OPPOSITION Nо B 3 124 540

 

EcorNaturaSì S.p.A., Via Palù, 23, 31020 San Vendemiano (TV), Italy (opponent), represented by Con Lor S.p.A., Avda Aguilera, 19 - 1ºB, 03007 Alicante, Spain (professional representative)

 

a g a i n s t

 

A + S Online Shop Anett Gerhardt u. Stefan Gerhardt GbR, Am Wall 34, 06766 Bitterfeld-wolfen, Germany (applicant), represented by Horst Leis, Ginsterweg 23, 42781 Haan, Germany (professional representative).

On 16/08/2021, the Opposition Division takes the following

 

 

DECISION:

 

1.	Opposition No B 3 124 540 is upheld for all the contested goods and services.

2.	European Union trade mark application No 18 209 813 is rejected in its entirety.

3.	The applicant bears the costs, fixed at EUR 620.

REASONS

 

On 19/06/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 209 813 (figurative mark). The opposition is based on, inter alia, Italian trade mark registration No 1 670 315, (figurative mark). The opponent invoked Article 8(1)(b) EUTMR.

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

 

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

 

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 Italian trade mark registration No 1 670 315.

 

a) The goods and services

 

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

Class 3: Preparations for bleaching and other laundry substances; preparations for cleaning, polishing, degreasing and abrading; soaps; perfumery, essential oils, cosmetics, hair lotions; toothpaste; natural perfumery; natural floor waxes; natural polishes for floors; natural oils for perfumes; natural oils for cleaning; natural oils for cosmetic purposes; natural starches for laundry; organic laundry detergents.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats; all the aforesaid products also of organic and biodynamic origin.

Class 30: Coffee, tea, cocoa and substitutes for coffee; rice; tapioca and sago; flour and preparations made from cereals, bread, pastry and confectionery; ice creams; sugar, honey, treacle; yeast, leavening powder; salt; mustard; vinegar, sauces (condiments); spices; ice; all the aforesaid products also of organic and biodynamic origin.

Class 31: Grains and agricultural, horticultural and forestry products, not included in other classes; living animals; fresh fruit and vegetables; seeds, natural plants and flowers; food for animals; malt; all the aforesaid products also of organic and biodynamic origin.

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; all the aforesaid products also of organic and biodynamic origin.

Class 35: Advertising; business management; commercial administration; office functions; services rendered by a franchisor, namely aid in the development and management of a commercial enterprise; publication of publicity texts; import and export agencies (services for third parties also directed to the organic and biodynamic sectors); food retail services; wholesale food services; retail services in relation to beverages; wholesale services in relation to drinks; trade fairs (organization of -) for commercial or advertising purposes.

Class 39: Transport; packaging and storage of goods; travel arrangement; packaging and storage services.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; namely transfer of know-how and licensing, advice on how to install and build shops, interior furnishings and related signs; design and development of hardware and software.

Class 44: Medical services; veterinary services; hygiene and beauty care for humans or animals; agriculture, horticulture and forestry services; agriculture (plantations); breeding (livestock); animal husbandry; cosmetic analysis; health advice and information; agricultural advice; nutrition consultancy; cosmetic consultancy; animal husbandry consultancy.

The contested goods and services, after the limitation of 27/01/2021, are the following:

Class 3: Eyeliner; eyelid shadow; eyebrow pencils; cosmetics; cosmetic preparations for bath and shower; toothpaste; perfumery; ethereal essences; buffing compounds; laundry preparations; grease-removing preparations; soap; namely being produced organically.

Class 29: Jellies, jams, compotes, fruit and vegetable spreads; processed fruits, fungi, vegetables, nuts and pulses; eggs; milk; milk products; edible oils and fats; tomato paste; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically.

Class 30: Puddings; vinegar; cereal preparations coated with sugar and honey; pasta; rice; dumplings; flour; baking powder; yeast; bakery goods; bread; sugar; salt; seasonings; spices; dried herbs; preserved herbs; tomato ketchup; mayonnaise; mustard; sauces; coffee; edible ices; ice for refreshment; tea; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically.

Class 31: Fresh fruits, nuts, vegetables and herbs; garden herbs, fresh; raw and unprocessed agricultural products; bulbs (plant -); natural plants; flowers; seeds for planting.

Class 32: Soft drinks; fruit drinks; juices; mineral water [beverages]; aerated water; aerated juices; namely being produced organically.

Class 35: Retail services relating to food; retail services connected with the sale of subscription boxes containing food; retail services via global computer networks related to foodstuffs; online retail services relating to cosmetics; mail order retail services related to non-alcoholic beverages; advertising services for the promotion of beverages; distribution of advertising material; advertising services relating to perfumery; advertising services relating to cosmetics; advertising services relating to the sale of goods; advertising services to promote public awareness of the benefits of shopping locally; providing and rental of advertising space on the internet; namely for the promotion of local, ecological cultivation and the sale thereof.

Class 39: Arranging and conducting of mail order delivery services; delivery of hampers containing food and drink; parcel delivery; delivery of goods; delivery of goods by messenger; storage and delivery of goods; delivery of groceries; delivery of bottled water to homes and offices; delivery of food by restaurants; delivery of food and drink prepared for consumption; namely for the promotion of local, ecological cultivation and the sale thereof.

Class 42: Hosting web sites.

Class 44: Providing nutritional information about food for medical weight loss purposes; providing nutritional information about drinks for medical weight loss purposes; consultancy services relating to cosmetics; beauty care; namely for the promotion of local, ecological cultivation and the sale thereof.

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 ‘in particular’, used in the applicant’s list of goods and services, 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). The wording of ‘namely being produced organically’ and ‘namely for the promotion of local, ecological cultivation and the sale thereof’ does not introduce any limitation, but is merely a clarification of the goods and services.

However, 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.

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

 

Contested goods in Class 3

The contested toothpaste; perfumery; soap; namely being produced organically are included in the broad category of the opponent’s toothpaste; perfumery; soap, respectively. Therefore, they are identical.

The contested eyeliner; eyelid shadow; eyebrow pencils; cosmetics; cosmetic preparations for bath and shower; namely being produced organically are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested buffing compounds; namely being produced organically are included in the broad category of the opponent’s preparations for cleaning, polishing. Therefore, they are identical.

The contested laundry preparations, grease-removing preparations; namely being produced organically are included in, or overlap with, the opponent’s soaps. Therefore, they are identical.

The contested ethereal essences, namely being produced organically is included in the opponent’s essential oils. Therefore, they are identical.

Contested goods in Class 29

The contested jellies, jams, compotes, eggs; milk; milk products; edible oils and fats; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically are included in the broad category of the opponent’s jellies, jams, compotes, eggs; milk and milk products; edible oils and fats; all the aforesaid products also of organic and biodynamic origin. Therefore, they are identical.

The contested processed fruits, fungi, vegetables, nuts and pulses; tomato paste; fruit and vegetable spreads; none of the aforesaid goods including salty snack goods in particular potato crisps; namely being produced organically are included in the broad category of, or overlap with, the opponent’s preserved, frozen, dried and cooked fruits and vegetables; all the aforesaid products also of organic and biodynamic origin. Therefore, they are identical.

Contested goods in Class 30

The contested vinegar; rice; flour; yeast; bread; sugar; salt; spices; mustard; sauces; coffee; tea; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically are included in the broad category of the opponent’s vinegar; rice; yeast; bread; sugar; salt; spices; mustard; sauces; coffee; tea; all the aforesaid products also of organic and biodynamic origin; respectively. Therefore, they are identical.

The contested cereal preparations coated with sugar and honey; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically overlap with the category of the opponent’s pastry and confectionery; all the aforesaid products also of organic and biodynamic origin. Therefore, they are identical.

The contested bakery goods; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically include, as a broader category the opponent’s bread; all the aforesaid products also of organic and biodynamic origin. 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 seasonings; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically include, as a broader category the opponent’s spices; all the aforesaid products also of organic and biodynamic origin. 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 tomato ketchup; mayonnaise; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically is included in the broad category of the opponent’s sauces (condiments); all the aforesaid products also of organic and biodynamic origin. Therefore, they are identical.

The contested edible ices; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically are included in the broad category of, or overlap with, the opponent’s ice creams; all the aforesaid products also of organic and biodynamic origin. Therefore, they are identical.

The contested ice for refreshment; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically is included in the broad category of the opponent’s ice; all the aforesaid products also of organic and biodynamic origin. Therefore, they are identical.

Given that ‘pudding’ is classified in a different Class, it cannot be considered as including ‘milk pudding’ in Class 29. However, puddings in Class 30 do include goods such as “dessert puddings”, which would, for example, include mainly chocolate-based dessert puddings which would be found in the same sections as dairy puddings, target the same consumer, etc. as mentioned in the pair. Therefore, the contested puddings; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically are highly similar to the opponent´s milk products; all the aforesaid products also of organic and biodynamic origin; in Class 29,

The contested baking powder; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically is at least highly similar to the opponent´s yeast, leavening powder; all the aforesaid products also of organic and biodynamic origin, because these goods at least coincide in nature distribution channels; they are also in competition.

Dried herbs; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically include herbs that can be used for brewing infusions. Therefore, dried herbs and tea; all the aforesaid products also of organic and biodynamic origin, have the same method of use and can be in competition. They may have the same producers, target the same relevant public and may be distributed through the same channels. Therefore, they are highly similar.

The contested preserved herbs; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically are similar to a high degree to the opponent’s tea; all the aforesaid products also of organic and biodynamic origin; as they usually coincide in producer, relevant public, distribution channels and method of use. Furthermore, they are in competition.

The contested pasta; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically is similar to the opponent´s bakery goods; all the aforesaid products also of organic and biodynamic origin, because these goods coincide in nature, distribution channels, relevant public and producer-provider.

The contested dumplings consist of ready-made dishes containing pasta. Therefore, the contested goods dumplings; none of the aforesaid goods including salty snack goods, in particular potato crisps; namely being produced organically are similar to the opponent’s pastry; all the aforesaid products also of organic and biodynamic origin. These goods coincide in the same distribution channels, producers and relevant public. Furthermore, they are in competition.

Contested goods in Class 31

Fresh fruits; natural plants; flowers are identically contained in both lists of goods.

The contested nuts are included in the broad category of the opponent’s agricultural products. Therefore, they are identical.

The contested vegetables include, as a broader category the opponent’s fresh vegetables. 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 herbs; garden herbs, fresh are included in the broad category of the opponent’s natural plants. Therefore, they are identical.

The contested raw and unprocessed agricultural products include, as a broader category the opponent’s flowers. 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 bulbs (plant -); seeds for planting are included in the broad category of the opponent’s agricultural products not included in other classes. Therefore, they are identical.

Contested goods in Class 32

The contested fruit drinks; mineral water [beverages]; aerated water; namely being produced organically are included in the broad category of the opponent’s fruit drinks; mineral and aerated waters and other non-alcoholic drinks, respectively. Therefore, they are identical.

The contested soft drinks; aerated juices, namely being produced organically are included in the broad category of the opponent’s other non-alcoholic drinks. Therefore, they are identical.

The contested juices, namely being produced organically include, as a broader category, the opponent’s fruit juices. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

The contested retail services relating to food; retail services connected with the sale of subscription boxes containing food; retail services via global computer networks related to foodstuffs, namely for the promotion of local, ecological cultivation and the sale thereof are included in, or overlap with, the broad category of the opponent’s food retail services. Therefore, they are identical.

The contested mail order retail services related to non-alcoholic beverages, namely for the promotion of local, ecological cultivation and the sale thereof are included in the broad category of the opponent’s retail services in relation to beverages. Therefore, they are identical.

Advertising services consist of providing 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.

Therefore, the contested advertising services for the promotion of beverages; distribution of advertising material; advertising services relating to perfumery; advertising services relating to cosmetics; advertising services relating to the sale of goods; advertising services to promote public awareness of the benefits of shopping locally; providing and rental of advertising space on the internet, namely for the promotion of local, ecological cultivation and the sale thereof are included in the broad category of, or overlap with, and are therefore identical, or at least similar to, the opponent´s advertising. They have at least the same purpose, providers and relevant public.

Retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested online retail services relating to cosmetics, namely for the promotion of local, ecological cultivation and the sale thereof are similar to the opponent’s cosmetics in Class 3.

Contested services in Class 39

The contested arranging and conducting of mail order delivery services; delivery of hampers containing food and drink; parcel delivery; delivery of goods; delivery of goods by messenger; storage and delivery of goods; delivery of groceries; delivery of bottled water to homes and offices; delivery of food by restaurants; delivery of food and drink prepared for consumption, namely for the promotion of local, ecological cultivation and the sale thereof are included in the broad category of the opponent’s transport; packaging and storage of goods. Therefore, they are identical.

Contested services in Class 42

The contested hosting web sites are similar to the opponent’s design and development of computer hardware and software to the extent that they all consist of computer programming. They can be provided by the same producers, target the same end users and coincide in their distribution channels.

Contested services in Class 44

The contested providing nutritional information about food for medical weight loss purposes; providing nutritional information about drinks for medical weight loss purposes, namely for the promotion of local, ecological cultivation and the sale thereof are included in the broad category of the opponent’s health advice and information. Therefore, they are identical.

The contested beauty care, namely for the promotion of local, ecological cultivation and the sale thereof are included in the broad category of the opponent’s hygiene and beauty care for humans. Therefore, they are identical.

The contested consultancy services relating to cosmetics, namely for the promotion of local, ecological cultivation and the sale thereof are included in the broad category of the opponent’s cosmetic consultancy. Therefore, they are identical.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar (to varying degrees) are directed at the public at large and/or business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods or services, the frequency of purchase and their price.

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. The same can be said to apply as regards services in Class 44 that affect consumers’ health, for which the attention may often be higher.

c) The signs

 

Earlier trade mark	Contested sign

The relevant territory is Italy.

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 earlier mark is composed of the verbal elements ‘naturasi’. The depiction consists of the word ‘natura’ written in white lower case letters, followed by the letters ‘si’ depicted in grey, lower case letters. Above this verbal element a figurative component is placed consisting of two irregular ovals, partly overlapping. These elements are placed on the background of a horizontal rectangle of dark grey color.

The element ‘natura’ exists as such and will be understood by the relevant public as ‘the total system of living beings, animals and plants, and inanimate things that present an order, realize types, and are formed according to laws’ (information extracted from Treccani Italian Dictionary on 10/08/2021 at https://www.treccani.it/enciclopedia/natura) as an indication of the natural origin of the goods (24/03/2011, T-54/99, LINEA NATURA, EU:T:2002:20, § 55; 29/09/2011, T-107/10, NATURAVIVA, EU:T:2011:551, § 35). As regards the element ‘si’, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58), it might be understood by the relevant public, as the word used for ‘yes’. Taken in its entirety, however, the earlier mark as a whole is an invented word that may be perceived for the relevant public as a conceptual unit with the natura´s meaning. Therefore, taken into consideration that it may refer to the natural origin of the goods as well as of the goods subject of the services at issue, this element is consequently weak.

As regards the figurative component above the verbal element of the earlier mark, it lacks any meaning in relation to the goods and services at hand, and thus it is per se distinctive. The rectangular background merely serves to highlight the information contained therein, and consumers do not usually attribute any trade mark significance to them (15/12/2009, T-476/08, Best Buy, EU:T:2009:508, § 27). However, it cannot be obliterated that 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).

The contested sign is composed of the verbal element ‘naturas(s)’. The depiction consists of the word ‘natur’ written in black lower-case letters followed by the letters and the parenthesis ‘as(s)’ depicted in grey lower-case letters. The verbal element ‘naturas(s)’ is an invented word that will be understood as a whole as alluding to the same meaning cited above related to ‘natura’. Therefore, this element is consequently weak. Above this element a figurative element appears which is composed of two stylised hands holding a wheat leaf. Since it has a direct link with the natural characteristics of the goods and services at issue, it has a weak distinctive character.

Considering that the goods and services are related to foodstuff, healthcare and cosmetics, the figurative component of the contested sign is likely to be perceived as being weak by the public under analysis or at the very least as less distinctive than the words themselves (which it merely illustrates).

The marks in dispute have no element that could be considered clearly more dominant than other elements.

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.

Visually, the signs coincide in the letters ‘naturas***’ which constitute seven out of the eight letters of the signs, present identically at the beginning of both signs, which is weak as explained above. However, they differ in the ending letter ‘i’ versus ‘s’ respectively, and the parenthesis of the contested sign. In addition, they differ in the different graphic depictions of the signs with less impact in consumers, and mostly weak or less distinctive.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘naturas***’, present identically in both signs, which is weak, as seen above. The pronunciation only differs in the sound of the ending letters ‘i’ versus ‘s’ respectively, which has less impact on consumers for their position at the end of the signs.

Therefore, the signs are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Apart from the figurative element consisting in two stylised hands holding a wheat leaf of the contested sign, which has a weak or less distinctive character, both signs will be perceived as referring to the weak element ‘natura’.

Therefore, the signs are conceptually similar to an average 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. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as low for all of the goods and services in question.

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 and services compared are partly identical and partly similar in varying degrees.

The degree of distinctiveness of the earlier trade mark is low. The degree of attention of the relevant public will vary from average to high. Although the distinctive character of the earlier mark must be taken into account in assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Consequently, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods and services covered (16/03/2005, T-112/03, Flexi Air, EU:T:2005:102, § 61; 13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70).

The marks are visually similar to an average degree, aurally similar to a high degree and conceptually similar to an average degree on account of the coinciding letters ‘natura’ included at the beginning of both signs. The differences in the figurative elements of the signs, which have less impact on the consumer, and in the different endings ‘i’ versus ‘(s)’ respectively, are not sufficient to counteract the similarities between the signs. On the whole, the overall impressions created by the marks are considered to be similar.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or 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, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s Italian trade mark registration No 1 670 315. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

 

COSTS

 

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

 

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

 

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

 

 

 

The Opposition Division

 

 

Félix ORTUÑO LÓPEZ

Martina GALLE

Edith Elisabeth VAN DEN EEDE

 

 

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.