OPPOSITION No B 3 091 122

Arena Italia S.P.A., Contrada Cisterna 84/85, 62029 Tolentino, Macerata, Italy (opponent), represented by Jacobacci & Partners S.P.A., Piazza Mario Saggin, 2, 35131 Padova, Italy (professional representative)

a g a i n s t

LL-ip GmbH, Ringstraße 52b, 36396 Steinau, Germany (applicant), represented by Loschelderleisenberg Rechtsanwälte, Franz-Joseph-Straße 35, 80801 Munich, Germany (professional representative).

On 21/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 122 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 052 204 , namely against all the goods and services in Classes 18, 25 and 35. The opposition is based on European Union trade mark registration No 7 401 292 . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

Preliminary remark

The Opposition Division notes that the opponent ticked the box in the notice of opposition to indicate that it wished to rely on online substantiation. While checking the online substantiation, the Opposition Division notes that in the course of the proceedings, the earlier European Union trade mark registration was assigned by the opponent to the company Arena Italia S.P.A. This transfer of ownership has been entered in the Office’s Register on 04/03/2020 and published on 06/03/2020. Therefore the new proprietor substitutes the original proprietor in the proceedings.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

However, the request for proof of use as submitted by the applicant in the present case, is inadmissible pursuant to Article 10(1) EUTMDR. Pursuant to this article, such a request shall be admissible if it is submitted as an unconditional request in a separate document within the period specified by the Office.

In its submissions of 24/02/2020 which were filed within the time limit, the applicant stated, inter alia, that ‘the plea of non-use is therefore raised for the following classes of the earlier trademark: Class 9, 14, 28`, as well as for specifically enumerated goods and services of Classes 18, 25 and 35. However, it did not meet the requirement that the request for proof of use must be submitted by way of a separate document, and therefore is inadmissible.

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.

1. The goods and services

The goods and services on which the opposition, inter alia, based are the following:

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas, parasols and walking sticks; Whips, harness and saddlery; Vanity cases, not fitted; Card cases [notecases]; Sport bags; Beach bags; Chain mesh purses; Frames for umbrellas or parasols; Handbag frames; Handbags; Haversacks; Pouches; Backpacks; Sport bags; Wallets; Music cases.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; Business management; Business administration; Office functions; Selling and retail selling in relation to clothing, clothing for sports, footwear, boots for sports, jewellery, perfumery, cosmetics, spectacles, sunglasses, goggles for sports, spectacle frames, luggage, bags and holdalls for sports, belts, goods of paper, stationery, games, toys, sporting articles and accessories relating to all the aforesaid goods.

The contested goods and services are the following:

Class 18: Bags; Luggage; Attaché cases; Rucksacks; School bags; Shopping bags; Bags for sports; Beach bags; Handbags; Purses; Credit-card holders; Key bags; Key cases; Vanity cases, not fitted; Fur; Travelling bags; Umbrellas and parasols; Hiking sticks; Whips; Imitation leather; Travelling sets [leatherware]; Briefcases [leather goods]; Luggage tags [leatherware]; Briefcases; Saddlery.

Class 25: Clothing; Headgear; Footwear.

Class 35: Advertising; Professional business consultancy; Business management; Office functions services; Clerical services; Presentation of goods on communication media, for retail purposes; Design of advertising materials; Placement of design staff; Publication of publicity texts; Product marketing; Advertising and marketing; Research services relating to advertising; Analysis of business information; Collecting information for business; Trade promotional services; Updating of advertising material; Retail services in relation to headgear; Retail services in relation to sporting equipment; Retail services in relation to footwear; Retail services relating to sporting goods; Retail services in relation to fashion accessories; Retail services relating to furs; Retail services connected with the sale of clothing and clothing accessories; Online retail store services relating to clothing.

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 18

The contested bags; luggage; rucksacks; bags for sports; beach bags; handbags; purses; credit-card holders; vanity cases, not fitted; travelling bags; umbrellas and parasols; hiking sticks; whips; imitation leather; travelling sets [leatherware]; saddlery are identical to the opponent’s imitations of leather; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; vanity cases, not fitted; card cases [notecases]; sport bags; beach bags; chain mesh purses; handbags; backpacks; wallets, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods are included in, or overlap with, the contested goods.

The contested fur is similar to a high degree to the opponent´s animal skins, as these goods have the same purpose and nature, and usually coincide in producer, relevant public and distribution channels.

The contested attaché cases; shopping bags; key bags; key cases and the opponent´s handbags are similar as these goods can be produced by the same companies, and are sold to the same public through the same distribution channels. The contested attaché cases and the opponent´s handbags can also coincide in their purpose.

The contested school bags and the opponent´s handbags are similar as these goods can have the same purpose, and usually coincide in producer and distribution channels.

The contested briefcases [leather goods]; briefcases and the opponent´s trunks are similar as these goods can be produced by the same companies, and are sold to the same public through the same distribution channels.

The contested luggage tags [leatherware] and the opponent´s travelling bags are similar as these goods can be produced by the same companies, and are sold to the same public through the same distribution channels.

Contested goods in Class 25

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

Contested services in Class 35

The contested advertising; professional business consultancy; business management; office functions services; presentation of goods on communication media, for retail purposes; design of advertising materials; publication of publicity texts; product marketing; advertising and marketing; research services relating to advertising; analysis of business information; collecting information for business; trade promotional services; updating of advertising material; retail services in relation to sporting equipment; retail services in relation to footwear; retail services relating to sporting goods; retail services in relation to fashion accessories; retail services connected with the sale of clothing and clothing accessories; online retail store services relating to clothing are identical to the opponent’s advertising; business management; business administration; office functions; selling and retail selling in relation to clothing, clothing for sports, footwear, boots for sports, jewellery, perfumery, cosmetics, spectacles, sunglasses, goggles for sports, spectacle frames, luggage, bags and holdalls for sports, belts, goods of paper, stationery, games, toys, sporting articles and accessories relating to all the aforesaid goods, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include or overlap with the contested services.

The contested clerical services are similar to the opponent´s business administration as they have the same purpose, and usually coincide in producer and relevant public.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested retail services in relation to headgear are similar to the opponent’s headgear in Class 25.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers. A low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers. As explained above, fur is similar to a high degree to the opponent´s animal skins, as these goods have the same purpose and nature, and usually coincide in producer, relevant public and distribution channels. Therefore, the contested retail services relating to furs are similar to a low degree to the opponent’s animal skins in Class 18.

The contested placement of design staff are similar to a low degree to the opponent´s business management as they have the same purpose, and may coincide in producer and relevant public.

2. 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 and services found to be identical or similar to varying degrees are directed at the public at large, or at at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication or specialised nature of the goods and services purchased.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The opponent asserted that the three lozenges constituting the earlier mark are arranged so as to form a letter ´V´ and that the contested sign consists of lozenges which ´arrange a double letter ´V´´. There is no sufficient justification in perceiving the earlier mark as having a V-shape: it is only when putting both signs next to each other that one may be inclined to perceive letter-shapes in the signs at issue. If, in contrast, one perceives the earlier mark on its own, it is hard to perceive its triangular-like shape as a V-shape, since a V-shape (normally) has an acute angle, whereas in the earlier mark the lozenges have been placed such as to form an obtuse angle. Moreover, if such a reference to (the shape of) these letters was admitted in the description of the signs, this would imply – in contrast with the arguments of both parties – that the signs also need to be compared on an aural level, which would not be in harmony with the perception of the earlier mark merely as a triangular-like shape.

The opponent also argued, both for the earlier mark and for the contested sign, that the ´whole composition resembles a wave´. Even using its utmost imagination, the Opposition Division does not perceive the resemblance of a wave in either of the signs at issue. Therefore, and in the absence of any explanation on why such a perception would make sense, this argument cannot be upheld.

The earlier mark consists of an arrangement of three diamonds (lozenges or rhomboidal shapes), each having one slightly rounded angle, forming a single angle of a zigzag pattern. This pattern more precisely consists of two diamonds positioned on top, with their rounded angle pointing up, and one diamond positioned below and between them, with its rounded angle pointing down, and with its upper sides nearly touching the former´s lower sides. Expressed differently, one could say that the three diamonds have been positioned such that they resemble a down pointing arrowhead, rather than a wave as suggested by the opponent. As this composition of three diamonds has no relation to the relevant goods and services, the earlier mark is distinctive to a normal degree.

The contested sign consists of an arrangement of five tilted squares forming two angles of a zigzag pattern. This pattern more precisely consists of three tilted squares on top and two tilted squares positioned below and between them with their upper sides nearly touching the lower sides of the former.

The signs have no element that could be considered clearly more dominant than other elements.

Although visually the signs coincide in that the single angle of a zigzag pattern form of the earlier mark is also present in the contested sign. However, they differ in that the contested sign includes a second angle (thus forming a genuine zigzag pattern), which results in a considerably larger width of the contested sign. They also differ in that the earlier mark is composed of three clearly distinguishable diamonds as opposed to the contested sign´s five clearly distinguishable squares, that is, there is not only a difference in the quantity of the signs´ constituting elements, but also in their shapes. Furthermore, although admittedly less striking and probably only spotted after a rather more careful side-by-side examination of the signs, the signs also differ in the rounding of the earlier mark´s constituting elements, which is not present in the contested sign´s constituting elements. Both signs are purely figurative signs and have different patterns, shapes and sizes.

Bearing the above in mind, there are significant visual differences between the signs.

Therefore, despite both signs coinciding in some elements, the signs are, contrary to the opponent´s argument, visually only similar to a low degree.

Aurally, purely figurative signs are not subject to a phonetic assessment. As both signs are purely figurative, it is not possible to compare them aurally.

Conceptually, in contrast with the opponent´s arguments on the different concepts conveyed by the signs (V-shape versus W-shape and resemblance of a wave), neither of the signs has a particular meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of 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.

4. 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.

In the notice of opposition, the opponent indicated that the earlier trade mark has a reputation in the European Union in connection with part of the goods and services for which it is registered, namely clothing, footwear, headgear; boot uppers; non-slip devices for boots; visors [headwear]; dress shields; studs for football boots; hat frames (skeletons), heelpieces for footwear; heels; insoles; shirt fronts; shirt yokes; footwear soles; footwear uppers; visors in Class 25 and advertising; business management; business administration; office functions; selling and retail selling in relation to clothing, clothing for sports, footwear, boots for sports, jewellery, perfumery, cosmetics, spectacles, sunglasses, goggles for sports, spectacle frames, luggage, bags and holdalls for sports, belts, goods of paper, stationery, games, toys, sporting articles and accessories relating to all the aforesaid goods in Class 35. In its subsequent observations, the opponent indicated that the earlier mark has a reputation and consequently enhanced distinctiveness referring only to goods in Class 25. However, as the opponent did not expressly limit the list of goods and services for which it claimed enhanced distinctiveness and reputation, the enhanced distinctiveness and reputation of the earlier mark will be assessed for all the aforementioned goods and services in Classes 25 and 35 respectively.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

On 19/12/2019 the opponent submitted the following evidence:

• Annexes 1 - 4: advertisements from the 1970’s of, what the opponent explains to be, “the Shane Gould Female Swimsuit Collection developed together with the Olympic champion Shane Gould in 1974”, including an advertisement celebrating medals won by ´TEAM ARENA´.

The earlier mark is depicted alongside the trade mark ´ARENA´, as follows:

• Annex 5: an overview of the opponent´s ´2019 Elite team´, namely four pages containing pictures of 42 athletes, their names and a listing of their sportive achievements (medals, world records, …).

None of these pages, which seem to be excerpts of the ´FALLWINTER2019´ catalogue submitted as part of Annex 8, includes the earlier mark. Some of the athletes´ pictures show them wearing swimwear (e.g. swimsuits and bathing caps); the pictures showing such swimwear depict the trade mark ´arena´, not the earlier mark.

• Annex 6: an undated overview of (the logo´s of) the official partners of the International Swimming Federation, ´FINA´ (´Fédération Internationale de Natation´) taken from the web site www.fina.org.

The following logo features amongst the logo´s shown:

• Annex 7: pictures of local sports events throughout the EU, some dated, others undated, showing the earlier mark alongside the trade mark ´ARENA´, with the latter positioned either above the earlier mark as depicted above, or next to it, as in the following example:

The earlier mark, depicted alongside the trade mark ´arena´ in a manner as mentioned above, features on tents, banners, flags, flyers, booths, posters, swimgear, etc., e.g.:

One picture shows a woman standing in front of an advertising wall showing the earlier mark alongside the trade mark ´arena´; the woman is wearing a garment showing the earlier mark in a standalone manner:

• Annex 8: six catalogues, either undated or referring to 2019 (e.g. the ´FALLWINTER2019´ catalogue), showing the range of the opponent’s goods, including T-shirts, trousers, jackets, socks, swimwear, such as swimsuits, caps, as well as flip-flops, goggles, nose-clips, sports bags, etc., mostly bearing the earlier mark alongside the trade mark ´ARENA´, e.g.:

Sometimes the earlier mark is shown in a stand-alone manner, for instance on towels , or as part of a linear or more complex pattern repeating the earlier mark, for instance on swimwear and clothes, in which case it rather serves – as the applicant correctly pointed out – as decoration of the garment, e.g. , and .

• Annex 9: a selection of more than 100 invoices dated between 2014-2019 (some of them dated after the filing date of the contested sign) addressed to companies in Austria, the Czech republic, France, Italy, the Netherlands, Spain and Switzerland. Many of the invoices have been issued by Arena Italia SPA, whereas the issuer is not clearly identified/identifiable on all of them.

On top of most of the invoices the sign is shown, whereas the remaining invoices do not include any sign or logo.

The invoiced goods are, inter alia, pieces of clothing and headgear, such as minishorts, trousers, shirts and caps.

• Annex 10: pictures of shops, or brand-dedicated sections within shops, with goods (co-)branded with the earlier mark.

The pictures are undated, and it is unclear where these stores are located.

Most of the pictures show the earlier mark depicted alongside the trade mark ´ARENA´, e.g.:

On some pictures, the earlier mark is shown in a stand-alone manner, i.e. without the verbal element ´ARENA´ in its immediate proximity, e.g.:

As label on one of the swimsuits	In one of the stores

• Annex 11: more than 50 press clippings (or online printouts) from a variety of magazines/newspapers (online issues), such as Men´s Health, La Repubblica, Vanity Fair, Cosmopolitan, La Gazzetta dello Sport and Vogue, dated between 2014-2019 (some of them dated after the filing date of the contested sign), showing predominantly the earlier mark alongside the trade mark ´arena´, or the mark ´arena´ without the earlier mark e.g.:

On some of the clippings which predate the relevant date, the earlier mark is shown in a stand-alone manner or as part of a pattern, e.g.:

Elle.it 27/05/2015	Runner´s World 06/2018	Vital 07-08/2018	Men´s Health 09/2018

In its submissions, the opponent also elaborates on the sportive achievements of all athletes that have been part of its ´Elite Team´, and on the important sports events (including the Olympic Games) it has been sponsoring since, at least, the late 1970’s. It explains that it also was official sponsor of the European Swimming Championship from 1978 to 1993, and has been substantially investing in research and innovation to enhance the quality and performability of its products. Finally, it also provides turnover sales in the EU for the period 2014-2018, which run into the tens of millions of EUR for each year.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

The opponent’s evidence almost exclusively refers to the earlier mark appearing alongside the verbal element ´arena´, such as in the following depictions and . The earlier mark appears in a stand-alone manner on only few pieces of evidence, and mostly on pieces of evidence that do not considerably predate the relevant date or are undated, such as some (more recent) press clippings and the catalogue pages.

To establish the reputation of a trade mark on the basis of evidence relating to the use and well-known nature of a different trade mark, the former must be included in the latter and play therein ‘a predominant or even significant role’ (judgment of 21/05/2005, T-55/13, F1H20 / F1 et al., EU:T:2015:309 § 47). In the present case, the presence of the verbal element ‘arena’ alongside the earlier mark creates a different overall impression, as it cannot be considered as ancillary. On the contrary, and as the Second Board of Appeal, which had to assess whether evidence of use of the sign altered the distinctive character of the marks ‘ARENA’, and , decided in Decision of 12/12/2009 – R 1466/2008-2 – Commerzbank Arena/Arena Et Al., ‘the distinctive component of the mark as used is the word ‘ARENA’, whereas the figurative elements clearly play a secondary role therein’.

In view of the items of evidence submitted, the opponent did not provide specific evidence which makes it possible to establish that consumers were accustomed to focusing, in particular, on the figurative element constituting the earlier mark. By way of example, it must be pointed out that that evidence does not contain any opinion polls of the relevant public or market studies relating, inter alia, to its perception of the composite marks used or the question of which elements were memorised or, at the very least, recognised by that public, when faced with various marks in the course of its shopping, as referring to the opponent’s goods.

Moreover, the sales figures referred to in the opponent´s submissions appear to originate only from the opponent. Even if it were considered that the amounts of the invoices submitted as Annex 9 go towards backing up these sales figures, the fact remains that this evidence shows use only in relation to the sign . As these sales are not sales made exclusively under the sign but under other signs, they are insufficient evidence to prove that the sales were made (solely) under the sign as registered.

As far as the catalogues are concerned, apart from the fact that they either do not considerably predate the relevant date or are undated, there is no information on the group of targeted customers or the quantity of targeted customers, nor on the extent of any distribution that would demonstrate a level of awareness of the relevant public.

It is admittedly true that on some of the press articles and in some of the catalogues the earlier mark appears in a standalone manner, as explained above. However, it is only visible in some press clippings, and in some catalogues that do not considerably predate the relevant date or are undated, and it cannot be concluded from these documents that the earlier mark has obtained a level of recognition amongst the relevant public and they are insufficient to prove that the public has been largely exposed to the earlier sign during the relevant period.

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.

5. Global assessment, other arguments and conclusion

The goods at issue have been found identical and similar to varying degrees. They target the general public and professionals whose degree of attention may vary from average to high.

The earlier mark has a normal degree of distinctiveness.

The signs are visually similar to a low degree, while they are not comparable aurally or conceptually.

It is admittedly true that the contested goods in Classes 18 and 25 are identical or similar to the opponent’s goods. However, this factor must be viewed against the fact that, generally, in shops where fashion goods are sold customers can themselves either choose the garments or fashion accessories they wish to buy or be assisted by the sales staff. Whilst oral communication in respect of the product and the trade mark is not excluded, the choice of the item is generally made visually. Therefore, the

visual perception of the marks in question will generally take place prior to purchase. It is also common for the name and/or logo of a retail shop to appear at its entrance. Sometimes the name and/or logo may even be visible from afar, and consumers would perceive it visually first. The importance of the visual aspect also applies for the name and/or logo of an online retail shop to appear on its opening page and on top of its webpages. Accordingly, the visual aspect plays a greater role in the global assessment of the likelihood of confusion, at least in relation to the contested goods in Classes 18 and 25, and in relation to the contested retail services in relation to sporting equipment; retail services in relation to footwear; retail services relating to sporting goods; retail services in relation to fashion accessories; retail services connected with the sale of clothing and clothing accessories; online retail store services relating to clothing. As set out above, the overall visual impressions of the signs display immediately perceptible differences, in particular because of the difference in the quantity and shape of their constituting components (three diamonds versus five tilted squares) and the difference in their width (as a result of the difference in components). These differences outweigh the fact that the signs are visually similar to a low degree. However, it cannot be accepted, as the opponent claimed, that the contested sign is incorporated twice in the earlier mark due to the different shapes of the constituent parts. Therefore, it is unlikely that the average consumer will mentally register the fact that the contested sign would be a repetition of the earlier mark.

It must be underlined that the relevant public for the contested advertising; professional business consultancy; business management; office functions services; clerical services; presentation of goods on communication media, for retail purposes; design of advertising materials; placement of design staff; publication of publicity texts; product marketing; advertising and marketing; research services relating to advertising; analysis of business information; collecting information for business; trade promotional services; updating of advertising material consists of business customers with specific professional knowledge or expertise. As their degree of attentiveness is (relatively) high, they will more easily perceive the visual differences between the signs at issue.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

The Opposition Division will, therefore, continue with the examination of the opposition on the grounds of Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

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).

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

For reasons of completeness, the Opposition Division points out that, even if a reputation had been proven, the opposition would still be unsuccessful under Article 8(5) EUTMR, as the opponent did not submit any facts, arguments or evidence that could support the conclusion that 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. In the present case, the opponent merely claims that its mark is ´well known due to its long standing history and its widespread and intense use. It states that it enjoys an enhanced distinctiveness and a deeper and more intense scope of protection´, without submitting evidence, or at least putting forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, which could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

Therefore, the opposition must be rejected in its entirety.

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 opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

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

The Opposition Division

Nicole CLARKE

Christophe DU JARDIN

Ferenc GAZDA

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.