OPPOSITION No B 3 086 277

Imperial — Produtos Alimentares, S.A., Rua de Santana, 4480-160 Azurara, Portugal (opponent), represented by Rui Pelayo de Sousa Henriques and Pedro Gil da Silva Pelayo de Sousa Henriques, Rua de Sá da Bandeira, 706 -6°.Dt, 4000-432 Porto, Portugal (professional representatives)

a g a i n s t

Tava&Tru, S.L., C/ Menéndez y Pelayo, 20, 35110 Santa Lucía de Tirajana / Las Palmas de Gran Canaria, Spain (applicant), represented by Molero Patentes y Marcas S.L., Paseo de la Castellana, 173-Bajo Izq., 28046 Madrid, Spain (professional representative)

On 15/02/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 277 is upheld for all the contested goods.

2. European Union trade mark application No 18 041 808 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 041 808 for the word mark ‘PIZZA REGINA LETIZIA’. The opposition is based on, inter alia, Portuguese trade mark registration No 484 191 ‘REGINA’. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier Portuguese trade mark registration No 484 191 for the word mark ‘REGINA’.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Portugal for chocolates, cocoa, confectionery, pastries, sweets and confectionery in Class 30.

The opposition is directed against the following goods:

Class 30: Pizza; pizza crust; pizza flour.

In the present case, the contested trade mark was filed on 28/03/2019. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Portugal prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely those mentioned above.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 21/01/2020 (within the initial time limit set by the Office and extended for two months by the opponent’s request), the opponent submitted evidence, mostly in Portuguese, along with translations into English, which will be referred to below. The submission contains the following items of evidence.

 Document 1: a document, dated 11/04/2016, issued by the Portuguese Association of the Industry of Chocolates and Confectionery (ACHOC), certifying that the brand ‘Regina’ is among the oldest brands in the chocolate and confectionery sector in Portugal and ‘enjoys a high reputation and visibility, being a prestigious brand always associated with quality products’.

 Documents 2 and 23: affidavits (1) and (2), signed by members of the Portuguese Order of Chartered Accountants, dated 22/04/2016 and 30/04/2019. The documents give annual turnover figures for the company Imperial – Produtos Alimentares, S.A., for 2004-2015 (1) and 2016/2019-Q1 (2). According to the affidavits, these results were generated by the sales of chocolate and other confectionery products offered on the market under the brand ‘Regina’. The first affidavit states that 85 % of these sales were domestic (in Portugal), while, in the second affidavit, this number has increased to 90 % in the reported period.

 Document 3: a printout of an article entitled ‘Imperial’s cash cow’, as translated by the opponent, published in the magazine Marketeer and dated June 2002. This is a national magazine specialising in business, particularly marketing, and targets, inter alia, business professionals. The article relates to the history and marketing development of the brand ‘Regina’, founded in the 1920s, demonstrating the importance of the brand offered by the largest Portuguese manufacturer of chocolate products.

 Document 4: a printout of an article entitled ‘Imperial – Tradition, quality and innovation’, published in Distribution Today (DH) in March 2004. The article is about the past and present development of the brand ‘Regina’ for chocolate products, including its relaunch onto the market in 2002. The article further mentions the opponent’s intention to widen its distribution channels that offer immediate consumption, such as cafes, snack bars and pastry shops across the country.

 Document 5: a printout of an article entitled ‘Brands with history. Chocolates not to be forgotten’ and subtitled ‘Regina, bankrupt for six years, was then reborn on being bought by Imperial and today sells in 22 countries’, published in the Portuguese magazine Expresso on 21/03/2009. According to the article, the opponent is the largest Portuguese chocolate manufacturer, and the brand ‘Regina’ is among the most successful brands in its portfolio, accounting for 47 % of its global sales. The article also contains the following statement: ‘Regina made its mark on many generations and is one of Portugal’s most emblematic brands’.

 Document 6: a printout of an article entitled ‘An Imperial success case. The crown of chocolate’, published in Marketeer in November 2009, concerning the international growth of the opponent’s company based on, inter alia, the brand ‘Regina’. The article also refers to the annual production of various confectionery products branded under, inter alia, the trade mark ‘Regina’ (considered to generate at least half of the turnover values mentioned), as well as to the total annual turnovers for 2008 and 2009.

 Document 7: a printout of an article entitled ‘The sweet growth of Imperial’, published in Expresso, dated 14/08/2010, discussing the expansion strategy of the opponent’s company, as well as the role of the brand ‘Regina’ in its growing sales on the domestic market.

 Document 8: a catalogue and samples of packaging, with illustrations of chocolate products (chocolates, pralines, bonbons, confectionery eggs, desserts, etc.) and other confectionery products offered under the brand ‘Regina’. Some of the packages show expiry dates, for example in 2013, 2017, 2018 and 2019. The information on the packaging is in Portuguese, some references in English also appear.

 Document 9: a printout of an article entitled ‘The holes machine is back on counters’, dated 25/10/2013 and published in Mundo Português. The article refers to the 85th birthday of the brand ‘Regina’ giving some historical details regarding the revival of one of the brand’s iconic marketing items after 20 years and its huge success, despite its previous disappearance from the market, following the 2002 relaunch.

 Document 10: a printout of an article entitled ‘Manuela and the machine of holes’, published in Jornal de Notícias on 15/12/2013. The article refers to the ‘Regina’ product ‘box of holes’, which used to be and is once more a successful chocolate product in Portugal (selling more than 20 000 units in 2013).

 Document 11: a printout of an article entitled ‘Regina, the trade mark of good memories’, published in Store Magazine on 01/01/2014. The article also refers to the relaunch of the brand during Easter 2002 and its rapid rise; for example, in 2012, the company sold 125 million units of chocolate-covered dried fruit.

 Document 12: a printout of an article entitled ‘What was your trade mark up to the age of 18’, published in Marketeer on 01/01/2014, in which various independent public figures were asked about the trade marks that meant something to them during their adolescence. The brand ‘Regina’ was picked by 2 of the 15 participants.

 Documents 13, 14, 15 and 19: printouts of various articles, published in Mundo Português, referring to the opponent’s company and the brand ‘Regina’: in particular, ‘We are especially attentive to Asian countries’ (21/11/2014), ‘Mundo Português summer activities taking place throughout the country’ (14/08/2015), ‘The return of the ‘holes’ of sweet surprises reaffirms Regina as the most popular trade mark for chocolates in Portugal’ (28/08/2015) and ‘Regina’s holes box returns to São Mateus Fair’ (19/08/2016).

 Document 16: a printout of an article entitled ‘Chocolates grow with Christmas’, published in Grande Consumo (‘The distribution business magazine’) in November/December 2015, including a shortlist of Portuguese households’ preferred chocolates for Christmas. The opponent’s brand ‘Regina’ is ranked 5th.

 Document 17: a printout of an article entitled ‘Asia and Middle East are the new destination of Imperial chocolates. Regina represents approximately 40 % of sales’, published in Diário Económico on 28/12/2015.

 Document 18 (A-G): copies of advertisements for the opponent’s brand ‘Regina’ in various magazines, in particular Cristina (2015), Dica (2015), Lux (2015), Caras (2015, 2017), Mundo Português (2015, 2016), Time Out Lisboa, Best of 2017 (2017).

 Document 20: a printout of an article entitled ‘The flavour of nostalgia’, published in Exame in July 2016, in which the subject of ‘nostalgia food’ is treated, namely ‘food which confers emotional comfort in relation to a particular person or moment of affective life’, and the trend of retro marketing is observed, namely, ‘historical products are gaining more and more fans and are even the first choice for a considerable group of consumers’. The article gives examples of ‘Regina’ confectionery that have become historically recognised products.

Additionally, the opponent refers to many previous cases (pages 29-33 of the opponent’s observations) where the reputation of the earlier mark ‘Regina’ has been repeatedly assessed and confirmed by the Office. Even though the present assessment cannot be directly bound to those previous findings, they remain a factor that needs to be taken into account and be given the appropriate weight.

Having examined the material listed above, the Opposition Division concludes that the earlier trade mark ‘Regina’ enjoys a high degree of reputation on the Portuguese market in relation to chocolates, sweets and confectionery.

The evidence listed above, when examined as a whole, proves that the earlier trade mark ‘Regina’ has been used on the Portuguese market for a substantial period of time and is known among Portuguese consumers as one of the preferred brands on the national market when it comes to chocolate confectionery. As is evident from the documents listed above, despite the opponent’s brand being absent from the market for 20 years, on being relaunched in 2002, the immediate recollection and recognition of the trade mark ‘Regina’ as a leading brand in the confectionery industry was not affected. Various studies by third parties examine the marketing strategies and the continuous expansion of this so-called ‘retro brand’ (see document 20), and all conclude that the revival is a significant success. The sales and turnover figures, supplied, in particular, in documents 2 and 23 (the most recent), and supported by additional information from media sources and market trend reports (documents 3-20) originating from independent sources, all unequivocally show the opponent’s marketing efforts and its success in achieving a consolidated position in the relevant market for confectionery products.

Therefore, the Opposition Division finds that, when considered in its entirety, the evidence submitted by the opponent indicates that the earlier trade mark enjoys a high degree of recognition among the relevant Portuguese public, therefore, allowing the Opposition Division to conclude that the earlier trade mark enjoys a reputation within the meaning of Article 8(5) EUTMR.

The evidence does not, however, succeed in establishing the reputation of the trade mark for all the goods on which the opposition is based and for which reputation has been claimed. The evidence mainly concerns chocolates and related confectionery products, while reference to the remaining goods (e.g. cocoa and pastries) is either scarce or non-existent. This is clear from the evidence, taken as a whole, which covers chocolate, sweets and confectionery offered under the trade mark ‘Regina’.

b) The signs

REGINA	PIZZA REGINA LETIZIA
Earlier trade mark	Contested sign

The relevant territory is Portugal.

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 word ‘Regina’ of the signs is most likely to be understood by the relevant public as a female forename. In the contested sign, the verbal element ‘LETIZIA’ is most likely to be associated with a modification of the female name ‘Leticia’, which is likely to be known to most of the public. At least some of the consumers may see the two female names as forming one double name, whereas other consumers may simply see the names as two individual names followed by each other (especially given the absence of a connecting hyphen). However, since these two elements have no direct or indirect descriptive relation to the goods in question or are not otherwise weak, they are distinctive to a normal degree. The applicant claims in its observations that the expression ‘PIZZA REGINA’ is a generic term for naming products related to the pizzeria industry, however, it provided no further reasoning on this matter, neither did it support it with any evidence that would enable the Opposition Division to rely on such information. Consequently, this claim has to be set aside.

By contrast, the element ‘PIZZA’ of the contested sign is a basic Italian word that will be understood by the relevant consumers. Bearing in mind that the relevant goods are pizza and pizza-related foodstuffs, this element is non-distinctive for all the contested goods. Consequently, its overall impact, despite appearing in first position in the sign, will be very reduced.

Visually and aurally, the signs coincide in the word ‘REGINA’ (and its sound). However, they differ in all the remaining components present in the contested sign described above, which have no counterparts in the earlier mark.

In principle, 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, this rule should not be regarded as absolute. Even though the word ‘PIZZA’ appears in first place, it is considered void of distinctive character. Therefore, consumers, although not completely disregarding it, are likely to instinctively focus their attention on the following (and coinciding) word ‘REGINA’, which is the first distinctive element they see in the sign. Likewise, the differing word ‘LETIZIA’ is the element read/perceived last (as it is on the right side of the mark), and is therefore of less impact than the word ‘REGINA’

Therefore, given the earlier mark is fully reproduced in the contested sign, and taking into account the other distinctive verbal element of the contested sign, the signs are considered visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that the signs will be associated with the same female name and bearing in mind the fact that the contested sign has another female name as well, the signs are conceptually similar to an average degree.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

Due to the inclusion of the word ‘Regina’ (constituting the entire earlier mark) in the contested mark, the visual, aural and conceptual similarities between the signs are undeniable.

Besides being an independent and distinctive element, the word ‘Regina’ appears in second position in the sign applied for, following a word void of distinctiveness. Even though the last word ‘LETIZIA’ is independently featured when it is not seen as forming part of the same first name (e.g. as in a double-barrelled girl’s name) but as an individual name, it is of somewhat lesser impact due to its position.

The presence of the coinciding word ‘Regina’ leads to some similarity and association with a particular concept, as defined above. Therefore, it is highly likely that when the sign is encountered in а neighbouring market sector, the contested sign will bring to mind the earlier mark, which enjoys a high degree of recognition among the Portuguese consumers. It remains to be considered to what extent the goods overlap in their market sectors.

As shown above, the earlier mark enjoys a reputation for chocolates and chocolate confectionery, while the contested sign seeks protection for pizza; pizza crust; pizza flour.

In a broad sense these goods belong to the same market sector of foodstuffs as they may coincide in their nutritional qualities, namely they may provide consumers with essential carbohydrates and fats. It is conceivable that some of the contested goods, for example pizza, may be manufactured by undertakings from the confectionery sector expanding their market. The culinary sector is prone to innovations and the relevant public is exposed to continual attempts to market new, innovative products and recipes. For example, as the opponent also comments, adding a chocolate flavour to products from another culinary area such as savoury snacks like pizza is not a completely new trend and consumers may expect these areas to merge. Indeed, nowadays chocolate pizzas are prepared by using chocolate as a primary ingredient via different techniques and some businesses even specialise in that. Consequently, consumers purchasing snacks in a bakery may have the option of a savoury or sweet snack and therefore reminded of each of the goods at the same time. Therefore, the association between the opponent’s reputed chocolate and the contested pizza or pizza dough is not absurd.

Moreover, a link cannot be denied in respect of ingredients for preparing meals or dishes, such as the contested pizza flour. The contested goods may be generally available through the same distribution channels as the opponent’s confectionery products, for instance in grocery stores, supermarkets, discount stores or bakeries. These goods target the same public, that is, consumers carrying out regular grocery shopping or the direct purchase of food and snacks. Indeed, very often consumers shopping for foodstuffs in a supermarket would purchase other goods at the same time, and so there is a possibility of encountering the two trade marks at the same time. In particular, this may be the case if the consumers are following a particular recipe and carefully selecting the necessary products, for example for making chocolate pizza.

Overall, the Opposition Division considers that the similarity between the signs, due to the coinciding distinctive element ‘Regina’, is capable of bridging the difference between the savoury and the confectionery sectors to which the goods at issue belong, thus enabling a mental ‘link’ to be established between the opponent’s reputed mark ‘Regina’ and the contested sign. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent makes, inter alia, the following claims.

 By means of the contested trade mark, the applicant would take unfair advantage of the distinctiveness or the repute of the earlier mark, since the average consumers – at least in Portugal – may easily identify or recognise within the contested sign the trade mark ‘Regina’ with which they are familiar, and the consumers would be likely to transfer to the new trade mark the positive features they associate with the opponent’s renowned trade mark. Therefore, the applicant would benefit from the repute and distinctiveness of the renowned trade mark, which would be unfair because the applicant has not contributed to that distinctiveness/repute.

 The earlier trade mark ‘Regina’ is a very well-known trade mark, at least in the Portuguese territory (where it has been used intensively and exclusively for more than 95 years for, inter alia, goods in Class 30, namely a large variety of ‘chocolates’), and therefore the use of a similar trade mark in a neighbouring field would, most likely, be associated with the goods offered by the opponent.

(the opponent’s observations, p. 25)

In other words, the opponent claims, inter alia, that use of the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark, as regards the goods for which a link has been established.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent’s particular claims regarding the possibility that the contested sign will take unfair advantage of the earlier sign may be summarised as follows:

 The contested sign ‘PIZZA REGINA LETIZIA’ is very similar visually, aurally and conceptually to the mark with a reputation, ‘Regina’, since the signs include the identical distinctive element ‘Regina’, which will inevitably lead to an immediate association between the signs.

 The contested goods are foodstuffs, similar to a certain extent to those for which the opponent’s mark has a reputation; both marks target the general public, and consumers that buy foodstuffs will already be familiar with the earlier mark.

 The earlier mark enjoys a high level of reputation in Portugal, as demonstrated by the evidence, and a stronger reputation is both easier to harm and more tempting to take advantage of, owing to the high value it embodies.

 By using the trade mark applied for the applicant will associate its business with the high-quality image, know-how and other positive factors related to the reputed goods designated under the trade mark ‘Regina’.

 The applicant will illegitimately acquire the benefits arising from the use of the sign applied for and enjoy benefits based not on its own merits, but purely on the strong reputation of the earlier mark in the relevant territory.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

It has been demonstrated by the opponent that the earlier mark ‘Regina’ has been present on the market for more than 95 years and enjoys significant recognition by the Portuguese public, where it is strongly associated with chocolates and confectionery. The opponent has further attested to its immense success on the market, including by launching commercially outstanding products and by showing that the relevant public has kept it in mind over the course of time. Over the years, the opponent has undertaken various marketing strategies to increase the brand’s visibility and sales by launching new products, and also by innovations in terms of packaging and product. As result, as shown in some of the articles, the opponent’s brands, and especially the brand ‘Regina’, convey to the public positive attributes from the past, in particular values of tradition, quality, loyalty and trust that have remained in the public’s perception and have led to the mark ‘Regina’ being referred to as a ‘historical brand’.

It has also been established above that the opponent’s brand is a leading brand in a particular field in the food industry that borders the commercial field in which the applicant will operate with its mark ‘PIZZA REGINA LETIZIA’.

The earlier mark ‘REGINA’ enjoys a ‘special’ reputation in the sense that it conveys an image of quality and long-standing tradition, which could positively influence the consumer’s choice. The contested sign is undoubtedly sufficiently similar (i.e. it includes the entire earlier mark as the first distinctive element read/perceived in it) to be associated with the earlier mark and create a mental connection with it when consumers encounter the sign in closely related food industries. It is therefore highly probable that the applicant’s sign (contested sign) may intentionally or unintentionally influence the consumers’ choice when visiting a particular food and drink venue or choosing a particular product during their daily grocery shopping. This choice may be influenced and, especially, encouraged by the array of positive qualities and associations that the earlier mark ‘Regina’ has been proved to evoke in consumers’ minds, in particular the Portuguese consumers, who will think of the brand as ‘nostalgia food’ (document 20). They may also be motivated to experiment with a new product line of an innovative snack. As argued by the opponent, this change in consumer market behaviour and preferences will unfairly benefit the applicant so that it will not need to contribute to the development of goodwill for its own brand but will instead ride on the coat-tails of the similar mark enjoying a high degree of recognition among the Portuguese consumers.

The Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or repute of the earlier trade mark ‘Regina’.

Other types of injury

The opponent also argues that other types of injury also plausible in the present case, for example use of the contested trade mark would be detrimental to the repute and distinctiveness of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

e) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for all the contested goods.

Given that the opposition is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the opposition was based.

COSTS

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

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

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

The Opposition Division

Sofía SACRISTÁN MARTÍNEZ

Manuela RUSEVA

María del Carmen SUCH SÁNCHEZ

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.