OPPOSITION No B 2 158 155

Woolworth GmbH, Formerstr. 6, 59425 Unna, Germany (opponent), represented by Silke Ahlborn-Bauer, Sandweg 9, 60316 Frankfurt, Germany (professional representative)

a g a i n s t

FMTM Distribution Ltd, 3A and 3B Isle of Man, Freeport, IM9 2AP Ballasalla, Isle of Man (applicant), represented by Ingenias, Av. Diagonal, 421, 2º, 08008 Barcelona, Spain (professional representative).

On 29/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 158 155 is partially upheld, namely for the following contested goods:

Class 14: Goods made of precious metals and their alloys or coated with these materials not included in other classes; Horological instruments, namely watches, wrist-watches; Chronometric instruments, namely chronographs, chronometers, apparatus for timing sports events (stop watches); Component parts and accessories for timepieces included in this class namely straps for wristwatches, watch buckles, Watch cases (fitted), components; Caskets and cases for timepieces; Boxes and presentation cases for the display of timepieces; Cameos; Jewellery; Bijouterie items; Jewellery accessories; Cases in precious metal; Tie pins; Cuff links; Cases of leather for watches; Cases for transportation of watches.

2. European Union trade mark application No 11 308 608 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 11 308 608 for the word mark ‘INFINITY’, namely against all the goods in Class 14 and some of the goods in Class 18. The opposition is based on German trade mark registrations No 30 407 108 and No 302 010 020 825, both for the word mark ‘Infinity’. The opponent invoked Article 8(1)(a) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

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

The applicant requested that the opponent submit proof of use of one of the trade marks on which the opposition is based, namely of German trade mark registration No 30 407 108 for the word mark ‘INFINITY’.

The request was submitted in due time and is admissible as this earlier trade mark was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 19/12/2012. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 19/12/2007 to 18/12/2012 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 14: Earrings, broches (jewellery), pendants (jewellery).

Class 18: Handbags, shoulder bags, suitcases, travelling bags, small suitcases, trucksacs, small leather goods, i.e. key cases, travelling sets, purses, wallets.

The applicant argued in its observations of 09/11/2018 that the translation of the opponent’s specification in Class 18 is not correct as it should read ‘namely’ and not ‘e.g.’ or ‘i.g.’ since such terms would only introduce non-exhaustive lists of examples. According to the applicant, the earlier German mark’s protection would be limited only to key cases, traveling sets, purses, wallets within the broader category of ‘small leather goods’.

The opponent agreed that the correct translation should be with the term ‘namely’ but considered this irrelevant for the outcome as the terms in question, especially bags and handbags, would remain on the list. Considering the above, the Opposition Division will proceed on the basis of the correct translation of the respective goods in Class 18, as follows:

Class 18: Handbags, shoulder bags, suitcases, travelling bags, small suitcases, trucksacs, small leather goods, namely key cases, travelling sets, purses, wallets.

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 25/04/2016, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 07/07/2016 to submit evidence of use of the earlier trade mark. This time limit was extended further to suspension and extension requests until 02/09/2018 (Sunday), so that, according to Article 69(1) EUTMDR, the time limit was extended until the first day thereafter on which the Office is open for receipt of documents, namely to 03/09/2018. On 03/09/2018, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

 Attachment 1: Extracts dated 02/09/2018 from the database of the German Patent and Patent Office with respect to both earlier marks.

 Attachments 2.1. – 2.2.: Certificate dated 15/08/2018 issued by the opponent’s independent auditor who has been assigned to audit the lists and calculations summarized by the opponent regarding sales and turnover affected by the opponent in Germany in connection with the brand ‘INFINITY’ in the product groups ‘watches’, ‘jewelry’ and ‘bags and small leather goods’ for the period from 01/07/2010 through 20/12/2012 and to issue a certificate as to such lists and calculations’ correctness. It is explained that the trade mark ‘INFINITY’ was acquired by the opponent in 2010. Furthermore, it is stated that the opponent is responsible for a proper calculation of the quantities purchased and distributed under the earlier mark, the sales revenues generated in connection therewith as well as the information provided to the auditors (the calculations being based in evaluations from the opponent’s merchandise and cash management systems). It is mentioned that the products recorded in the product groups constitute merchandise purchased by the opponent partially from the EU and partially from Far East. With regard to the imports from Far East the opponent would assume an almost exclusive use of the trade mark ‘Infinity’ whereas with regard to imports from the EU other trade marks were used as well; the purchased goods were exclusively distributed in branch offices within the territory of Germany. The certificate gives an opinion as to the calculations provided by the opponent and explains the particular audit activities performed (including inspection of the product information stored by the opponent and inspection, by way of random samples, of the information stored against the summary of orders, etc.). The indicated audit evidence together with the annual financial statements and the management reports for the fiscal years 2010/2011, 2011/2012 and 2012/2013 were considered sufficient and appropriate basis for the audit opinion. According to the certificate the summarized calculations were free from any material misstatements and the audit did not reveal any indications according to which any orders connected with sales of goods not distributed under the earlier mark were included when compiling the information. It is expressly pointed out that at the date of the audit the company’s inventory no longer contained any articles from the identified orders and, thus, an inspection had not been possible. The opponent submitted also the General Engagement Terms (German Public Auditors and Public Audit Firms) as of 01/01/2017.

 Attachments 2.3. – 2.8.: Tables with the abovementioned figures (summarized and signed by the opponent) representing overviews of all purchase orders imported from Far East of product groups watches, jewelry, bags and small leather goods summarized per calendar year 2010 – 2012 as well as overviews of all purchase orders imported from Far East of product groups watches, jewelry, bags and small leather goods with evidence for an actual use of the trade mark ‘Infinity’ summarized per calendar year 2010 – 2012.

 Attachment 3: Extracts of the opponent’s merchandise management system inspected by the auditors by way of random samples and consisting of:

o Attachments 3.1. – 3.5: five orders dated in the period 2010 – 2011 placed by the opponent with suppliers with respect to watches, accompanied by photos of watches bearing the earlier mark and carton printing sheets for transportation;

o Attachments 3.6. – 3.11: six orders dated in the period 2011 – 2012 placed by the opponent with suppliers with respect to bracelets, necklaces with pendant with key, rings, bangles with rhine stone, accompanied by photos of products (some bearing the earlier mark) and carton printing sheets for transportation (on some of the orders it is indicated that the ‘Infinity’ logo should be put on the header card of the products);

o Attachments 3.12. – 3.14: three orders dated in 2012 placed by the opponent with suppliers with respect to handbags, accompanied by photos of products and carton printing sheets for transportation (on some of the orders it is indicated that the goods should have a hangtag ‘Infinity Accessoires’).

On all orders there is an indication of a ‘selling price Germany’.

 Attachment 4: Extract from the Summarized (Group) Management Report for the short fiscal year from May 18, 2010 through April 30, 2011 with information with respect to the opponent’s history and with a reference to the ‘WOLLWORTH’ trade mark. The relevant goods or the earlier mark are not mentioned.

 Attachment 5: Warning letter dated 06/01/2011 and attachments thereto, addressed to the opponent by a third party claiming infringement on part of the opponent due to selling ‘Infinity’ – watches.

 Attachment 6: Index of the evidence.

The applicant argues that the opponent did not submit translations of some of the evidence of use and that therefore this evidence should not be taken into consideration. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Taking into account the fact that the opponent provided explanations and partial translations of the relevant parts of the documents that have not been fully translated and are considered relevant for the present proceedings as well as the self-explanatory character of the pictures, the Opposition Division considers that there is no need to request a translation.

As an introductory remark, it is to be emphasised that, in accordance with Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods. These requirements for proof of use are cumulative (judgment of 05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43).

The Opposition Division finds it necessary to clarify upfront that the earlier mark subject to proof of use does not cover watches in Class 14. Consequently, the evidence submitted by the opponent to prove use of the earlier mark with respect to watches (in particular, Attachments 2.3., 2.6., 3.1 – 3.5 and Attachment 5) is not relevant for the assessment with respect to the goods invoked as basis of the opposition. Likewise, the evidence with regard to bracelets and bangles has no bearing to the outcome of the proof of use analysis since the opposition is not based on such goods.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, namely the independent auditor’s certificate and the documents on which the certificate was based, do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The abovementioned items of evidence all have in common that they originate from the opponent itself or are based on information and documents compiled and provided by the opponent. While such types of evidence are admissible means of proof of use, their probative value is rather limited because statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

In the present case the figures and turnover mentioned in the Attachments on which the auditor’s certificate is based are not corroborated by the additional pieces of evidence submitted by the opponent.

The tables with financial information in Attachment 2 have been compiled by the opponent and are not backed by any objective evidence that may support the indicated figures such as official financial documents (accounts or tax returns), invoices, etc. The mere reference to the annual financial statements and to the management reports made by the auditors in their certificate cannot substitute the actual presentation of evidence given the lack of concrete information as to the content of the documents referred to.

Furthermore, neither the undated photos of goods designated by the earlier mark nor the indication of a selling price in Germany on the orders are proof that the respective goods have been effectively commercialised within the relevant market or the extent of such commercialisation. They neither contain any reference regarding commercial transactions nor indicate when or to what extent the earlier mark has come to the attention of the public.

Indeed, the opponent has failed to provide any further information and evidence which would allow the Opposition Division to make a realistic assessment of the market presence of the earlier mark.

Finally, as regards the purchase orders (Attachment 3), account is to be taken of the fact that the said orders were placed by the opponent to its suppliers and concern goods to be delivered to the opponent in Germany. These items of evidence only show the placing of orders (not even the sale and delivery of the ordered goods to the opponent) but not the marketing, by the opponent or by third parties, of these goods (15/12/2016, T‑391/15, ALDIANO / ALDI, EU:T:2016:741, § 46). These documents do not show if, when and to what extent goods bearing the earlier trade mark were actually delivered to the opponent and cannot constitute conclusive evidence that the relevant goods bearing the earlier mark were distributed by the opponent within the relevant territory.

However, genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22). The opponent, however, merely asserts but does not prove if, when and how goods under the earlier mark were actually offered to or reached the consumers in Germany. It is not sufficient for genuine use of the mark to appear probable or credible; actual proof of that use must be given. In the present case, the opponent has failed to present sufficient evidence that would allow the Opposition Division to ascertain the extent of use of the trade mark in the relevant territory.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the earlier mark.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The Opposition Division takes note of the opponent’s explanation that proof of use would only be possible starting with 01/07/2010 as by this time the opponent started its business operations using the earlier mark. However, account is to be taken of the fact that if the evidence of use was sufficient to prove all the relevant indications only with respect to the last one and a half years from the relevant period this would have been sufficient for establishing genuine use since the use need not have been made throughout the period of five years, but rather within the five years. The provisions on the use requirement do not require continuous use (judgment of 16/12/2008, T-86/07, Deitech, EU:T:2008:577, § 52).

The Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier German trade mark registration No 30 407 108 was genuinely used in the relevant territory during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 47(2) and (3) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) as far as the aforementioned earlier mark is concerned.

The examination of the present opposition will continue on the basis of the other earlier mark of the opponent for which no proof of use was requested and which was still not subject to the proof of use obligation.

DOUBLE IDENTITY AND LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(a) and (b) EUTMR

Pursuant to Article 8(1)(a) EUTMR, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for will not be registered if it is identical to the earlier trade mark and the goods or services for which registration is applied for are identical to the goods or services for which the earlier trade mark is protected.

The opponent invoked Article 8(1)(a) EUTMR which covers situations where there is a so-called double identity, namely identity of the signs and of the goods and services. Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Opposition Division will still examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between signs and goods/services and likelihood of confusion.

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 14: Watches, especially wrist watches.

The contested goods are the following:

Class 14: Precious metals and their alloys and goods made of or coated with these materials not included in other classes; Horological instruments, namely watches, wrist-watches; Chronometric instruments, namely chronographs, chronometers, apparatus for timing sports events (stop watches); Component parts and accessories for timepieces included in this class namely straps for wristwatches, watch buckles, watch crowns, Watch cases (fitted), clock movements for clocks and watches, components, dials, hands, Watch glasses; Caskets and cases for timepieces; Boxes and presentation cases for the display of timepieces; Precious stones and semi-precious stones; Diamonds; Cameos; Jewellery; Bijouterie items; Jewellery accessories; Caskets and cases for Jewellery, Boxes and presentation cases for the display of Jewellery and Bijouterie items Cases in precious metal; Jewellery boxes in precious metal; Tie pins; Cuff links; Key fobs in precious metal; Cases of leather for watches, jewellery, cufflinks, tie-pins, key fobs; Cases for transportation of watches and jewellery.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes including leather straps, pocket wallets, purses; Leather cases for belts; Briefcases; Attaché cases; Card cases (notecases); Key cases; Suitcases; Vanity cases (not fitted); Make-up cases; Travelling sets (leatherware); Bags made of leather including handbags, shopping bags, beach bags, sports bags; Luggage; Trunks; Travelling trunks and travelling bags; Garment bags for travel; Luggage tags in leather or imitation of leather; Bags, pouches and envelopes, of leather, for packaging; Leather-board boxes; Umbrellas and parasols; Card cases.

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

The terms ‘especially’ and ‘including’, used in the applicant’s and in the opponent’s lists of goods, indicate that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words and contrary to the applicant’s view, they introduce non-exhaustive lists of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s list of goods 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 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 14

The contested horological instruments, namely watches, wrist-watches are identical to the opponent’s goods since watches are identically covered by both lists and wrist-watches are included in the broad category of the opponent’s watches, especially wrist watches.

The contested chronometric instruments, namely chronographs, chronometers, apparatus for timing sports events (stop watches) overlap with and are identical to the opponent’s watches, especially wrist watches.

The contested component parts and accessories for timepieces included in this class namely straps for wristwatches, watch buckles, components are commonly produced by the same manufacturers as the opponent’s goods, may target the same consumers and are complementary. These goods are considered to be similar.

On the other hand, the contested component parts and accessories for timepieces included in this class namely watch crowns, clock movements for clocks and watches, dials, hands, watch glasses are parts for clock- and watchmaking and are intended for professionals in the field of clock- and watchmaking and repair rather than for direct purchase by the final consumer. These goods are dissimilar to the opponent’s goods as they have a different nature and purpose; they are aimed at different end users and do not usually share the same distribution channels.

The contested component parts and accessories for timepieces included in this class namely watch cases (fitted); caskets and cases for timepieces; boxes and presentation cases for the display of timepieces; cases in precious metal; cases of leather for watches and cases for transportation of watches and the opponent’s watches, especially wrist watches commonly coincide in producers, end users and distribution channels. Therefore, these conflicting goods are found to be similar.

The contested cameos; jewellery; bijouterie items; jewellery accessories; tie pins and cuff links are at least similar to the opponent’s watches, especially wrist watches because the goods have the same or very similar nature and it is not unusual that they target the same users via the same distribution channels. Furthermore, the goods under comparison often have the same commercial origin.

The applicant´s term goods made of or coated with these materials [precious metals and their alloys] not included in other classes does not provide a clear indication of what goods are covered (see the Office´s Classification Guidelines). As set out in Article 33(2) EUTMR, it is the EUTM applicant’s responsibility to comply with the requisite standards of clarity and precision. An ambiguous, vague and broad specification cannot be interpreted in a way favourable to the EUTM applicant (09/07/2015, R 863/2011-G, MALTA CROSS + INTERNATIONAL + FOUNDATION (fig.) / Malteserkreuz (fig.), § 55; 11/11/2009, T-162/08, Green by missako, EU:T:2009:432, § 31;06/02/2014, C-301/13 P, Club Gourmet, EU:C:2014:235, § 66).

Since the applicant has not clearly specified its goods, the Opposition Division considers that, without an express limitation, these goods and the opponent´s watches, especially wrist watches have some points of contact since their manufacturers, distribution channels and targeted consumers may be the same. It follows that these goods are considered to be similar to at least a low degree.

The remaining contested goods in this class, namely precious metals and their alloys; precious stones and semi-precious stones; diamonds; caskets and cases for jewellery, boxes and presentation cases for the display of jewellery and bijouterie items; jewellery boxes in precious metal; key fobs in precious metal; cases of leather for jewellery, cufflinks, tie-pins, key fobs and cases for transportation of jewellery are dissimilar to the opponent’s goods. Although some of these contested goods may be used for the manufacture of watches this is not sufficient in itself to find that these goods are similar. The conflicting goods differ in nature, purpose, method of use, distribution channels and points of sale. They are neither in competition with nor complementary to each other and do not usually come from the same undertakings.

Contested goods in Class 18

All the contested goods in this class, being mainly leather and imitations of leather, and goods made of these materials, umbrellas and parasols and different types of cases and bags, are dissimilar to the opponent’s watches, especially wrist watches. These goods differ in nature, purpose and method of use. They are neither complementary nor in competition with each other. Furthermore, they do not originate from the same undertakings, are offered through different distribution channels and target a different relevant public.

b) The signs

Infinity	INFINITY
Earlier trade mark	Contested sign

The conflicting signs are both word marks and in the case of word marks it is the words as such that is protected and not the written form; it is irrelevant whether word marks are written in lower or upper-case letters.

The signs are, therefore, identical.

In this respect, with regard to the applicant´s argument that the mark applied for would be always accompanied by a further mark of the applicant and, therefore, the public would be able to differentiate between the signs, it is to be recalled that, when assessing identity or similarity, the signs have to be compared in the form in which they are protected, that is, in the form in which they are registered/applied for. The actual or possible use of the marks in another form is irrelevant when comparing signs (judgment of 09/04/2014, T-623/11, Milanówek cream fudge, EU:T:2014:199, § 38).

c) Global assessment, other arguments and conclusion

The signs were found to be identical and some of the contested goods, as established above in section a) of this decision, are identical. Therefore, the opposition must be upheld according to Article 8(1)(a) EUTMR for these goods. Furthermore, some contested goods, as established above in section a) of this decision, were found to be similar to those covered by the earlier trade mark. Given the identity of the signs, there is a likelihood of confusion within the meaning of Article 8(1)(b) EUTMR and the opposition is upheld also insofar as it is directed against these goods. Considering the findings as to the identity of the conflicting signs, a likelihood of confusion cannot be dispelled even if the goods are similar to a low degree only and even taking on board the applicant’s argument that the relevant public would be specialised and highly attentive.

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.

The above findings cannot be called into question by the applicant’s arguments that it owns an EUTM that contains the word INFINITY which was applied for in 2008 and that since 2007 the opponent’s and the applicant’s products INFINITY would peacefully coexist, without likelihood of confusion.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07 P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the opponent’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

In the present case, in the absence of relevant evidence with regard to the above circumstances, the applicant’s argument must be set aside.

The applicant further argues that its EUTM enjoys recognition on the relevant market. However, the right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Therefore, also this argument of the applicant must be rejected as unfounded.

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

Claudia MARTINI

Denitza STOYANOVA-VALCHANOVA

Renata COTTRELL

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.