OPPOSITION Nо B 3 108 282

 

Xox Gebäck GmbH, Am Hastebach 8, 31789 Hameln, Germany (opponent), represented by Fuchs Patentanwälte Partnerschaft mbB, Otto-von-Guericke-Ring 7, 65205 Wiesbaden, Germany (professional representative) 

a g a i n s t

 

Sweet Ninja Foods Limited, 1 Drakes Drive, Aylesbury HP18 9BA, United Kingdom (applicant), represented by Tennant IP Limited, 10 Llanthewy Road, Newport NP20 4JR, United Kingdom (professional representative).

On 14/04/2021, the Opposition Division takes the following

 

 

DECISION:

 

 

1.	Opposition No B 3 108 282 is partially upheld, namely for the following contested goods:

Class 29: All goods in this class, except for milk-based beverages. Class 30: All goods in this class, except for sugars; chocolate syrup; chocolate flavourings; chocolate sauces; chocolate sauce; chocolate fondue; chocolate syrups for the preparation of chocolate based beverages; chocolate based fillings; ice creams containing chocolate; ice creams flavoured with chocolate; ice beverages with a chocolate base; chocolate powder; chocolate extracts; drinking chocolate; chocolate beverages; chocolate coffee; chocolate flavoured beverages; chocolate-based beverages; chocolate based drinks; drinks containing chocolate; chocolate drink preparations; drinks prepared from chocolate; chocolate beverages with milk; beverages with a chocolate base; chocolate extracts for the preparation of beverages.

2.

European Union trade mark application No 18 148 421 is rejected for all the above goods. It may proceed for the remaining goods.

 

3.	Each party bears its own costs.

 

REASONS

 

On 09/01/2020, the opponent filed an opposition against all the goods of European Union trade mark application No 18 148 421 for the word mark 'Chocalot', namely against all the goods in Classes 29 and 30. The opposition is based on European Union trade mark registration No 18 002 320 for the word mark 'Chocapop'. The opponent invoked Article 8(1)(a) and (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

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

 

Class 29: Potato products, included in class 29, produced by heat and pressure or by heating in fat; potato crisps and potato sticks; snacks based on potatoes, included in class 29; extruded potato products for snacks, included in class 29; dried, roasted, salted and/or spiced peanut kernels, hazelnuts, nuts, almonds and cashew nut kernels, raisins and currants; preserved, dried and cooked fruits and vegetables; vegetable chips; vegetable slices; fruit slices; vegetable-based snack foods; peanut butter; fat-containing mixtures for bread slices; meat; meat.

Class 30: Bakery goods, in particular shortbread, shortbread biscuits, waffles, savoury pastries, savoury biscuits, onion and cheese pastries; waffles, wafers, cookies; rusks, gingerbread and honey cakes, crackers, ready-to-eat pastries for toasting; sweet and savoury sandwich pastries; muffins; brioche; long-life pastries, in particular hard and soft biscuits; cereal preparations for food; cereal-based snack food; prepared cereal grains and cereal flakes with added nuts, raisins, fruits, fruit powder, wheatgerm, sugar and/or honey; all the aforesaid goods also being extruded or coextruded and pressed products, including in bar form; deep-fried potato snacks; sweet and savoury snacks with a base of wheat flour, rice flour, potato starch and cereals; rice crisps; salted bread sticks; products with a base of soya flour and tapioca, produced by heat and pressure or by heating in fat, included in class 30; extruded soya and tapioca products for snacks, included in class 30; biscuits and sweet or savoury snacks with a base of soya and tapioca flour, included in class 30; sweet and savoury snacks with a base of wheat, rice or maize, included in class 30.

The contested goods are the following:

Class 29: Fruit and nut based snack bars; snack mixes consisting of processed fruits and processed nuts; milk-based snacks; milk-based beverages; butter (chocolate nut -); chocolate nut butter; fruit based snack foods; nut-based snack foods.

Class 30: Confectionery; sweets [candy]; biscuits; cookies; cereals; flour preparations for food; grain-based snack foods; low-carbohydrate confectionery; cereal bars; cereal snacks; low carbohydrate confectionery; sugars, natural sweeteners, sweet coatings and fillings, bee products; sweets (non-medicated -) in the nature of sugar confectionery; chocolate-based bars; chocolate-coated rice cakes; chocolate-based ready-to-eat food bars; chocolate syrup; chocolate flavourings; chocolate based products; chocolate spreads for use on bread; chocolate; chocolate spreads; chocolate topping; chocolate sauces; chocolate coating; chocolate sauce; chocolate fondue; chocolate mousses; chocolate vermicelli; chocolate waffles; chocolate marzipan; aerated chocolate; chocolate truffles; chocolate creams; substitutes (chocolate -); imitation chocolate; liqueur chocolates; chocolate flavoured confectionery; chocolate-covered nuts; chocolate with alcohol; chocolate for toppings; chocolate coated fruits; chocolate coated nuts; chocolate-based spreads; prepared desserts [chocolate based]; chocolate spreads containing nuts; chocolate-coated sugar confectionery; chocolate for confectionery and bread; chocolate decorations for christmas trees; waffles with a chocolate coating; chocolate decorations for confectionery items; chocolate confectionery having a praline flavour; foodstuffs containing chocolate [as the main constituent]; non-medicated flour confectionery coated with imitation chocolate; sandwich spread made from chocolate and nuts; chocolate biscuits; chocolate pastries; chocolate cake; chocolate pastes; chocolate brownies; chocolate wafers; chocolate caramel wafers; chocolate covered cakes; milk chocolate teacakes; chocolate covered biscuits; chocolate covered pretzels; chocolate covered wafer biscuits; biscuits containing chocolate flavoured ingredients; biscuits having a chocolate coating; chocolate eggs; chocolate candies; chocolate confectionery; chocolate fudge; filled chocolate; chocolate bars; chocolate chips; milk chocolate; filled chocolates; chocolate sweets; confectionery chocolate products; filled chocolate bars; marshmallow filled chocolates; confectionery items formed from chocolate; chocolates with mint flavoured centres; chocolates presented in an advent calendar; chocolate-coated bars; chocolate syrups for the preparation of chocolate based beverages; chocolate based fillings; chocolate decorations for cakes; chocolate flavoured coatings; ice creams containing chocolate; ice creams flavoured with chocolate; ice beverages with a chocolate base; chocolate powder; chocolate extracts; drinking chocolate; chocolate beverages; chocolate coffee; chocolate flavoured beverages; chocolate-based beverages; chocolate based drinks; drinks containing chocolate; chocolate drink preparations; dairy-free chocolate; drinks prepared from chocolate; chocolate beverages with milk; beverages with a chocolate base; chocolate extracts for the preparation of beverages. 

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 opponent´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. The reference point is whether the relevant public would perceive the relevant products as having a common commercial origin (Court of First Instance, Judgment of 4 November 2003, in Case T-85/02, “Castillo/El Castillo”, paragraph 38) and whether the consumers consider it normal that the goods are marketed under the same trade mark, which normally implies that a large number of producers or distributors of these products are the same (Court of First Instance, Judgment of 11 July 2007, in Case T-150/04, “Tosca Blu/Tosca”, paragraph 37).

Ingredients used for the preparation of foodstuffs are a subcategory of raw materials and treated in the same way as raw materials in general. Consequently, the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar, even though they all fall under the general category of foodstuffs (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). Furthermore, there is no complementarity simply because one ingredient is needed for the production/preparation of another foodstuff. Complementarity applies only to the use of goods and not to their production process (see paragraph 3.2.4 and 11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 11/12/2012, R 2571/2011-2, FRUITINI, § 18).

However, when the ingredient can be considered as being the main ingredient of the prepared food, a similarity will exist when the goods share some other relevant criterion or criteria, in particular the usual origin, nature, purpose or method of use.

Contested goods in Class 29

The contested butter (chocolate nut -); chocolate nut butter overlap with the opponent´s fat-containing mixtures for bread slices, and are therefore identical.

The contested fruit and nut based snack bars; snack mixes consisting of processed fruits and processed nuts; fruit based snack foods; nut-based snack foods consist of or contain as their main ingredient the opponent’s dried, roasted, salted and/or spiced nuts and/or its preserved, dried and cooked fruits. Furthermore, these goods share the commercial origin and nature and can be in competition with each other when consumed as ‘healthy snacks’. Therefore, these goods are at least similar.

The contested milk-based snacks are similar to the opponent´s bakery goods, given that the goods in question are in competition with each other since they can all be consumed as desserts or sweet snacks. Admittedly, the mere fact that pastries and confectionary may contain some milk does not make them similar to milk or milk products in general (14/10/2009, T‑140/08, TiMiKinderjoghurt, EU:T:2009:400, §  62). However, the goods in question have the same purpose and method of use, the same distribution channels, the same target public and are in competition with each other (26/04/2016, T‑21/15, DINO (fig.) / DEVICE OF A DINOSAUR (fig.), EU:T:2016:241, § 54).

The contested milk-based beverages are dissimilar to all the opponent’s goods in Classes 29 and 30, which are essentially snacks, nuts, fruits and vegetables, fats, meat and bakery products. They have a different nature, purpose and are not found in the same sections of supermarkets or department stores. They are neither in competition nor complementary. Moreover, they usually have different commercial origins. Although all these goods are foodstuffs and they target the public at large, this is not sufficient for finding similarity.

Contested goods in Class 30

 

The contested biscuits; cookies; chocolate biscuits; chocolate pastries; chocolate cake; chocolate pastes; chocolate brownies; chocolate covered cakes; milk chocolate teacakes; chocolate covered biscuits; chocolate covered pretzels; biscuits containing chocolate flavoured ingredients; biscuits having a chocolate coating are included in the broad category of the opponent’s bakery products. Therefore, they are identical.

 

The contested cereals are processed cereals in any form, including e.g. breakfast cereals, therefore, they include, as a broader category, the opponent’s cereal flakes with added nuts, raisins, fruits, fruit powder, wheatgerm, sugar and/or honey. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested grain-based snack foods; cereal bars; cereal snacks are identical to the opponent’s cereal based snack-food; all the aforesaid goods also being extruded or coextruded and pressed products, including in bar form, either because they are identically contained in both lists (including synonyms) or because the opponent’s goods include the contested goods.

The contested chocolate waffles; waffles with a chocolate coating are included in the broad category of the opponent’s waffles. The contested chocolate wafers; chocolate caramel wafers; chocolate covered wafer biscuits are included in the broad category of the opponent’s wafers. Therefore, they are identical.

The contested confectionery; sweets [candy]; low carbohydrate confectionery (listed twice); sweets (non-medicated -) in the nature of sugar confectionery; chocolate-based bars; chocolate-coated rice cakes; chocolate-based ready-to-eat food bars; chocolate based products; chocolate; chocolate marzipan; aerated chocolate; substitutes (chocolate -); imitation chocolate; chocolate flavoured confectionery; chocolate-covered nuts; chocolate coated fruits; chocolate coated nuts; chocolate-coated sugar confectionery; chocolate for confectionery and bread; chocolate confectionery having a praline flavour; foodstuffs containing chocolate [as the main constituent]; non-medicated flour confectionery coated with imitation chocolate; chocolate eggs; chocolate candies; chocolate confectionery; chocolate fudge; filled chocolate; filled chocolates; marshmallow filled chocolates; chocolates with mint flavoured centres; chocolate bars; chocolate chips; milk chocolate; chocolate sweets; confectionery chocolate products; filled chocolate bars; confectionery items formed from chocolate; chocolates presented in an advent calendar; chocolate-coated bars; dairy-free chocolate are at least similar to the opponent’s cereal preparations for food; cereal-based snack food; all the aforesaid goods also being extruded or coextruded and pressed products, including in bar form. The opponent’s cereal preparations for food and cereal-based snack food are essentially anything that can be made from processed cereals and include various bakery goods such as cakes, bread, pastries, biscuits and grain-based sweet and savory snack food. Furthermore, children these days eat chocolate and confectionary and cereal preparations (breakfast cereals and cereal bars) interchangeably, therefore, these goods have the same purpose and are in competition with each other and they usually coincide in producer, relevant public and distribution channels.

The contested chocolate mousses; chocolate vermicelli; chocolate truffles; liqueur chocolates; chocolate with alcohol; prepared desserts [chocolate based]; chocolate decorations for cakes; chocolate decorations for confectionery items; chocolate decorations for Christmas trees; sweet coatings and fillings; chocolate topping; chocolate for toppings; chocolate coating; chocolate flavoured coatings are similar to the opponent’s bakery products (which include e.g. cakes) as they usually coincide in producer, relevant public and distribution channels. Furthermore, these goods are in competition or complementary.

The contested chocolate spreads; chocolate-based spreads; chocolate spreads containing nuts; chocolate creams; chocolate spreads for use on bread; sandwich spread made from chocolate and nuts are similar to the opponent´s fat-containing mixtures for bread slices in Class 29, as they have the same purpose. They usually coincide in relevant public and method of use. Furthermore they are in competition.

The contested flour preparations for food overlap with the opponent´s cereal preparations for food, since flour is a powder obtained by grinding grain or cereal, typically wheat, and used to make bread, cakes, and pastry, so goods such as wheat flour preparations for food would be included in both the contested and the opponent´s goods. Therefore these goods are identical.

The contested natural sweeteners, bee products include honey, which is similar to the opponent´s preserved fruits in Class 29, as they usually coincide in relevant public, distribution channels and method of use. Furthermore they are in competition.

The remaining contested goods, namely, sugars; chocolate syrup; chocolate flavourings; chocolate sauces; chocolate sauce; chocolate fondue; chocolate syrups for the preparation of chocolate based beverages; chocolate based fillings; ice creams containing chocolate; ice creams flavoured with chocolate; ice beverages with a chocolate base; chocolate powder; chocolate extracts; drinking chocolate; chocolate beverages; chocolate coffee; chocolate flavoured beverages; chocolate-based beverages; chocolate based drinks; drinks containing chocolate; chocolate drink preparations; drinks prepared from chocolate; chocolate beverages with milk; beverages with a chocolate base; chocolate extracts for the preparation of beverages have different natures from the opponent’s goods in Classes 29 and 30.

Furthermore, they are neither complementary to nor in competition with each other. Although these contested goods may be sold in the same large supermarkets as the opponent’s goods, they are unlikely to be found in the same sections or shelves. Their distribution channels and methods of use are also different. Consumers would not think that these goods came from the same undertaking or economically linked undertakings. The fact that these products are all foodstuffs is not sufficient to conclude that there is similarity between the goods in question. Therefore, they are dissimilar.

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 are directed at the public at large. The degree of attention is average.

c) The signs

Chocapop	Chocalot
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. In the present case, for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public for which the signs show more similarities, as it will be explained below.

Both marks are word marks consisting of one verbal element each, ‘Chocapop’ and ‘Chocalot’. It is worth noting that the protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics that the mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is generally irrelevant whether word marks are in upper-or lower-case letters, unless they deviate from the usual way of writing (irregular capitalization) which is not the case here. Neither of these two verbal elements has any descriptive or weak meaning in relation to the relevant goods and their distinctiveness is, therefore, normal.

The applicant argues that the initial sequence of letters ‘CHOCA’, present in both signs, is ‘highly descriptive and known within the relevant public due to its widespread use and descriptive nature in relation to foodstuffs‘; ‘is commonly known as an abbreviation of ‘chocolate’; ‘is likely to be perceived by the average consumer as being an alternative way of being short for chocolate’ and ‘has a low level of inherent distinctiveness due to its descriptive nature and connection with chocolate’. In order to support these arguments, the applicant lists fifteen European Union trade marks starting with the sequence of letters ‘CHOCA-’ and indicates that that they are registered for goods in classes 29 and / or 30, and also provides four links with screenshots showing goods bearing marks starting with the cited sequence of letters.

The applicant furthermore argues that the final part of the signs, ‘POP’ (earlier mark) and ‘LOT’ (contested sign), have different conceptual meanings, and refers to definitions in English, namely, a light explosive or short sharp sound (‘POP’) and a large number or great extent/degree of something (‘LOT’), adding that they are the distinctive part of the signs. In this regard, the Opposition Division considers appropriate to clarify that in Spanish ‘POP’ is only used to refer to a type of music and ‘LOT’ has no meaning.

In view of the above, the Opposition Division notes first that, although it is correct that when perceiving a word sign, consumers will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57), it must be borne in mind that word marks should not be artificially dissected and dissection is not appropriate unless the relevant public will clearly perceive the components in question as separate elements.

Furthermore, contrary to the applicant´s assertion, the component ‘CHOCA’, present in both signs, would not be recognized as ‘chocolate’. First, ‘CHOCA’ is not a usual abbreviation of the word ‘chocolate’ known by the relevant Spanish-speaking consumers, who would rather see this term as being the third person singular of the verb ‘chocar’, meaning to crash, or to high five; second, the existence of several trade mark registrations and the screenshots filed by the applicant are not per se conclusive, since on the basis of the same it cannot be assumed that all the listed European Union trade marks have been effectively used, nor that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘CHOCA’ as a reference to chocolate; third, (as the applicant also points out in its observations) although part of the relevant goods of the contested sign are chocolate or chocolate based, the relevant goods of the earlier mark do not include any explicit reference to chocolate or chocolate flavoured goods.

In conclusion, since average consumers normally perceive a mark as a whole and do not proceed to analyse its various details and, for the reasons explained above, neither ‘CHOCA’ nor ‘POP’ or ‘LOT’ are likely to be perceived as having any specific meaning in relation to the relevant goods, the applicant’s arguments must be set aside. The Opposition Division considers that the relevant public will perceive the earlier mark, ‘CHOCAPOP’, and the contested sign, ‘CHOCALOT’, as being single meaningless verbal elements, since there is no compelling reason why consumers should dissect them into verbal elements that are unrelated to the goods at hand, but will rather just perceive them as a whole.

Visually, the signs have an identical length and share six out of their eight letters. Furthermore, all the coinciding letters are placed in the same position in both signs, ‘CHOCA-O-’. The signs differ in their sixth and eight letters, ‘P-P’ in the earlier mark and ‘L-T’ in the contested sign.

The Court has confirmed that what matters in the assessment of the visual similarity of two word marks is the presence, in each of them, of several letters in the same order (29/01/2020, T-239/19, Encanto, EU:T:2020:12, § 27; 25/03/2009, T-402/07, Arcol II, EU:T:2009:85, § 83). Therefore, it is particularly relevant that the signs coincide in six out of their eight letters. Additionally, it is important to note that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. The five first letters of the compared signs, ‘CHOCA-’, are identical.

Based on the above, contrary to the applicant’s assertions, the signs are considered visually similar to a high degree.

 

Aurally, the pronunciation of the signs coincides in their two first syllables /CHO/CA/, present identically in both signs, and in the sound of the vowel /-O-/ present in an identical position in their third syllables. Therefore, the signs coincide in the sound of six out of their eight letters, placed in the same position, /CHOCA-O-/, and in their vowel structure (O-A-O). Their length, rhythm and intonation are identical. The pronunciation differs in the sound of two letters placed in their last syllables, /P-P/ in the earlier mark and /L-T/ in the contested sign, which are, however, all consonants. Therefore, the signs are aurally highly similar.

Conceptually, as explained previously, neither of the signs will be dissected and perceived as having a meaning for the relevant public under assessment. 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 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 in question from the perspective of the relevant public under assessment. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

 

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The goods are partly identical, partly similar and partly dissimilar and target the public at large with an average degree of attention. The earlier mark has a normal degree of distinctiveness.

As explained in section c) of this decision, from the perspective of the relevant public in question, the signs will be viewed as a whole rather than broken down into individual components and are visually and aurally highly similar, on account of the fact that they share six out of their eight letters placed in the same position, five of them forming the two first syllables of the signs. Furthermore, they have an identical length, rhythm and intonation and share also their vowel sequence.

Account is taken of the fact that 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).

Moreover, the identical and similar goods are fairly ordinary consumer products that are commonly purchased in supermarkets or establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for (15/04/2010, T-488/07, Egléfruit, EU:T:2010:145). Therefore, in the present case, both the high visual similarity between the signs and the imperfect recollection principle mentioned above have an impact in the assessment of likelihood of confusion.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 18 002 320. 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 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.

For the sake of completeness, it must be noted that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining contested goods, since neither of the conditions for the application of this ground, identity of signs and identity of goods, are met.

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

Julia GARCÍA MURILLO

Helena GRANADO CARPENTER

Marta GARCÍA COLLADO

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.