OPPOSITION Nо B 3 092 118

The Bank Of New York Mellon, 240 Greenwich Street, 10286 New York, United States of America (opponent), represented by Reed Smith LLP, Von-der-Tann-Straße 2, 80539 Munich, Germany (professional representative)

a g a i n s t

Mellon Technologies Systems and Services Commercial S.A. -Private Security Services Enterprise, 74 A, athens-piraeus Av., 18547 Piraeus, Greece (applicant), represented by Maria Sarantopoulou, Iras 4, 14671 Nea Erithrea, Attica, Greece (professional representative).

On 17/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 092 118 is partially upheld, namely for the following contested goods and services:

Class 9: Banking cards [encoded or magnetic]; smart cards; encoded smart cards.

Class 36: ATM banking services; cash dispenser services; provision of cash dispenser facilities for money withdrawal; provision of cash dispenser facilities for money deposit; management of credit card services; financial services for the management of credit cards; cash management services; bill payment services; on-line bill payment services; electronic banking services; electronic banking via a global computer network [internet banking]; electronic banking; debt management services; debt collection services; financial consulting services; financial portfolio management; portfolio management; estate management; processing of payment transactions via the internet; processing of electronic credit card transactions; processing of electronic debit transactions; electronic credit card transaction processing; insurance premium financing services; money transfer services utilising electronic cards; processing of cheques; stock exchanges for dealing in shares and other financial securities; financial services; financial transaction services; financial credit services.

2. European Union trade mark application No 18 052 611 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

On 16/08/2019, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 052 611 (figurative mark), namely against all the goods and services in Classes 9, 36 and 42. The opposition is based on, inter alia, European Union trade mark registrations No 90 274 ‘MELLON’ and No 6 902 381 ‘BNY MELLON’ (both word marks). The opponent invoked Article 8(1)(a) and (b) EUTMR and Article 8(4) EUTMR.

PRELIMINARY REMARKS

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(1) and (4) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that United Kingdom trade mark registration No 3 386 470 ‘MELLON’ and the United Kingdom non-registered trade mark ‘MELLON’ no longer constitute valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on these earlier rights.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 90 274 and No 6 902 381.

a) The goods and services

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

EUTM registration No 90 274 (earlier mark 1)

Class 16: Printed matter.

Class 36: Financial and banking services.

EUTM registration No 6 902 381 (earlier mark 2)

Class 35: Fund and portfolio accounting, reconciliation and reporting, and business management and administration services.

Class 36: Banking and financial services; investment management and advisory services; corporate trust services; trust and estate management services; securities custody, processing, lending, clearing and execution services; and financial services relating to depositary receipts.

The contested goods and services are the following:

Class 9: Automated teller machines (ATM); automated teller machines [ATM]; cash dispensers; automatic teller machines [cash dispensers]; scanners; electronic scanners; point of sale terminals; electronic point of sale terminals; barcode scanners; point of sale [POS] systems; network communication equipment; networking devices; banking cards [encoded or magnetic]; card readers; software for card readers; apparatus for checking the authenticity of banknotes; digital signage; digital signage monitors; digital signage display panels; electronic locking mechanisms for safes; door locks (electric -); electronic locks; metal locks [electric]; digital door locks; security software; unified communications software; video conference software; network monitoring cameras; remote monitoring apparatus; television monitoring apparatus; electric and electronic security apparatus and instruments; authentication software; computer software programs; computer software applications; computer software; mobile software; mobile application software; computer servers; network servers; intelligent gateways for software defined storage; business process management [BPM] software; computer programs; electronic machines for reading credit cards; smart cards; encoded smart cards; software to control building environmental, access and security systems; wireless controllers to remotely monitor and control the function and status of security systems; security alarms; security cameras; computer software for application and database integration; telecommunication equipment; telecommunications networks; telecommunications software; wearable telecommunication apparatus; website development software; software development programmes.

Class 36: ATM banking services; cash dispenser services; rental of cash dispensers; provision of cash dispenser facilities for money withdrawal; provision of cash dispenser facilities for money deposit; rental of cash dispensers or automated-teller machines; providing information relating to the rental of cash dispensers or automated teller machines; management of credit card services; financial services for the management of credit cards; cash management services; rental of banknote and coin counting or sorting machines; rental of machines for counting and sorting banknotes; bill payment services; on-line bill payment services; electronic banking services; electronic banking via a global computer network [internet banking]; electronic banking; debt management services; debt collection services; financial consulting services; financial portfolio management; portfolio management; estate management; processing of payment transactions via the internet; processing of electronic credit card transactions; processing of electronic debit transactions; electronic credit card transaction processing; insurance premium financing services; money transfer services utilising electronic cards; processing of cheques; stock exchanges for dealing in shares and other financial securities; financial services; financial transaction services; financial credit services.

Class 42: Electronic monitoring of credit card activity to detect fraud via the internet; computer security system monitoring services; design and development of internet security programs; internet security consultancy; computer software maintenance; computer software design; technical support services relating to computer software and applications; software installation; computer software installation and maintenance; disaster recovery services (computer -); design and development of systems for data input, output, processing, display and storage; information technology services; information technology support services; information technology consulting services; software consulting services; installing computer programs; designing of computer programs; design and development of electronic data security systems; data security services; provision of security services for computer networks, computer access and computerised transactions; software customisation services; installation and maintenance services for software; computer integration services; computer software integration; integration of computer systems and networks; consultancy and information services relating to computer system integration; website development services; website design services; maintenance of websites; scientific and industrial research; computer programming; software development; software development services; computer software development; software design and development; software development, programming and implementation.

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 9

The contested smart cards; encoded smart cards are physical cards that have an embedded integrated chip that acts as a security token. Smart cards are used for a variety of applications, though most commonly are used as credit cards and other payment cards. The contested banking cards [encoded or magnetic]; smart cards; encoded smart cards and the opponent’s finance services (covered by both earlier marks) have the same purpose since the only intended purpose of all these cards is their use in the course of financial operations. Furthermore, they target the same relevant public and coincide in distribution channels.

Moreover, these contested goods are usually issued by financial institutions and consumers will believe that the financial institution that issued them is also responsible for the correct functioning of those cards. Therefore, the goods and services will be perceived as originating from the same commercial source. In addition, these contested goods are closely connected with the opponent’s finance services in Class 36, in the sense that one is indispensable or important for the use of the other, with the result that those goods and services are complementary (26/09/2017, T‑83/16, WIDIBA / ING DiBa (fig.) et al., EU:T:2017:662, § 62-66). Therefore, they are similar.

However, the remaining goods in this class, namely automated teller machines (ATM); automated teller machines [ATM]; cash dispensers; automatic teller machines [cash dispensers]; scanners; electronic scanners; point of sale terminals; electronic point of sale terminals; barcode scanners; point of sale [POS] systems; network communication equipment; networking devices; card readers; software for card readers; apparatus for checking the authenticity of banknotes; digital signage; digital signage monitors; digital signage display panels; electronic locking mechanisms for safes; door locks (electric -); electronic locks; metal locks [electric]; digital door locks; security software; unified communications software; video conference software; network monitoring cameras; remote monitoring apparatus; television monitoring apparatus; electric and electronic security apparatus and instruments; authentication software; computer software programs; computer software applications; computer software; mobile software; mobile application software; computer servers; network servers; intelligent gateways for software defined storage; business process management [BPM] software; computer programs; electronic machines for reading credit cards; software to control building environmental, access and security systems; wireless controllers to remotely monitor and control the function and status of security systems; security alarms; security cameras; computer software for application and database integration; telecommunication equipment; telecommunications networks; telecommunications software; wearable telecommunication apparatus; website development software; software development programmes are dissimilar to all the opponent’s services in Class 36. They differ in their nature, purpose and methods of use. These goods and services target a different public with different needs, are usually provided by different companies and distributed through different channels.

For example, although the contested card readers; software for card readers; apparatus for checking the authenticity of banknotes; electronic machines for reading credit cards may be used when performing the opponent’s financial and banking services, this is insufficient for finding similarity. These goods and services are not provided by the same undertakings or distributed through the same channels. Even though the relevant sections of the public may overlap to a certain extent, that is not sufficient to find similarity, given their different purpose and nature.

Furthermore, even though some of the contested goods, such as automated teller machines [ATM] (repeated twice); cash dispensers; automatic teller machines [cash dispensers] are related to financial services, for example they can serve to withdraw money, this link is too weak to render these goods and the opponent’s financial and banking services (covered by both earlier mark 1 and 2) similar. Their customers know that financial institutions are not responsible for the technological aspects of manufacturing cash dispensers. Therefore, the above contested goods are considered dissimilar to the opponent’s financial and banking services.

This conclusion is also applicable to the opponent’s remaining services in Class 36 investment management and advisory services; corporate trust services; trust and estate management services; securities custody, processing, lending, clearing and execution services; and financial services relating to depositary receipts (earlier mark 2) and, a fortiori, to the rest of the opponents’ goods and services in Classes 16 and 35, which are even more different from the contested goods in Class 9. They clearly differ in their nature, purpose, commercial origins and distribution channels. Furthermore, they are not complementary or in competition. Therefore, they are dissimilar.

Contested services in Class 36

Financial services; estate management are identically contained in the lists of services covered by the contested mark and earlier mark 2 (including synonyms).

The contested management of credit card services; financial services for the management of credit cards; cash management services; bill payment services; on-line bill payment services; electronic banking services; electronic banking via a global computer network [internet banking]; electronic banking; debt management services; financial consulting services; financial portfolio management; portfolio management; processing of payment transactions via the internet; processing of electronic credit card transactions; processing of electronic debit transactions; electronic credit card transaction processing; money transfer services utilising electronic cards; processing of cheques; financial transaction services; financial credit services are included in the broad category of financial and banking services covered by both earlier marks. Therefore, they are identical.

The contested debt collection services; stock exchanges for dealing in shares and other financial securities; ATM banking services; cash dispenser services; provision of cash dispenser facilities for money withdrawal; provision of cash dispenser facilities for money deposit; insurance premium financing services are at least similar to the opponent’s financial services (covered by both earlier marks), since they are all services of financial nature and/or related to money and finance. Furthermore, they at least may be provided by the same companies to the same public and can coincide in their distribution channels.

Finally, the contested rental of cash dispensers; rental of cash dispensers or automated-teller machines; providing information relating to the rental of cash dispensers or automated teller machines; rental of banknote and coin counting or sorting machines; rental of machines for counting and sorting banknotes are considered dissimilar to all the services covered by the opponent’s marks in Classes 35 and 36, because they have nothing relevant in common. In particular, the specialised companies that rent out the cash dispensers, ATMs, banknote or coin-counting/sorting machines, or provide information on them, do not usually coincide with the banks and financial entities that offer the opponent’s services in Class 36.

These sets of services are offered through different distribution channels and may not be intended for the same public, since the contested services are normally purchased by store owners or for shopping areas such as shopping centres, organisers of special events, etc. Their nature, purpose and methods of use are different. Furthermore, the fact that the contested services and the opponent’s services in Class 36 are, very broadly speaking, related to the financial sector, or that, for instance, banks can rent coin-counting machines or cash dispenser to place in their premises is not sufficient to make these services similar.

The above contested services are dissimilar to the opponent’s goods in Class 16 printed matter, since they do not have anything relevant in common that could justify finding a level of similarity between them.

Contested services in Class 42

The contested services in this class consist of various types of internet security services, software design, installation, maintenance and other related technical services, website design and development and information technology services.

The financial services sector has become increasingly digitalised and data-driven and the use of smartphones for mobile banking, investing services and cryptocurrency are examples of technologies aiming to make financial services more accessible to the general public or more (cost) efficient. However, in today’s high-tech society, this finding holds true for a wide range of services that have a different nature and purpose and belong to different sectors. This is not, however, sufficient to justify the conclusion that the contested services, even if explicitly limited to a certain sector (as in the case of provision of security services for computer networks, computer access and computerised transactions) are similar to the opponent’s services, inter alia, financial and banking services in Class 36. In particular, even if the contested services in question target the providers of the opponent’s services, the contested services as such are not offered by the same companies that provide the opponent’s. The fields of expertise and related know-how are different.

Companies providing services within the IT field may customise their products for different market sectors and work together with undertakings to this end. Indeed, IT developers usually rely on the information provided by their clients in order to tailor their services for a specific purpose. However, this does not make the contested services in question in any way complementary to the opponent’s services in Class 36. Despite the close collaboration between, for instance, a financial institution and an IT company in developing a specific one-off IT internet security service, there is no functional complementarity between the two sets of services.

Moreover, the services in question target a different public. Therefore, the services covered by the mark applied for in this class are dissimilar to all the opponent’s services in Class 36.

Finally, the contested services in this class are also dissimilar to the remaining opponent’s goods and services in Classes 16 and 35, since they do not have anything relevant in common that could justify finding a level of similarity between them.

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

The degree of attention varies from average to high. In particular, the banking and all the finance-related services at issue target the general public, which is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010‑1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T‑220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C‑524/12 P, F@ir Credit, EU:C:2013:874, dismissed).

c) The signs

MELLON (earlier mark 1) BNY MELLON (earlier mark 2)
Earlier trade marks	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 element ‘MELLON’, common to all the marks, has, as such, no meaning in the relevant territory. However, it is likely that part of the relevant public (such as the English-speaking public) may see it as a misspelling of the word ‘melon’, meaning a large round fruit with sweet pulpy flesh and seeds.

Given this word has no connection with the relevant goods and services, it is distinctive to a normal degree.

The element ‘BNY’ of earlier mark 2 may be perceived as an acronym but this will not be associated with any particular concept. Therefore, this element is, per se, distinctive to a normal degree.

Finally, the figurative element in the contested sign, consisting of two light blue triangular shapes conjoined at the top and crossed by white thin horizontal lines, does not convey any clear meaning or connection with the relevant goods and services. This combination of basic geometric shapes is rather banal and is likely to be perceived by consumers essentially as a mere decorative element. Moreover, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Likewise, the stylisation of the word ‘MELLON’ in the contested sign is rather basic and has no distinctive value as such.

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

Visually, all the signs coincide in the word ‘MELLON’, which is the only verbal element in earlier mark 1) and the contested sign. The signs differ in the verbal element ‘BNY’ of earlier mark 2) and the figurative element in the contested sign.

Bearing in mind the above considerations on the elements forming the marks under comparison, the contested sign is considered visually similar to a very high degree to earlier mark 1) and similar to a high degree to earlier mark 2).

Aurally, independently of the pronunciation rules in the relevant territory, the pronunciation of earlier mark 1) and the contested sign will be identical as both contain the same sole verbal element ‘MELLON’.

Pronunciation of earlier mark 2) and the contested sign coincide in the verbal element ‘MELLON’ and differ in the letter combination ‘BNY’. Therefore, these signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public who will associate the word ‘MELLON’ with a fruit, the signs are conceptually at least highly similar.

For the remainder of the public, neither sign has a meaning. Therefore, 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.

d) Distinctiveness of the earlier marks

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 its submissions, the opponent states that it is

one of the biggest banks in the world, in particular the world’s largest custodian bank and asset servicing company and ranks highly in Germany’s and the UK’s financial markets as well. Not only because of its size, but also due to its presence and company history, the opponent has an enormous standing and recognition on the market not just in the US, but also in the UK and Germany.

Furthermore, the opponent states that ‘the market recognition is true also with regard to its European offices, especially in the UK and Germany, where Europe’s major financial hubs (London and Frankfurt) are located’.

In other words, the opponent seems to argue that the earlier marks have been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks 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 that can be made with the registered mark, and the degree of similarity between the marks, and between the goods or services identified (recital 11 of the EUTMR). 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).

The goods and services have been found partly identical, partly (at least) similar and partly dissimilar. The marks are visually similar to a high or very high degree, aurally identical or similar to an average degree and conceptually at least highly similar for part of the public, whereas, for the rest of the public, the conceptual comparison remains neutral.

Taking into account the aforementioned, the differences between the signs are not sufficient to counteract their overwhelming similarities. Furthermore, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). 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).

Therefore, it is likely that the relevant consumer, even with a high degree of attention, on encountering both signs in relation to identical and (at least) similar goods and services, and having an imperfect recollection of them, might think that the goods and services originate from the same undertaking or from economically linked undertakings.

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 90 274 and No 6 902 381.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or (at least) similar to those of the earlier trade mark.

The rest of the contested goods and services 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 and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their extensive use as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

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

The opponent has also based its opposition on the German trade mark registration No 1 014 035 ‘MELLON’, covering financial services, in particular banking services in Class 36.

Since this mark is identical to the earlier EUTM No 90 274 ‘MELLON’ (which has been compared above) and covers the same or a narrower scope of services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR (in respect of earlier EUTM No 90 274 ‘MELLON’ and German trade mark registration No 1 014 035 ‘MELLON’) and directed against the remaining goods and services because the signs are obviously not identical.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opposition is also based on an earlier trade name used in the course of trade in Germany in connection with investment management services.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

b) The right under the applicable law

According to Article 95(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Article 7(2)(d) EUTMDR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide, inter alia, evidence of its acquisition, continued existence and scope of protection, including where the earlier right is invoked pursuant to the law of a Member State, a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide the EUIPO not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50).

The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

As regards the provisions of the applicable law, the opponent must provide a clear identification of the content of the national law relied upon by adducing publications of the relevant provisions or jurisprudence (Article 7(2)(d) EUTMDR). The opponent must provide the reference to the relevant legal provision (Article number and the number and title of the law) and the content (text) of the legal provision by adducing publications of the relevant provisions or jurisprudence (e.g. excerpts from an official journal, a legal commentary, legal encyclopaedias or court decisions). If the relevant provision refers to a further provision of law, this must also be provided to enable the applicant and the Office to understand the full meaning of the provision invoked and to determine the possible relevance of this further provision. Where the evidence concerning the content of the relevant national law is accessible online from a source recognised by the Office, the opponent may provide such evidence by making a reference to that source (Article 7(3) EUTMDR).

According to Article 7(4) EUTMDR, any provisions of the applicable national law governing the acquisition of rights and their scope of protection as referred to in Article 7(2)(d) EUTMDR, including evidence accessible online as referred to in Article 7(3) EUTMDR must be in the language of the proceedings or accompanied by a translation into that language. The translation must be submitted by the opposing party of its own motion within the time limit specified for submitting the original document.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign it invoked, namely the trade name ‘MELLON’. Although the opponent indicated the relevant article number of the German Trade Mark Act, it did not provide the content in its original version or its translation into the language of the proceeding. Indeed, the relevant texts of the legal provisions and case-law invoked were not submitted (in their original language and with a complete translation).

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Félix ORTUÑO LÓPEZ

Claudia ATTINÀ

Chiara BORACE

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.