘Hawaii’ meaning to make something Hawaiian).

• The relevant German-speaking public will perceive the signs as a whole and as alluding to the island Hawaii as stated above. The consumers will understand ‘Havai’ in the earlier right as referring to ‘Hawaii’ as the letters ‘v’ and ‘w’ are very similar and the pronunciation is identical in German. Therefore the argument of the applicants that ‘Havai’ will only be understood by Portuguese speakers, is of no avail.

• Bearing in mind that the relevant goods are, among others things, clothing in Class 25, which include shirts, it is considered that the signs, as they allude to ‘Hawaii’, are weak for these goods. This is because a ‘Hawaiian shirt’ is a type of informal shirt with a tropical coloured design which is known to the German and European public. The relevant public who understands the meaning of this allusion will not pay as much attention to this weak part of the signs. Consequently, the impact of this weak element is limited when assessing the likelihood of confusion between the marks at issue.

• Visually, the signs coincide in the letters ‘HA*AI*AN***’, but are dissimilar as regards the letters ‘w’/‘v’, the second ‘i’ and the last letters ‘AS’ or ‘ize’, respectively, of the signs. Therefore, taking into account the weak distinctive character of the letters ‘Havai/Hawaiian’ for some goods, namely clothing, but also that the letters ‘v’ and ‘w’ and ‘I’ and ‘ii’ look very similar, and that the dissimilar letters ‘AS’ and ‘ize’ are placed at the end of the signs, the marks are similar to an average degree.

• Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the marks coincides in the sound of the letters ‘HA-AI-AN’ present identically in both signs. Furthermore, in the case at hand, the sound of the letters ‘V’/‘W’ is identical in German and ‘I’/’ii’ is almost identically pronounced, too. The pronunciation differs in the sound of the additional letters ‘-AS’ at the end of the earlier mark and the letters ‘-ize’ at the end of the contested sign. The applicants’ argument that the contested sign would be pronounced (HA) (QUA) (IA) (NIZE) cannot be upheld, especially as they did not submit any kind of evidence as to why the second syllable should be pronounced as (QUA). Taking into account the limited impact of ‘Havai/Hawaiian’ for some goods, namely clothing, the signs are aurally similar nevertheless at least to an average degree and not dissimilar as the applicants pretend.

• Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as referring to the Hawaiian Islands, and taking into account their limited degree of distinctive character for some goods (clothing), the signs are considered conceptually similar at least to an average degree.

• 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. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. The distinctiveness of the earlier mark must be seen as low for some of the goods in question, namely clothing in Class 25. The mark has a normal degree of distinctiveness for the remaining goods in relation to which it has no meaning from the perspective of the public in the relevant territory.

• The conflicting goods have been found identical and the conflicting signs are visually similar to an average degree, and aurally and conceptually similar at least to an average degree, too.

• There is a likelihood of confusion on the part of the German-speaking public and therefore the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 7 156 128.

• Considering all the above, there is a likelihood of confusion on the part of the public.

• It follows that the contested trade mark must be rejected for all the goods found to be identical to those of the earlier trade mark, even for the contested goods for which earlier mark EUTM No 7 156 128 has a lower degree of distinctiveness, i.e. clothing, in the relevant territory. Moreover, as already mentioned above, said mark possesses a normal degree of distinctiveness for the rest of contested goods.

• 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 were to enjoy an enhanced degree of distinctiveness.

• As the earlier right, EUTM No 7 156 128, 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. In the framework of opposition proceedings, the applicants cannot invoke Article 58 EUTMR. If they wish to do so, they must file a separate request for revocation.

• The applicants refer to previous decisions of the Office to support their 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. 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.

• The previous case referred to by the applicants is not relevant to the present proceedings as the signs are not comparable (Clenosan ./. Aloesan), as they consist of different letters.

• 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 ground of the opposition, namely Article 8(5) EUTMR.

7. On 5 August 2020, the applicants filed an appeal against the contested decision, requesting that the decision be entirely set aside. The statement of grounds of the appeal was received on 15 October 2020.

8. In its response received on 11 December 2020, the opponent requested that the appeal be dismissed.

Submissions and arguments of the parties

9. The arguments raised in the statement of grounds may be summarised as follows:

• The one and only genuine use of the ‘HAVAIANAS’ trade marks concerns shoes and particularly flip-flops.

• The three earlier trade marks are invalid because they are subject to the obligation of genuine use. The Office has violated the provisions of the EUTMR, specifically Article 18 EUTMR.

• The comparison of goods and services is not contested.

• The earlier trade marks have nothing to do with the Hawaiian Islands and all the communications since their creation at the beginning of the 1960s is in reference to their Brazilian roots. The mark applied for clearly refers to the Hawaii Islands, as the brand was born in the USA and literally includes the name of the archipelago.

• Considering the application of the unity character of the European trade mark and, thus, the limitation of the analysis to the German-speaking public made by the Opposition Division, the applicants disagree that this can lead, by itself, to a likelihood of confusion. Indeed, even if the pronunciation for German speakers were similar in the first two syllabus due to the pronunciation of the ‘V’ and ‘W’, the pronunciation is radically different for the two others. As a consequence, this similarity concerning the German-speaking public only refers to the phonetic comparison, and more specifically to just a portion of the signs.

• It is stated in the contested decision that the link between the Hawaii Islands and clothing is obvious because ‘an [sic] Hawaiian shirt is a type of informal shirt with a tropical colored design’. Such an analysis is highly reductive and surprising. Reductive, because it considers Hawaiian influence as being limited to an ‘informal fashion style’ and a ‘tropical design’ hiding all the richness and the diversity of this archipelago, its people, history, fauna and flora, and, generally speaking, its culture. This is surprising because following this reasoning there is an obvious link between the Army and the clothing because it is fashionable to wear a military pattern and the ‘military style’ is well known in fashion.

• Therefore, there is no likelihood of confusion.

• The applicants reiterate their observations related to reputation.

10. The arguments raised in response may be summarised as follows:

• As the Opposition Division correctly stated, the applicants have failed to properly request proof of use of the earlier EU trade marks, and therefore nothing prevents those signs from being the basis of an opposition against a EU trade mark application.

• The applicants proceeded to briefly analyse the content of such documents and concluded that they only proved the use of such trade marks for ‘flip-flops’, but it goes without saying that the evidence of reputation was not intended to be evidence of genuine use of the earlier trade marks whatsoever.

• As there is no legal reason to limit the earlier EU trade marks to ‘Flip-flops’, the allegations made by the applicants lack any relevance for the present case, and therefore, all the goods of the earlier trade marks must be considered and these are totally identical to the goods included in the application.

• The contested decision was correct to compare the signs based on the sole basis of a certain part of the European Union, as the existence of a likelihood of confusion/association for a certain relevant part of the public is already enough for the trade mark to be denied.

• Regarding the phonetical comparison, the opponent fully endorses the contested decision’s reasoning.

• The applicants argued that, whereas the applied sign will be perceived by the public as ‘related to Hawaii’, the earlier trade marks will be mentally related to Brazil. To develop such idea, the applicants state that the earlier brands belong to a Brazilian company, so that they are originally from Brazil, and some of the products sold under the ‘HAVAIANAS’ trade marks incorporate a Brazilian flag. The applicants conclude that, therefore, consumers will associate the ‘HAVAIANS’ trade marks to the country of Brazil. This alleged conceptual link is not true and is not well founded whatsoever. Even if it were to be considered that the earlier signs ‘HAVAIANAS’ are sometimes used close to an icon of the Brazilian flag, it would not mean that the signs ‘HAVAIANAS’ per se would have a conceptual effect linked to Brazil. The verbal elements in the word marks and the stylised marks ‘HAVAIANAS’ would be the only elements considered for the conceptual analysis, and this shows a clear link to HAWAII. The opponent refers to 07/03/2012, B 1 833 733.

• The global comparison leads to a likelihood of confusion, also taking into account that the conceptual effect of ‘HAWAII’ could have a lower degree of distinctiveness for some of the products, because of being a term often used by the general consumers when purchasing shirts, for example to refer to Hawaiian shirts.

• The arguments regarding reputation, the basis of the opposition, was not analysed because the Office is not obliged to analyse all the legal arguments claimed by the parties if one of them is already enough to reject the application.

Reasons

Admissibility of the appeal

11. The appeal complies with Articles 66, 67 and Article 68(1) EUTMR. It is admissible.

Proof of use request

12. Pursuant to Article 10(1) EUTMDR a request for proof of use shall be admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office. In their submissions, filed on 25 February 2020, the applicants did claim that it appeared that the earlier trade marks had been used since their registration only to designate shoes and, in particular, flip-flops. Even if this were accepted as an unconditional request for proof of use, it was not filed in a separate document as required by Article 10(1) EUTMDR. Therefore, the Opposition Division correctly found that the request for proof of use was inadmissible.

Likelihood of confusion

13. Article 8 EUTMR provides:

‘1. Upon opposition by the proprietor of an earlier trade mark, the trade mark applied for shall not be registered:

…

b) if because of its identity with or similarity to the earlier trade mark and the identity or similarity of the goods and 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.

…’.

14. A likelihood of confusion lies in the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 17).

15. A likelihood of confusion on the part of the public must be assessed globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Relevant public

16. The perception of the marks in the mind of the relevant public for the goods and services in question plays a decisive role in the global assessment of the likelihood of confusion. In this assessment account should be taken of the average consumer of the category of products concerned, who is reasonably well informed and reasonably observant and circumspect.

17. The opposition is based on an earlier EUTM. Thus, the relevant territory for the likelihood of confusion assessment is the entire European Union.

18. Earlier European Union trade marks may be relied on in opposition to any subsequent application to register a trade mark which infringes their protection, even if it does so only in the perception of the consumers of part of the European Union. In this respect, ‘a part’ of the European Union can consist of only one Member State (14/12/2006, T‑81/03, T‑82/03 & T‑103/03, Venado, EU:T:2006:397, § 76, 83, last sentence). Thus, the opposition has to be upheld even if there is only a likelihood of confusion between the contested trade mark and the earlier European Union trade mark in one Member State. The Board will assess the likelihood of confusion from the point of view of the relevant public in Germany, following the approach taken in the contested decision.

19. Established case-law has it that the average consumer is deemed to be ‘reasonably well-informed and reasonably observant and circumspect’. It should also be borne in mind that the average consumer's level of attention is likely to vary according to the category of goods or services in question (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). In the case at hand all the goods are directed at the public at large and the relevant public’s degree of attention is average.

Comparison of the goods

20. According to settled case-law, in assessing the similarity of the goods or services concerned, all the relevant features of the relationship between them should be taken into account, including, inter alia, their nature, their intended purpose, their method of use, and whether they are in competition with each other or are complementary. Other factors may also be taken into account, such as the distribution channels of the goods concerned, or the fact that the goods are often sold in the same specialist sales outlets, which is likely to facilitate the perception by the relevant consumer of the close connections between them and strengthen the perception that the same undertaking is responsible for the production of those goods (18/06/2013, T‑522/11, Apli-Agipa, EU:T:2013:325, § 32 and the case-law cited) or that the goods are usually produced by the same manufacturer.

21. Goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark (07/09/2006, T-133/05, Pam-Pim’s Baby-Prop, EU:T:2006:247, § 29 and the case-law cited therein). The same consideration of identity applies if there is an overlap between the goods; that is because the goods are identical to the extent that they overlap. It is undisputed that the contested decision correctly found that the goods are identical.

Comparison of the marks

22. The global assessment of the likelihood of confusion must, as regards the visual, aural or conceptual similarity of the marks in question, be based on the overall impression which they create, bearing in mind, in particular, their distinctive and dominant components. The perception of marks in the mind of the average consumer of the goods or services in question plays a decisive role in the global assessment of that likelihood. In that respect, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 35 and the case-law cited).

23. With regard to the assessment of the dominant character of one or more given components of a complex trade mark, account must be taken, in particular, of the intrinsic qualities of each of those components by comparing them with those of other components. In addition and accessorily, account may be taken of the relative position of the various components within the arrangement of the complex mark (23/10/2002, T‑6/01, Matratzen, EU:T:2002:261, § 35).

24. The assessment of the similarity between two marks means more than taking just one component of a composite trade mark and comparing it with another mark. On the contrary, the comparison must be made by examining each of the marks in question as a whole, which does not mean that the overall impression conveyed to the relevant public by a composite trade mark may not, in certain circumstances, be dominated by one or more of its components (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 41 and the case-law cited).

25. It is only if all the other components of the mark are negligible that the assessment of similarity can be carried out solely on the basis of the dominant element (12/06/2007, C‑334/05 P, Limoncello, EU:C:2007:333, § 42).

26. The signs to be compared are:

    HAVAIANAS	Hawaiianize
    Earlier mark	Contested sign

27. As correctly found in the contested decision, visually, the signs coincide in the letters ‘HA*AI*AN***’, but are dissimilar as regards the letters ‘w’/‘v’, the second ‘i’ and the last letters ‘AS’ or ‘ize’, respectively, of the signs. Bearing in mind that the relevant goods include, among others things, ‘clothing’ in Class 25, which include shirts, for these goods the signs allude to a ‘Hawaiian shirt’, which is a type of informal shirt with a tropical coloured design which is known as such to the German and European public.

28. It should be noted that even if the elements ‘Havai’/‘Hawaiian’ in the marks were to be considered to possess a lower degree of distinctive character for ‘clothing’, the fact remains that, according to case-law, the weak distinctive character of an element of a mark does not necessarily mean that it will not be taken into consideration by the relevant public. Accordingly, it cannot be ruled out that, by reason in particular of its position in the sign or its size, such an element holds an autonomous position in the overall impression conveyed by the mark concerned in the perception of the relevant public. Likewise, despite its weak distinctive character, an element of a trade mark which is descriptive is likely to attract the attention of the relevant public because of its length and position at the beginning of those marks (26/11/2015, T-262/14, BIONECS / BIONECT, EU:T:2015:886, § 47 and the case-law cited therein).

29. That is the situation in the present case concerning the elements ‘Havai’/‘Hawaiian’, which determine, to a significant extent, the overall impression produced by the two signs at issue. These elements are situated at the beginnings of the two signs, the part which is in principle more likely to catch the public’s attention (26/11/2015, T-262/14, BIONECS / BIONECT, EU:T:2015:886, § 48 and the case-law cited therein).

30. In conclusion, even if the relative importance of the elements ‘Havai’/‘Hawaiian’, in the comparison of the signs were to be considered reduced, the fact remains that these elements must be taken into account during the comparison (by analogy, 26/11/2015, T-262/14, BIONECS / BIONECT, EU:T:2015:886, § 49). Additionally, it should be noted that the signs coincide in the letters ‘HA*AI*AN***’, that is in six letters in the same position in the signs all in all (by analogy, 13/05/2015, T‑363/13, CLEANIC intimate / CLINIQUE, EU:T:2015:276, § 61, confirmed in 07/04/2016, C‑474/15 P, CLEANIC intimate / CLINIQUE, EU:C:2016:263). Therefore, there is at least an average degree of visual similarity between the signs.

31. What has been said above also applies to the phonetic comparison. Phonetically, irrespective of the different pronunciation rules in different parts of the relevant territory the pronunciation of the marks coincides in the sound of the letters ‘HA-AI-AN’ present identically in both signs. Furthermore, in the case at hand, the sound of the letters ‘V’/‘W’ is identical in German and ‘I’/‘ii’ is almost identically pronounced, too. The pronunciation differs in the sound of the additional letters ‘-AS’ at the end of the earlier mark and the letters ‘-ize’ at the end of the contested sign. Taking into account the possible limited impact of ‘Havai’/‘Hawaiian’ for some goods, namely clothing, the signs are nevertheless aurally similar at least to an average degree.

32. Conceptually, the earlier mark as well as the contested sign will be associated, through the letters ‘HAVAI’ and ‘Hawaii’, with the notion of ‘Hawaii’ which is an island or an archipelago in the Pacific Ocean. This association will be created in the minds of the consumers in the whole European Union because both word elements are based on the universally understandable root ‘Havai’/‘Hawaii’. The relevant German-speaking public will perceive the signs as a whole and as alluding to the island Hawaii as stated above.

33. The relevant public who understands the meaning of the allusion to ‘Hawaiian shirts’ as far as ‘clothing’ is concerned, will not pay as much attention to this weaker part of the signs. Consequently, the impact of these weak letters is more limited when assessing the likelihood of confusion between the marks at issue. However, this does not mean that they are not to be taken into account at all and therefore, as both signs will be perceived as referring to the Hawaiian Islands, the signs are considered conceptually similar at least to an average degree.

34. The applicants argued that whereas the sign applied for will be perceived by the public as ‘related to Hawaii’, the earlier trade marks will be mentally related to Brazil. To develop such idea, the applicants state that the earlier brands belong to a Brazilian company, so that they are originally from Brazil, and some of the products sold under the ‘HAVAIANAS’ trade marks incorporate a Brazilian flag. The applicants conclude that, therefore, consumers will associate the ‘HAVAIANS’ trade marks to the country of Brazil. On this point the Board agrees with the opponent that even if the earlier signs ‘HAVAIANAS’ were sometimes used together with a Brazilian flag, it would not mean that the signs ‘HAVAIANAS’ per se would have a conceptual effect linked to Brazil. In any case, the conceptual comparison of the signs must be based on the marks as registered and not as they may be used on the market.

35. Taking all of the above into account, it is considered that the signs under comparison have an average degree of similarity overall.

Distinctiveness of the earlier mark

36. The Board, at this stage, will follow the approach of the Opposition Division which did not find it necessary to assess the enhanced distinctiveness of the earlier mark claimed. Bearing in mind the above assessment of the distinctive and dominant elements of the earlier mark, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of public in Germany. Therefore, notwithstanding that it contains some letters of weaker distinctive character for some of the goods, the distinctiveness of the earlier mark must be seen as normal.

Overall assessment of the likelihood of confusion

37. A global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, the similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

38. As to the level of attention of the relevant public, which is average, it should be noted that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his or her trust in the imperfect picture of them that he or she has kept in his or her mind (16/07/2014, T‑324/13, Femivia, EU:T:2014:672, § 48 and the case-law cited).

39. If there is identity between the goods, as there is for the goods in the case at hand, such a finding would imply, that, if there is to be no likelihood of confusion, the degree of difference between the marks at issue must be high (13/11/2012, T‑555/11, tesa TACK, EU:T:2012:594, § 53 and the case-law cited therein).

40. In light of the foregoing, taking into account the relevant factors and their mutual interdependence, it is likely that a significant part of the relevant public will be misled into thinking that the identical goods bearing the signs, which are similar to an average degree, come from the same undertaking or, as the case may be, from undertakings that are economically-linked.

41. The appeal is dismissed.

Costs

42. Pursuant to Article 109(1) EUTMR and Article 18 EUTMIR, the applicants, as the losing party, must bear the opponent’s costs of the opposition and appeal proceedings.

43. As to the appeal proceedings, these consist of the opponent’s costs of professional representation of EUR 550.

44. As to the opposition proceedings, the Opposition Division ordered the applicants to bear the opposition fee of EUR 320 and the opponent’s representation costs which were fixed at EUR 300. This decision remains unaffected. The total amount for both proceedings is therefore EUR 1 170.

Order

On those grounds,

THE BOARD

hereby:

1. Dismisses the appeal;

2. Orders the applicants to bear the opponent’s costs in the appeal proceedings, which are fixed at EUR 550. The total amount to be paid by the applicants in the opposition and appeal proceedings is EUR 1 170.

Signed S. Stürmann

Signed H. Salmi

Signed A. Szanyi Felkl

Registrar: Signed H.Dijkema