OPPOSITION No B 3 087 891

Mail Order Finance GmbH, Sachsenstrasse 23, 75177 Pforzheim, Germany (opponent), represented by UNIT4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Sok-rate SA LTD, 3rd Floor 207 Regent Street, London W1B 3HH, United Kingdom (applicant), represented by Legabrand, 41, rue Papety, 13007 Marseille, France (professional representative).

On 09/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 087 891 is partially upheld, namely for all the contested goods, except the following:

Class 3: Creams for leather, preservatives for leather [polishes]; boot cream, boot cream, shoemaker’s wax; sprays for footwear; waterproofing preparations in aerosol form for footwear.

Class 14: Gold thread, silver thread.

Class 21: Boot brushes; shoe-trees (stretchers); shoe shapers; wax-polishing appliances, non-electric, for shoes; shoe horns, boot jacks.

2. European Union trade mark application No 18 045 923 is rejected for all the contested goods, except for the specific goods referred above, in relation to which it may proceed.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 18 045 923 , namely against all the goods in Classes 3, 14, 18, 21 and 25. The opposition is based on European Union trade mark registration No 3 950 301 ‘ARTIGIANO’. 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.

a) The goods and services

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

Class 3: Cosmetics; dermatological preparations and substances; moisturisers; hand, face and body washing preparations; shower gels; shampoos; soaps; hair lotions; essential oils; toilet preparations; dentifrices; preparations for the hair and scalp.

Class 9: Sunglasses.

Class 14: Precious metals and their alloys and goods in precious metals or coated therewith; models in precious metal, jewellery, imitation jewellery, precious stones; tie clips, tie tacks, key rings, trinkets, pendants, rings, bracelets, necklaces, earrings, chains, pins, badges, buttons, lapel pins, money clips, cuff links, business card cases, paper weights; horological and chronometric instruments, watches.

Class 18: Leather and imitations of leather, and goods made of these materials; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; bags, wallets, cases, key holders, sports bags, back packs; belts; boxes; key cases; key fobs; laces; pouches; purses; satchels; straps; rucksacks; valises; clothing for pets.

Class 25: Clothing, headgear, footwear; parts and fittings for all the aforesaid goods.

Class 35: The bringing together, for the benefit of others, of clothing, footwear, headgear, sunglasses, cases, bags, luggage, rucksacks, umbrellas, leather goods, jewellery, watches, cosmetics, and accessories and parts and fittings for all the aforesaid goods, enabling customers to conveniently view and purchase those goods from a supermarket or mini-market or from a general merchandise catalogue by mail order or by means of telecommunications or from a general merchandise Internet website.

The contested goods are the following:

Class 3: Cleaning, polishing, scouring and abrasive preparations; creams for leather, preservatives for leather [polishes]; boot cream, boot cream, shoemakers' wax, polishing wax, laundry wax; cleaning preparations for footwear, sprays for footwear, stain removing preparations; waterproofing preparations in aerosol form for footwear; perfume, deodorants for personal use [perfumery], toilet water, soaps, shampoos for footwear, cosmetics.

Class 14: Key rings (trinkets or fobs); rings (jewellery), bracelets (jewellery), bangles (jewellery), cuff bracelets (jewellery), necklaces (jewellery), chains (jewellery), small chains (jewellery), trinkets (jewellery), earrings, brooches (jewellery), ornamental pins, pendants, medals, lockets; cuff links, tie pins, horological and chronometric instruments, watches, watch straps, watch chains, gold thread, silver thread, jewellery caskets, cases and boxes, cases for clock and watchmaking, presentation cases for watches, works of art of precious metal.

Class 18: Leather and imitation leather, hand bags, shoulder bags, backpacks and rucksacks, beach bags, sports bags (other than those adapted for the goods they are designed to contain), shopping bags, wheeled bags, pouches (handbags), schoolbags and satchels, shopping bags, nappy bags, trunks [luggage], travel cases and bags, travelling trunks and suitcases, small suitcases with wheels, garment bags for travel, vanity cases (empty), toiletry bags, pocket wallets, purses, key cases; briefcases; card cases [notecases]; boxes made of leather, umbrellas, parasols, laces (leather -).

Class 21: Boot brushes; shoe-trees (stretchers); shoe shapers; wax-polishing appliances, non-electric, for shoes; skins of chamois for cleaning; shoe horns, boot jacks.

Class 25: Clothing, in particular coats, blousons, waterproof clothing, rain ponchos, parkas, suits, jackets (clothing), overalls, trousers, jeans, shorts, Bermuda shorts, dresses, skirts, petticoats, T-shirts, vest tops, sweaters, pullovers, shirts, waistcoats, sweatshirts, tracksuit bottoms, leggings, tracksuit jackets, swimsuits, beach clothes, beach wraps, lingerie, underwear, pyjamas, dressing gowns, bath robes, socks, tights, scarves, sashes for wear, stoles, neckties, belts (clothing), suspenders; headbands [clothing]; gloves [clothing]; headgear, caps, footwear, beach footwear, ski boots or boots for sports, rain boots, wooden shoes, boots, slippers, carpet slippers.

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

The term ‘in particular’ 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).

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 3

Soaps, cosmetics are identically contained in both lists of goods.

Soap is a cleaning or emulsifying agent made by reacting animal or vegetable fats or oils with potassium or sodium hydroxide. Soaps often contain colouring matter and perfume and act by emulsifying grease and lowering the surface tension of water, so that it more readily penetrates open materials such as textiles. Since the contested cleaning preparations can include soap for household purposes and the Opposition Division cannot dissect ex officio the broad category of the contested cleaning preparations, they are considered identical to the opponent’s soaps.

The contested stain removing preparations are substances used for household washing and cleaning, mainly for removing stains from clothes and household textiles, they are identical to the opponent’s soaps to the extent that the latter include soaps for household purposes.

The contested shampoos for footwear, cleaning preparations for footwear are included or overlap with the broad category of the opponent’s shampoos. Therefore, they are identical.

The contested polishing preparations, polishing wax are used to make a product smooth and shiny by rubbing, especially with wax or an abrasive. The contested scouring preparations are used to clean or polish (a surface) by washing and rubbing, as with an abrasive cloth. Finally, the contested abrasive preparations are substances or materials such as sandpaper, pumice, or emery, used for cleaning, grinding, smoothing, or polishing. All of these products are agents used for cleaning. To that extent, their nature and purpose are similar to those of the opponent’s soaps. Furthermore, they target the same consumers and are sold in the same retail outlets and in the same section in supermarkets. Therefore, these goods are considered similar.

The contested laundry wax is a substance for laundry use and, as such, it is considered, at least, similar to a low degree to the opponent’s soaps which are also a laundry preparation. They are agents used for laundry care and their nature and purpose are similar.

The contested perfume, deodorants for personal use (perfumery), toilet water and the opponent's cosmetics have the same purpose to enhance or alter the appearance or fragrance of the body. They coincide in producers and distribution channels and, furthermore, target the same consumers. Therefore, they are considered at least similar.

The contested creams for leather, preservatives for leather [polishes], boot cream (included twice in the contested application), sprays for footwear, waterproofing preparations in aerosol form for footwear are protective care products which are considered dissimilar to all of the opponent’s goods and services.

In particular, they do not have the same purpose as the opponent’s soaps or shampoos (even if they include shampoos for footwear), they satisfy different needs, and are not – in absence of evidence to the contrary - usually produced by the same undertakings. Furthermore, and contrary to the opponent’s arguments, these goods are also dissimilar to footwear. The goods under comparison are not usually produced by the same undertakings. There is no evidence to suggest that a footwear manufacturer usually also produces protective products for that footwear, nor is there any evidence to suggest that the relevant consumer would believe these types of goods to originate from the same source. Therefore, these goods differ manifestly in terms of nature and purpose. Although some of the referenced contested goods, such as boot creams, may eventually be sold through shoe retail shops, they are more usually sold in supermarkets or shoe repair shops. The manufacturers of the contested goods do not sell shoes. Due to the different nature of the goods, the public would not expect the contested goods and footwear to come from the same source. Finally, the above dissimilarity reasoning applies also to the comparison between the contested goods and the opponent’s leather goods in Class 18.

The contested shoemakers’ wax is used for waxing thread in the production/repair of footwear. These goods are dissimilar to all the goods and services of the earlier right as their natures, main purposes, producers and distribution channels are different. Furthermore, they are neither in competition, nor complementary.

Contested goods in Class 14

Earrings, pendants, cuff links, horological and chronometric instruments, watches, are identically contained in both lists of goods.

The contested key rings (trinkets or fobs), rings (jewellery), bracelets (jewellery), necklaces (jewellery), chains (jewellery), small chains (jewellery), trinkets (jewellery), overlap with, or are included in the broad categories of, the opponent’s key rings, rings, bracelets, necklaces, chains, trinkets. Therefore, they are identical.

The contested bangles (jewellery), cuff bracelets (jewellery), brooches (jewellery), lockets are included in the broad category of the opponent’s jewellery. Therefore, they are identical.

The contested ornamental pins, tie pins are included in the broad category of the opponent’s pins. Therefore, they are identical.

The contested medals are similar to the opponent’s jewellery. They are normally produced by the same providers, have the same distribution channels and target the same public. Furthermore, they are often manufactured from the same raw material.

The contested watch straps, watch chains are considered similar to the opponent’s horological instruments as they usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested presentation cases for watches, cases for clock and watchmaking are also similar to the opponent’s horological instruments since they coincide in producer and relevant public and are also complementary.

The contested jewellery caskets, cases and boxes are similar to the opponent’s jewellery. They usually coincide in producer and relevant public and they are also complementary.

The contested works of art of precious metal are similar to the opponent’s jewellery. Although their basic nature is not the same, they have the same decorative purpose. Furthermore, they usually coincide in producer and distribution channels.

The contested gold thread, silver thread are a combination of cotton/silk and metal threads. They are materials which may be used for the manufacture of some of the finished products of the opponent, for instance jewellery. However, this fact is not sufficient in itself to show that these goods are similar. These goods differ in nature, purpose, method of use, distribution channels and points of sale. They are not in competition and do not usually come from the same kind of undertakings. Therefore, they are considered dissimilar to all the goods and services on which the opposition is based.

Contested goods in Class 18

Leather and imitation leather, backpacks and rucksacks, sports bags (other than those adapted for the goods they are designed to contain), pouches (handbags), satchels, trunks [luggage], travel bags, purses, key cases, umbrellas, parasols, laces (leather -) are identically contained in both lists of goods.

The contested hand bags, shoulder bags, beach bags, shopping bags (listed twice), wheeled bags, schoolbags, nappy bags, garment bags for travel, toiletry bags are included in the broad category of the opponent’s bags. Therefore, they are identical.

The contested travel cases, vanity cases (empty), briefcases, card cases [notecases] are included in the broad category of the opponent’s cases. Therefore, they are identical.

The contested travelling trunks are included in the broad category of the opponent’s trunks. Therefore, they are identical.

The contested pocket wallets are included in the broad category of the opponent’s wallets. Therefore, they are identical.

The contested travelling suitcases, small suitcases with wheels are used for travelling. They target the same public, are offered in the same stores and have the same distribution channels as the opponent’s travelling bags, valises. Therefore, they are considered similar to a high degree.

The contested boxes made of leather are similar to the opponent’s trunks as they have the same purpose (carrying or storing items). They usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 21

The contested skins of chamois for cleaning are household cleaning articles, they are similar to a low degree to the opponent’s soaps. These goods have the same purpose (i.e. cleaning), they are complementary, they coincide in distribution channels and points of sale and they also target the same end users.

The contested boot brushes, shoe-trees (stretchers), shoe shapers, wax-polishing appliances, non-electric, for shoes, shoe horns, boot jacks are dissimilar to all of the opponent’s goods and services. Admittedly, the contested goods are to be used in connection with shoes and boots. However, their purpose is completely different from the purpose of the earlier mark’s goods footwear. The former are used to keep shoes in condition, to maintain them or to facilitate putting them on, while the latter’s purpose is to cover and protect feet, or to contribute to the consumer’s look. Their nature and their methods of use are different as well. Furthermore, contrary to the opponent’s arguments, their distribution channels will typically be different. There are no indications that consumers consider it normal that the contested and the earlier goods are marketed under the same trade mark, which would normally imply that a large number of producers or distributors of these products are the same (01.03.2005, T-169/03, Sissi Rossi, EU:T:2005:72, § 63).

Contested goods in Class 25

Clothing, footwear, headgear are identically contained in both lists of goods.

The contested caps are included in the broad category of the opponent’s headgear. Therefore, they are identical.

The contested beach footwear, ski boots or boots for sports, rain boots, wooden shoes, boots, slippers, carpet slippers are included in the broad category of the opponent’s footwear. Therefore, they are identical.

The remaining contested goods are included in the broad category of the opponent’s clothing. 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 various degrees mainly target the public at large with an average degree of attention.

Leather and imitation leather in Class 18 are specialised goods directed also at the professional public. The degree of attention will be average for both the general and professional public of these goods.

As regards horological goods and jewellery in Class 14, which may have a relatively high price and be bought through a salesperson, the level of attention of the average customer is higher than usual (13/09/2009, T-292/08, Often, EU:T:2010:399, § 74; 12/01/2006, T-147/03, Quantum, EU:T:2006:10, § 63).

c) The signs

ARTIGIANO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a word mark consisting of the word ‘ARTIGIANO’. While it will be perceived by the Italian-speaking part of the public as ‘artisan’, for the remaining part of the relevant public this word mark is meaningless.

The contested sign is a figurative sign consisting of the verbal elements ‘MAISON TIGIANO’. ‘MAISON’ is depicted in small standard typeface. ‘TIGIANO’ is also written in a fairly standard typeface (only the letter ‘G’ is slightly stylised) but in a clearly larger size than ‘MAISON’ and in bold. Due to its size and central position, the verbal element ‘TIGIANO’ is the dominant (visually striking) part of the sign, compared to the verbal element ‘MAISON’, represented in small typeface and above the letters ‘-IGIAN-’ of the element ‘TIGIANO’.

Furthermore, ‘TIGIANO’ is meaningless and inherently distinctive, whereas ‘MAISON’ is meaningful for part of the relevant public, namely, the
French-speaking consumers. Indeed, ‘MAISON’ is a term commonly used in trade to refer to commercial or industrial establishments and firms (information extracted from
Larousse Online Dictionary on 8/09/2020 at https://www.larousse.fr/dictionnaires/francais/maison/48725), and, therefore, it lacks any distinctiveness for this relevant part of the consumers who will tend to disregard it in the comparison of the signs.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public, since from this perspective the differences between the marks are of less weight.

Visually, the distinctive and dominant element of the contested sign repeats seven of the nine letters of the earlier mark set in the same order, ‘TIGIANO/**TIGIANO’. The signs differ in the first letters ‘AR’ of the earlier mark, in the additional verbal element of the contested sign, ‘MAISON’, and in the slight stylisation of the letter ‘G’ in the contested sign.

The difference in the term ‘MAISON’ of the contested sign is of little impact as this element is non-distinctive and secondary. The stylisation of letter ‘G’ in the contested sign will have a minimal, if any, impact for consumers.

Regarding the coincident letters in the elements ARTIGIANO/TIGIANO, although there is a risk in relying too much on a mechanical quantitative evaluation, counting the total number of letters, identifying the amount of identical letters and comparing their order in the respective marks, can provide certain guidance. Furthermore, the Court has confirmed that what matters in the assessment of the visual similarity of two word marks is, rather, the presence, in each of them, of several letters in the same order (25/03/2009, T-402/07, Arcol II, EU:T:2009:85, § 83; 21/01/2015, T-685/13, Blueco, EU:T:2015:38, § 33). By analogy, the same principle applies in the assessment of the visual similarity between the distinctive and dominant verbal element of the contested sign and the earlier word mark. As indicated above, the seven letters which make up the distinctive and dominant element of the contested sign ‘TIGIANO’ are identical to seven of the nine letters of the single word element of the earlier mark and they are set in the same order in both signs. Even though generally the relevant consumer attaches more attention to the beginning of a sign, there is no basis for the assumption that he/she would systematically disregard the remaining part of a word element to the point of only remembering the beginning part (18/12/2008, T-287/06, Torre Albéniz, EU:T:2008:602, § 56).

Taking into account what has been noted above regarding the distinctiveness and the impact of the elements of the signs, they are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in ‘TIGIANO’. They differ in the sound of the initial letters ‘AR’ of the earlier mark. While this difference between the signs lies in the first letters of the verbal element of the earlier mark, the fact remains that all the letters of the dominant and distinctive verbal element of the contested sign (seven letters) are identically included in the same position in the earlier mark. This also implies that three out of the four syllables in which the earlier mark will be pronounced (TI-GIA-NO) are identically included in the contested sign. Furthermore, given that in French language words are usually pronounced with the stress on the last syllable, the differing letters ‘AR’ of the earlier mark will not be very audible when pronouncing ‘ARTIGIANO’.

The signs also differ in the additional sound of the term ‘MAISON’ in the contested sign which has no counterpart in the earlier mark. In this regard, case-law has confirmed that consumers generally tend to shorten marks containing multiple expressions, it is therefore likely that the contested sign will be referred to aurally only by the verbal element 'TIGIANO', omitting the secondary and non-distinctive element ‘MAISON’. Therefore, the signs are phonetically similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Since the concept conveyed by the word ‘MAISON’ in the contested sign is non-distinctive, it does not influence the conceptual perception. Given that the remaining elements of the signs, ‘ARTIGIANO’ and ‘TIGIANO’ do not have a meaning for the public in the relevant territory, the conceptual comparison remains neutral, and the conceptual aspect does not influence the assessment of the similarity between the signs.

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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 and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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

Such 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 or services may be offset by a lower degree of similarity between the marks, and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

For the purpose of the global appreciation, the average consumer of the category of goods or services concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. The consumer’s level of attention is likely to vary according to the category of goods or services in question and the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he/she has kept in his/her mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26; 30/06/2004, T-186/02, Dieselit, EU:T:2004:197, § 38).

The goods have been found partly identical, partly similar to varying degrees and partly dissimilar and the degree of attention of the relevant public may vary from average to high. The earlier mark is of a normal distinctiveness as it has no meaning in relation to the relevant goods.

As explained in section c) of this decision, the signs are considered visually and aurally similar to an average degree and there are no relevant conceptual differences that could help to distinguish between them.

The signs coincide in seven out of the nine letters and sounds of the single element of the earlier mark and in all the letters of the distinctive and dominant element of the contested sign, namely ‘TIGIANO’. These identical letters are placed in the same order in both signs. While, generally, the beginning of words has a greater impact on the consumer, the specific circumstances of the case may allow a different conclusion to be drawn (07/05/2009, T-185/07, CK Creaciones Kennya, EU:T:2009:147, § 45). In the case at hand, the French-speaking consumer here foremost at issue puts the stress on the ending of the words when pronouncing them, so the difference in the initial letters of the earlier mark, ‘AR’, is not particularly relevant or striking from an aural point of view. Furthermore, the commonality in the long string of letters ‘TIGIANO’ remains clearly perceptible aurally and visually and counteracts the difference in only two letters, even bearing in mind that they are the initial letters of the earlier mark. The additional verbal element of the contested sign is not distinctive and it is depicted in a very small typeface, therefore, it pays a very limited impact, if any, in the comparison of the signs.

In light of the foregoing considerations and the notion of imperfect recollection, it must be held that, given the overall visual and aural similar impression created by the signs and the normal inherent distinctiveness of the earlier mark, there is a likelihood of confusion between the signs on the part of the relevant public for the goods found to be identical or similar, irrespective of their level of similarity.

The heightened attentiveness of the relevant public in relation to part of the relevant goods in Class 14 cannot change this conclusion. The fact that the relevant public will be more attentive does not mean that the consumer will examine the marks in detail (16/07/2014, T-324/13, Femivia, EU:T:2014:672, § 48). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to varying degrees to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

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

Beatrix STELTER

Helena GRANADO CARPENTER

Lidiya NIKOLOVA

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.