OPPOSITION No B 3 115 009

Cinq Filles Budapest Kft., Rumbach Sebestyén utca 15. A ép. 1., 1075 Budapest, Hungary (opponent), represented by ABK - Dr. Krajnyák & Partner Law and Patent Office, Logodi u. 5-7., 1012 Budapest, Hungary (professional representative)

a g a i n s t

Club Supercar AG, Schloss Schwarzenbach Wilerstrasse 26, 9536 Schwarzenbach SG, Switzerland (applicant), represented by Gunnercooke LLP, 53 King Street, M2 4LQ Manchester, United Kingdom (professional representative).

On 31/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 115 009 is partially upheld, namely for the following contested goods and services:

Class 30: All the goods applied for in this Class.

Class 32: Soft drinks; carbonated waters; flavoured carbonated beverages; juices; fruit drinks and fruit juices; carbohydrate drinks; non-alcoholic sparkling fruit juice drinks; non-alcoholic beverages and preparations for making beverages (except beverages based on coffee, tea or cocoa and milk beverages).

Class 35: Retail services relating to food; retail services relating to candy; retail services relating to teas; retail services relating to chocolate; retail services relating to desserts; retail services relating to confectionery.

2. European Union trade mark application No 18 153 104 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 27/03/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 153 104 ‘MAISON LES CINQ FILLES’ (word mark), namely against all the goods and services in Classes 30, 32, 33 and 35. The opposition is based on European Union trade mark registrations No 15 066 855, No 15 066 996 and No 15 068 422 for the figurative marks , and respectively, in relation to which the opponent invoked Article 8(1)(b) EUTMR, and on the company name ‘CINQ Filles Budapest Kft.’ in relation to which the opponent invoked Article 8(4) EUTMR.

Preliminary remark

The Office has to receive the full amount of the opposition fee within the opposition period. If the opposition fee was not received within the opposition period, the notice of opposition is deemed not to have been entered.

If the opponent or its representative holds a current account, the payment is considered effective on the day the opposition is received.

In the Notice of Opposition dated 27/03/2020, the opponent indicated payment of the opposition fee by bank transfer, while in a letter dated 08/05/2020 it requested the Office to debit its current account with the amount of the opposition fee instead.

In the present case, the opposition period expired on 18/05/2020.

Therefore, even if the payment by current account was not requested on the day the opposition was received, it was requested and therefore considered effective before the end of the opposition period.

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 registration No 15 066 855.

a) The goods and services

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

Class 16: Decoration and art materials and media; disposable paper products; bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; works of art and figurines of paper and cardboard, and architects’ models; business forms; paper and cardboard.

Class 30: Sugars, natural sweeteners, sweet coatings and fillings, bee products; processed grains, starches, and goods made thereof, baking preparations and yeasts; ice, ice creams, frozen yogurts and sorbets; coffee, teas and cocoa and substitutes therefor; baked goods, confectionery, chocolate and desserts; salts, seasonings, flavourings and condiments; brioches; crumble; chocolate-based ready-to-eat food bars; grain-based chips; crackers flavoured with spices; crackers flavoured with herbs; snack food products made from cereal starch; snack food products made from cereal flour; snack food products consisting of cereal products; crisps made of cereals; pies; pies [sweet or savoury]; snack foods made from corn; snack food products made from maize flour; snacks manufactured from muesli; pretzels; puffed corn snacks; savory pastries.

Class 39: Gift wrapping; wrapping and packaging of goods; advisory services relating to the packing of goods; packing articles for transportation; storage of packages; packaging services; wrapping and packaging services; packing of food; storage of cosmetics; transportation and storage.

The contested goods and services are the following:

Class 30: Condiments; ice; confectionery; confectionery in frozen form; edible ices; chocolates; desserts; sorbet; sorbet infused with alcohol; ice pops; tea-based beverages; carbonated and non-carbonated tea-based beverages; beverages based on tea; syrups; spices; bakery goods; convenience food and savoury snacks namely coated nuts [confectionary], chips [cereal products], canapes, popcorn, crackers, pretzels.

Class 32: Beer; ales; soft drinks; carbonated waters; flavoured carbonated beverages; juices; fruit drinks and fruit juices; alcohol free wine; aperitifs, non-alcoholic; carbohydrate drinks; cocktails, non-alcoholic; non-alcoholic cocktail bases; non-alcoholic sparkling fruit juice drinks; non-alcoholic beverages and preparations for making beverages (except beverages based on coffee, tea or cocoa and milk beverages).

Class 33: Wines; sparkling wines; sparkling white wines; sparkling red wines; sparkling rose wines; sparkling fruit wine; spirits; liqueurs; cocktails; pre-mixed alcoholic beverages; alcoholic carbonated beverages except beer; cider; alcoholic extracts; alcoholic essences; alcoholic fruit extracts; alcoholic aperitifs; alcoholic jellies; alcoholic cocktail mixes; alcopops; beverages containing wine [spritzers]; prepared wine cocktails; wine coolers [drinks]; wine-based aperitifs; sangria; wine punch; dessert wines; wine-based drinks; sweet wines; spirits [beverages]; sparkling grape wine; grape wine.

Class 35: Advertising; advertising, including on-line advertising on a computer network; advertising services relating to the sale of goods; advertising services to promote the sale of beverages; online advertisements; marketing; promotional services; promoting the goods and services of others over the internet; promotion of special events; product sampling; distribution of advertising, marketing and promotional material; loyalty, incentive and bonus program services; product demonstrations and product display services; retail services relating to wines; retail services relating to sparkling wines; retail services relating to sparkling white wines; retail services relating to rose wines; retail services relating to sparkling red wines; retail services relating to wine based drinks; retail services relating to food; retail services relating to candy; retail services relating to teas; retail services relating to chocolate; retail services relating to desserts; retail services relating to confectionery; retail services relating to alcoholic beverages; retail services relating to alcoholic beverages (except beer); retail services relating to preparations for making beverages; retail services relating to preparations for making alcoholic beverages; retail services relating to grape wine; retail services relating to sparkling fruit wine; retail services relating to cocktails; retail services relating to pre-mixed alcoholic beverages; retail services relating to prepared wine cocktails; retail services relating to wine-based aperitifs; retail services relating to sangria; retail services relating to wine punch; retail services relating to spirits; retail services relating to alcoholic aperitifs.

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

The term ‘namely’, used in the applicant’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services specifically listed.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 30

The contested condiments; ice; confectionery; confectionery in frozen form; edible ices; chocolates; desserts; sorbet; sorbet infused with alcohol; ice pops; tea-based beverages; carbonated and non-carbonated tea-based beverages; beverages based on tea; spices; bakery goods; convenience food and savoury snacks namely coated nuts [confectionary], chips [cereal products], canapes, popcorn; crackers, pretzels are identical to the opponent’s ice, ice creams; teas; baked goods, confectionery, chocolate and desserts; salts, seasonings, flavourings and condiments; grain-based chips; snack food products made from cereal flour; snack food products consisting of cereal products; snack foods made from corn; pretzels either because they are identically contained in both lists (including synonyms or slightly different wordings) or because the opponent’s goods include, are included in, or overlap with, the contested goods.

The contested syrups are similar to the opponent’s sugars, as these goods usually coincide in relevant public and distribution channels. Furthermore, they are in competition.

Contested goods in Classes 32 and 33

The contested soft drinks; carbonated waters; flavoured carbonated beverages; juices; fruit drinks and fruit juices; carbohydrate drinks; non-alcoholic sparkling fruit juice drinks are similar to the opponent’s teas in Class 30, as these goods usually coincide in relevant public and distribution channels, and they are in competition. Furthermore, some of these contested goods, such as soft drinks, and the opponent’s teas, which also include iced tea, may coincide in producers.

The contested non-alcoholic beverages and preparations for making beverages (except beverages based on coffee, tea or cocoa and milk beverages) are similar at least to a low degree to the opponent’s teas in Class 30, as these goods – regardless of whether they are based on coffee, tea or cocoa and milk beverages – usually coincide in relevant public, distribution channels and, as far as preparations for making beverages are concerned, method of use.

However, the contested beer; ales; alcohol free wine; aperitifs, non-alcoholic; cocktails, non-alcoholic; non-alcoholic cocktail bases and all the contested goods in Class 33 and the opponent’s goods and services in Classes 16, 30 and 39 have nothing in common that could justify finding a level of similarity between them. Regarding these contested goods and the opponent’s drinkable goods in Class 30, it is true that a very large number of alcoholic and non-alcoholic drinks are generally mixed, consumed, or indeed marketed together, either in the same establishments or as pre-mixed alcoholic drinks (04/10/2018, T‑150/17, FLÜGEL / ... VERLEIHT FLÜGEL et al., EU:T:2018:641, § 77-84). However, to consider that those goods should, for that reason alone, be described as similar, when they are not intended to be consumed in either the same circumstances, or in the same state of mind, or, as the case may be, by the same consumers, would put a large number of goods which can be described as ‘drinks’ into one and the same category for the purposes of the application of Article 8(1) EUTMR. Therefore, it cannot be considered that an alcoholic drink and, for instance, the opponent’s coffee or teas are similar merely because they can be mixed, consumed or marketed together, as the nature, intended purpose and use of those goods differ, based on whether they contain alcohol. Furthermore, undertakings which market alcoholic drinks pre-mixed with a non-alcoholic ingredient do not sell that ingredient separately and under the same or a similar mark as the pre-mixed alcoholic drink at issue. Therefore, these contested goods in Class 32, which are (non-)alcoholic beers, wines and aperitifs, and the contested goods in Class 33, which are alcoholic beverages and preparations for making alcoholic beverages, are dissimilar to the opponent’s drinkable goods in Class 30. These contested goods are even further removed from the opponent’s other goods in Class 32 (which are non-drinkable) and its goods in Class 16. For these contested goods and the opponent’s services in Class 39, the latter are transport, packaging and storage services, and are not considered similar to the contested goods in Classes 32 and 33. Transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B, whereas packaging and storage services refer to services whereby a company’s merchandise is packed and kept in a particular place for a fee. These services are provided by specialist companies whose business is not the manufacture and sale of the goods that are transported, packed and/or stored respectively. The nature, purpose and method of use of these services and the contested goods are different. They do not have the same providers/producers or distribution channels, and they are not in competition. Therefore, these goods and services are dissimilar.

Contested services in Class 35

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 relating to food; retail services relating to candy; retail services relating to teas; retail services relating to chocolate; retail services relating to desserts; retail services relating to confectionery are similar to the opponent’s teas; confectionery, chocolate and desserts; snack food products made from cereal starch in Class 30.

However, the remaining contested services are dissimilar to the opponent’s goods and services.

 The contested advertising; advertising, including on-line advertising on a computer network; advertising services relating to the sale of goods; advertising services to promote the sale of beverages; online advertisements; marketing; promotional services; promoting the goods and services of others over the internet; promotion of special events; product sampling; distribution of advertising, marketing and promotional material; loyalty, incentive and bonus program services; product demonstrations and product display services are advertising and promotional services, that is to say services that provide others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, the aforementioned contested services are dissimilar to the opponent’s goods and services (including those possibly being advertised by the applicant).

 The contested retail services relating to wines; retail services relating to sparkling wines; retail services relating to sparkling white wines; retail services relating to rose wines; retail services relating to sparkling red wines; retail services relating to wine based drinks; retail services relating to alcoholic beverages; retail services relating to alcoholic beverages (except beer); retail services relating to preparations for making beverages; retail services relating to preparations for making alcoholic beverages; retail services relating to grape wine; retail services relating to sparkling fruit wine; retail services relating to cocktails; retail services relating to pre-mixed alcoholic beverages; retail services relating to prepared wine cocktails; retail services relating to wine-based aperitifs; retail services relating to sangria; retail services relating to wine punch; retail services relating to spirits; retail services relating to alcoholic aperitifs and the opponent’s goods in Classes 16 and 30 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. These conditions are not fulfilled in the present case, since the goods sold through the applicant’s retail services are similar to a low degree for preparations for making beverages, and dissimilar as far as the remaining goods are concerned.

These contested retail services are also dissimilar to the opponent’s services in Class 39, which, as explained above, are services provided by specialist companies whose business is not the manufacture and sale of the goods that are transported, packed and/or stored respectively. These services have a different nature, serve different purposes, do not have the same providers/producers or distribution channels, and are not in competition.

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 and similar to varying degrees are directed at the public at large, whose degree of attention is average.

c) The signs

	MAISON LES CINQ FILLES
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.

All the signs’ verbal elements are meaningful for the French-speaking public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

The earlier mark is a figurative mark consisting of the verbal element ‘Budapest’ and the verbal element ‘CINQ FILLES’, with the former placed above the latter and written in considerably larger letters. The verbal element ‘Budapest’ is written in a slightly stylised typeface in title-case letters, whereas the verbal element ‘CINQ FILLES’ is written in standard upper-case letters. The slight stylisation of the earlier mark is not especially striking and will not distract consumers from its verbal elements; it will be perceived as purely decorative and therefore plays only a secondary role in its overall impression. The verbal element ‘Budapest’ is clearly the dominant element as it is the most eye-catching. However, it is also non-distinctive, because it is known by the relevant public as the capital of Hungary and will therefore be perceived as descriptive as merely indicating the geographical location where the relevant goods are originating from or the relevant services are rendered. In contrast, the verbal element ‘CINQ FILLES’, with the French word ‘cinq’ meaning ‘five’ (information extracted from Larousse Online Dictionary on 19/03/2021 at https://www.larousse.fr/dictionnaires/francais/cinq/16090) and the French word ‘filles’, plural form of ‘fille’ (information extracted from Larousse Online Dictionary on 19/03/2021 https://www.larousse.fr/dictionnaires/francais/fille/33732), meaning ‘girls’ or ‘daughters’, will be understood as ‘five girls’ or ‘five daughters’. As this verbal element’s meaning is completely unrelated to the goods at issue, it is distinctive to a normal degree.

The contested sign is a word mark consisting of the phrase ‘MAISON LES CINQ FILLES’, written in upper-case letters. The word ‘MAISON’ is a term commonly used in trade to refer to commercial or industrial establishments and firms (information extracted from Larousse Online Dictionary on 19/03/2021 at https://www.larousse.fr/dictionnaires/francais/maison/48725), and therefore lacks distinctiveness for the relevant public who will tend to disregard it in the comparison of the signs. The word ‘LES’ is a definite article in plural form which is ancillary to the words that follow, ‘CINQ FILLES’, and is of lesser distinctive character (23/03/2017, T‑216/16, Le Val (fig.) / VIÑA DEL VAL et al., EU:T:2017:201, §46-47; 28/09/2016, T‑593/15, THE ART OF RAW / * art (fig.) et al., EU:T:2016:572, § 28). The verbal element ‘CINQ FILLES’ having the abovementioned meaning is distinctive to a normal degree for the goods and services in question.

Visually and aurally, the signs coincide in the letters/sounds of the verbal element ‘CINQ FILLES’, which is the only distinctive element in the earlier mark and the most distinctive element in the contested sign. The signs differ in the letters/sounds of the earlier mark’s verbal element ‘Budapest’ which has no counterpart in the contested sign, and in the contested sign’s verbal elements ‘MAISON’ and ‘LES’ which have no counterpart in the earlier mark. The signs also differ in the earlier mark’s slight stylisation which is so minor that it does not constitute a difference that the relevant public will easily perceive and does not, in any case, deflect consumers’ attention from its words. As regards the position of the verbal element ‘CINQ FILLES’ in the contested sign, while it is true that the initial part of word marks may be liable to attract the consumer’s attention more than the following parts, the difference in the first letters of each sign is not enough to counteract the similarity between signs in respect of all the other letters making up the majority of the signs at issue. (22/05/2012, T‑585/10, Penteo, EU:T:2012:251, § 67). In the present case, as the earlier mark’s only distinctive element is entirely reproduced in the contested sign as a readily identifiable, and as its most distinctive component, this must be given due weight in the comparison.

Therefore, even if the signs do not coincide in the earlier mark’s dominant element, they are still visually and aurally similar to a below-average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the only distinctive concept of the earlier mark, ‘CINQ FILLES’, coincides with the contested sign’s most distinctive element and as the concept(s) conveyed by the other verbal elements is/are weak/non-distinctive, the signs are conceptually similar to a high degree.

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 or services in question from the perspective of the relevant public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite its dominant element being non-distinctive, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The contested goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The goods and services found to be identical and similar to varying degrees target the general public whose degree of attention is average. The earlier mark has an average degree of inherent distinctiveness, which affords it a normal scope of protection.

The signs are visually and aurally similar to a below-average degree, and conceptually similar to a high degree.

The differences between the signs are insufficient to outweigh the strong similarity resulting from the coinciding verbal element ‘CINQ FILLES’, which plays an independent and distinctive role in both signs, and is the earlier mark’s sole distinctive verbal element and the contested sign’s most distinctive element.

It is common practice, on the relevant market, for producers to make variations of their trade marks, for example by adding verbal or figurative elements to them, in order to denote new product lines, or to endow their trade mark with a new, fashionable image. Therefore, when encountering the conflicting signs, the relevant public, who only rarely has the chance to directly compare two trade marks and must rely on their imperfect recollection of them, is likely to mentally register the fact that they have the verbal element ‘CINQ FILLES’ in common, and perceive the contested sign as a variation of the earlier mark (or vice versa), for instance to identify a new range of goods and/or services, or – as is more probable in the present case – as a variation intended specifically to indicate the geographical location where the relevant goods are originating from or the relevant services are rendered.

Moreover, the earlier mark’s verbal element ‘CINQ FILLES’ may be perceived by the relevant public as a business name, that is to say, indicating a specific trade origin, because it is written in much smaller letters and placed below the other verbal element in such a way that the latter may be perceived as a sign designating the product line. On account of this particular configuration of the earlier mark, the relevant public may perceive the elements ‘Budapest’ and ‘CINQ FILLES’ independently, as each indicating an aspect of the commercial origin of the goods or services designated by it. Due to the verbal element ‘MAISON’ (which, as explained above, is commonly used in trade to refer to commercial or industrial establishments and firms), the contested sign taken as a whole may be perceived as a mark protecting the eponymous business name. When perceived as such, it is virtually identical to the earlier mark’s, perceived business identifier element ‘CINQ FILLES’.

Consequently, whether the public sees in one mark a variation of the other or rather the same business identifier in both, it may attribute the same (or economically linked) commercial origin to the goods and services that are identical or similar to varying degrees.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking part of the public and therefore the opposition is partly well founded on the basis of European Union trade mark registration No 15 066 855. 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 and services found to be identical or similar to varying degrees to those of the earlier trade mark. For the goods that have been found similar to a low degree, 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). In the present case, the similarity between the signs is sufficient to outweigh the remote degree of similarity between some of the goods, and a likelihood of confusion also exists in relation to them.

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.

The opponent has also based its opposition on European Union trade mark registrations No 15 066 996 and No 15 068 422 for the figurative marks and respectively. These other earlier marks are less similar to the contested mark because they contain, either additional words such as the distinctive element ‘Sisi’ in the case of European Union trade mark registration No 15 066 996, or further figurative elements, such as the depiction of several views of a gift box in the case of European Union trade mark registration No 15 068 422, which are not present in the contested mark. Moreover, they cover the same or a narrower scope of goods and services as far as goods and services in Classes 16 and 39 are concerned, and essential oils and aromatic extracts; toiletries in Class 3 (European Union trade mark registration No 15 068 422), which are dissimilar to the remaining contested goods and services. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected, nor for goods which are dissimilar; no likelihood of confusion exists with respect to those goods and services.

As the opposition is upheld for only some of the goods and services on the ground set out in Article 8(1)(b) EUTMR, the examination of the opposition will continue in relation to the other grounds invoked, namely Article 8(4) EUTMR.

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

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.

The condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a European Union trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights.

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In the present case, the notice of opposition was not accompanied by any evidence of use of the earlier sign used in the course of trade.

On 22/06/2020 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 27/10/2020.

The opponent did not submit any evidence of use in the course of trade of the earlier sign on which the opposition is based.

Given that one of the necessary requirements of Article 8(4) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Andrea VALISA

Christophe DU JARDIN

Martin MITURA

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.