OPPOSITION No B 2 358 565

Aeroports de Paris, 291, Boulevard Raspail, 75014 Paris, France (opponent), represented by Cabinet Germain & Maureau, 31-33 Rue de la Baume, 75008 Paris, France (professional representative)

a g a i n s t

Bluenergy Assistance S.r.l., Via Gallerio 6, 33033 Codroipo (UD), Italy (applicant), represented by GLP S.r.l., Viale Europa Unita 171, 33100 Udine, Italy (professional representative).

On 20/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 358 565 is partially upheld, namely for the following contested goods and services:

Class 9: Computer software; antennas; masts for wireless aerials; transistors (electronic); transmitters for telecommunications; monitoring apparatus, electric; memory cards or smart cards; all the aforementioned goods not related to the safety of goods and individuals at the airports.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer software consultancy; updating of software; maintenance of software; installation of computer software; leasing of computer software; consultancy in the design and development of computer hardware; monitoring of computer systems by remote access; research and development for others; rental of web servers; all the aforementioned services not related to the safety of goods and individuals at the airports.

2. European Union trade mark application No 12 494 704 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:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 494 704, namely against all the goods and services in Classes 9 and 42. The opposition is based on European Union trade mark registration No 4 030 151 and French trade mark registration No 43 281 780. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 76(1) EUTMR, in proceedings before it the Office shall examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office shall be restricted in this examination to the facts, evidence and arguments provided 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 Rule 19(1) EUTMIR, the Office shall 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 Rule 19(2) EUTMIR, within the period referred to above, the opposing party shall 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 particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier French trade mark No 43 281 780 on which the opposition inter alia is based.

On 04/06/2014 the opponent was given until 09/10/2014 to submit the abovementioned material. Subsequently, at the request of both parties, the cooling-off period was extended and consequently, this time limit was extended, first until 09/08/2016 and then – further to a restriction of the goods and services by the applicant – until 21/08/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier national trade mark.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition shall be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark. The Opposition Division will now examine the opposition in relation to the opponent’s earlier European trade mark registration No 4 030 151.

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.

1. The goods and services

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

Class 9: Computer software relating to the safety of goods and individuals, operated on airport platforms; computer programs (downloadable software) relating to the safety of goods and individuals, operated on airport platforms.

Class 42: Design, development, installation, updating, maintenance and rental of computer software relating to the safety of goods and individuals, offered on airport platforms; technical project studies relating to the safety of goods and individuals, offered on airport platforms.

Class 45: Security services for the protection of goods and individuals using a biometric system, offered on airport platforms; consultancy regarding the safety of goods and individuals in connection with biometrics, offered on airport platforms.

After the limitations filed by the applicant on 06/06/2016 and 15/06/2016, the contested goods and services are the following:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; control panels (electricity); switchboards; distribution boards (electricity); electric installations for the remote control of industrial operations; boiler control instruments; distribution boxes for electricity; heat regulating apparatus; electric couplings; couplers (computing); electric batteries and accessories therefor; antennas; memory cards or smart cards; monitoring apparatus, electric; temperature controlling apparatus; masts for wireless aerials; transistors (electronic); transmitters for telecommunications; computer software; all the aforementioned goods not related to the safety of goods and individuals at the airports.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; consultancy in the field of energy-saving; computer software consultancy; updating of software; maintenance of software; installation of computer software; leasing of computer software; consultancy in the design and development of computer hardware; monitoring of computer systems by remote access; research and development for others; rental of web servers; laboratory (scientific-) services; all the aforementioned services not related to the safety of goods and individuals at the airports.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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.

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

The opponent’s goods in Class 9 all relate to specific software relating to the safety of goods and individuals, operated on airport platforms. The opponent’s services in Classes 42 and 45 all relate to specific services relating to the safety of goods and individuals, offered on airport platforms. The expression ‘airport platforms’ in the original wording in the first language, that is French, of the opponent’s registration in Classes 9, 42 and 45 reads as ‘exploités sur des plate-formes aéroportuaires’. According to Article 120(3) EUTMR, in case of doubt, it is the text in the first language, if it is one of the five languages of the Office (i.e. in this case French), that has to be taken into account. Therefore, the Opposition Division considers that the above specification of the opponent’s list of goods and services in Classes 9, 42 and 45 should be interpreted as related to goods and services operated and offered on ‘hub airports’, or ‘airline hubs’ (see online encyclopedia Wikipedia consulted on 03/03/2017 at https://fr.wikipedia.org/wiki/Plate-forme_de_correspondance_a%C3%A9roportuaire and the corresponding version in English https://en.wikipedia.org/wiki/Airline_hub; as well as French Dictionary Larousse on line at http://www.larousse.fr/dictionnaires/francais/hub/10909970): these are ‘airports that serve as a central connecting point through which many flights of a particular airline are routed’ (definition extracted on 03/03/2017 from Collins English Dictionary online at https://www.collinsdictionary.com/dictionary/english/hub).

Contested goods in Class 9

As detailed above, the opponent’s earlier mark covers software and services relating to software all relating to the safety of goods and individuals, operated on hub airports, in addition to technical project studies, consultancy and security services relating to the safety of goods and individuals, operated on hub airports.

The contested computer software; all the aforementioned goods not related to the safety of goods and individuals at the airports, despite the restriction, are deemed to be similar to the opponent’s goods. Indeed, where the applicant restricts the list of goods/services in a way that excludes identity, it is not excluded that this could still lead to similarity (24/05/2011, T-161/10, E-Plex, EU:T:2011:244, § 22). The goods at issue have the same nature and methods of use, and they may have the same distribution and manufacturing channels.

The contested antennas; masts for wireless aerials; transistors (electronic); transmitters for telecommunications; all the aforementioned goods not related to the safety of goods and individuals at the airports are similar to the opponent’s computer software relating to the safety of goods and individuals, operated on airport platforms. Since the 1990s the boundary between telecoms equipment and IT hardware/software has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecoms data. Equipment used for purposes of telecommunication is also considered to cover the telecommunications control software that must be in place to successfully support telecommunications activities. Any software that provides the ability to perform telecommunication activities operations can be considered telecommunications control software. Consequently, these contested goods are similar to the opponent’s goods in Class 9 as they may have the same purpose. They can coincide in distribution channels. Furthermore they may be complementary.

The contested monitoring apparatus, electric; all the aforementioned goods not related to the safety of goods and individuals at the airports, covers a wide variety of apparatus that of goods that monitor (i.e. to observe, supervise, or keep under review; to keep under observation; to measure or test at intervals, esp. for the purpose of regulation or control: definition extracted from Oxford English Dictionary online at www.oed.com) something. Therefore, these goods could also be used in combination with software related to the safety of goods and individuals (excluding at hub airport, but e.g. in train- and metro stations) and/or in technical project studies relating to the safety of goods and individuals and for security services for the protection of goods and individuals using a biometric system, and to that extent these goods are to be considered similar to a low degree to at least some of the opponent’s earlier goods and services. They may have the same purpose and can coincide in producer and distribution channel.

The contested memory cards, all the aforementioned goods not related to the safety of goods and individuals at the airports are electronic flash memory data storage device used for storing digital information. The contested smart cards, all the aforementioned goods not related to the safety of goods and individuals at the airports are pocket-sized card that has embedded integrated circuits and that can provide personal identification, authentication, data storage, and application processing. These goods are similar to a low degree to the opponent’s computer software relating to the safety of goods and individuals, operated on airport platforms as they can coincide in producer. Furthermore they are complementary.

The contested apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; control panels (electricity); switchboards; distribution boards (electricity); electric installations for the remote control of industrial operations; boiler control instruments; distribution boxes for electricity; heat regulating apparatus; temperature controlling apparatus; all the aforementioned goods not related to the safety of goods and individuals at the airports are dissimilar to the opponent’s goods and services. While, in today’s high-tech society, many apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity function using integrated software, which may include the opponent’s specific software relating to the safety of goods and individuals operated on hub airports, this does not, however, lead to the automatic conclusion that software is similar to goods that use software to function successfully, let alone to the opponent’s specific software at issue. They are certainly not complementary; the producers are not the same, nor are the distribution channels, and they do not have the same purpose. Furthermore, with reference to the opponent’s services in Classes 42 and 45, the same reasoning applies, in addition to the fact that the nature of the goods and services is obviously not the same.

The contested electric couplings (i.e. a device which is used to join two electric pieces of equipment together, for the transference of energy from one to the other); electric batteries (i.e. containers consisting of one or more cells, in which chemical energy is converted into electricity and used as a source of power) and accessories therefor; couplers (computing) (i.e. computing devices, such as transformers, used to couple two or more electrical circuits); all the aforementioned goods not related to the safety of goods and individuals at the airports are dissimilar to the opponent’s goods and services. They have different natures, purposes and methods of use. They are not complementary or in competition with each other and do not generally come from the same producers. Moreover, they are commercialised via different sales outlets and the target public is clearly different.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto and industrial analysis and research services; all the aforementioned services not related to the safety of goods and individuals at the airports are similar to the opponent’s technical project studies relating to the safety of goods and individuals, offered on airport platforms in Class 42. Indeed, where the applicant restrict the list of services in a way that excludes identity, it is not excluded that this could still lead to similarity (24/05/2011, T-161/10, E-Plex, EU:T:2011:244, § 22). The services at issue can coincide in provider and can still have the same end users (airports); they may have the same purpose (safety of goods and individuals in e.g. in train stations versus hub airports) and nature as well as distribution channels.

The contested computer software consultancy; updating of software; maintenance of software; installation of computer software; leasing of computer software; all the aforementioned services not related to the safety of goods and individuals at the airports are similar to the opponent’s design, development, installation, updating, maintenance and rental of computer software relating to the safety of goods and individuals, offered on airport platforms; technical project studies relating to the safety of goods and individuals, offered on airport platforms in Class 42. These services can coincide in provider and, albeit for different end users (hub airports versus e.g. train stations), may have the same purpose (safety of goods and individuals in e.g. in train stations versus hub airports) and nature and distribution channels.

The contested design and development of computer software; all the aforementioned

services not related to the safety of goods and individuals at the airports are similar to the opponent’s design, development of computer software relating to the safety of

goods and individuals, offered on airport platforms in Class 42. These services can coincide in provider and, albeit for different end users (hub airports versus e.g. train stations), may have the same purpose (safety of goods and individuals in e.g. in train stations versus hub airports) and nature and distribution channels.

The contested design and development of computer hardware; consultancy in the design and development of computer hardware; all the aforementioned services not related to the safety of goods and individuals at the airports are similar to the opponent’s design, development of computer software relating to the safety of goods and individuals, offered on airport platforms in Class 42. The hardware is designed to work hand in hand with computer programs, referred to as software. Computer hardware companies also manufacture software, share the same distribution channels and may target the same professional public. Moreover, they can be complementary.

The contested monitoring of computer systems by remote access; all the aforementioned services not related to the safety of goods and individuals at the airports are services established through monitoring tools that are surveillance software, and as such are therefore similar to the opponent’s design, development, installation, updating, maintenance of computer software relating to the safety of goods and individuals, offered on airport platforms in Class 42. These services can coincide in producer, end user and distribution channels.

The contested research and development for others; all the aforementioned services not related to the safety of goods and individuals at the airports are similar to the opponent’s technical project studies relating to the safety of goods and individuals, offered on airport platforms in Class 42. They can coincide in producer, end user and distribution channels. Consequently, they are similar.

The contested rental of web servers (a web server is a computer system that processes requests via HTTP, the basic network protocol used to distribute information on the World Wide Web. The term can refer to the entire system, or specifically to the software that accepts and supervises the HTTP requests); all the aforementioned services not related to the safety of goods and individuals at the airports are similar to the opponent’s rental of computer software relating to the safety of goods and individuals, offered on airport platforms in Class 42. The contested services can coincide in producer, end user and distribution channels.

The contested consultancy in the field of energy-saving; all the aforementioned services not related to the safety of goods and individuals at the airports consist of a consultancy service offered by specialist companies, which may be applied to several technical and scientific areas and aims at re-evaluating every aspect of energy usage and seek solutions for rendering a company, association etc. greener and more efficient. Such services will normally not be offered by the same companies that offer any of the opponent’s goods and services; nor are they complementary or in competition with each other. Furthermore, they have a different nature. Consequently, they are considered dissimilar.

The contested laboratory (scientific-) services; all the aforementioned services not related to the safety of goods and individuals at the airports have a different nature and purpose to all of the opponent’s goods and services. The relevant public will not usually coincide. In addition they are neither complementary services nor are they in competition. The closest services are the opponent’s consultancy regarding the safety of goods and individuals in connection with biometrics, offered on airport platforms in Class 45, as biometrics refers to metrics related to human characteristics, such as DNA, the analysis of which generally must take place in a laboratory. Nevertheless, the specific services at issue are commonly distributed through different channels and commercialised by different undertakings, and will usually not coincide in end users so that not even these services can be held similar. Consequently, these services are dissimilar to any of the opponent’s goods and services in Classes 9, 42 and 45 as they are neither complementary nor in competition. Also, they have a different nature. Furthermore, their end users are very different to those of the opponent’s goods and services.

2. 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, part of the goods and services found to be similar are specialised, and directed at business customers with specific professional knowledge or expertise (e.g. masts for wireless aerials and industrial analysis and research services not related to the safety of goods and individuals), while another part could also be directed at the public at large (such as computer software and computer software consultancy, not related to the safety of goods and individuals).

The degree of attention will vary from average to high, depending on the specific goods and services and, if applicable, their importance for the specific business.

3. The signs

BIOCONTROL
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.

The common element ‘CONTROL’ is to be considered distinctive in certain territories, such as in Poland, where a significant part of the public is not familiar with English language. Although the Polish equivalent term, ‘KONTROLA’, is close to the English term ‘control’ and could therefore evoke for part of the relevant public the meaning of the word ‘control’, nevertheless, this element will enjoy distinctiveness, albeit weaker for that part of the public in relation to goods and services that involve activities as monitoring, observing, supervising, or measuring or testing at intervals for the purpose of regulation or control. In view of the foregoing, in the present case for reasons of procedural economy, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish- speaking part of the relevant public.

The element ‘BIO’ in the earlier word mark will be distinctive for the relevant goods and services (as detailed above, specifically related to the safety of goods and individuals offered on hub airport), although it will be weaker for those goods and services that are directed at a professional pubic and that relate to biometrics. In relation to all the other goods and services which are not in connection with biometrics, it has a normal distinctiveness (and this despite the fact that ‘BIO’ is a common, European-wide abbreviation for the word ‘biological’ which is frequently used as a reference to organic and natural composition of different goods or related services, since in the present case in any event it would not be allusive to this meaning in relation to the goods and services at issue).

The contested sign is a figurative mark consisting of the verbal elements ‘BE. CONTROL’, which will be perceived as separate elements because of the full stop after the initial letters, ‘BE.’. The verbal elements are in a standard type face, in upper case letters and in light grey (in particular the letter ‘E’) and blue colour (all the other letters and the dot). The verbal element ‘BE.’ has no meaning for the relevant public and is normally distinctive. Above the final letter ‘L’, there are three curved lines in light grey: this element is weaker due to its simplicity; in addition it is weak for goods and services related to communication by electronic or electric means over a distance, because it is likely to be perceived as schematic radio waves, optical signals, a transmission line or Internet connection.

The contested sign has no elements that could be considered clearly more dominant than other elements. Nevertheless, 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). In the present case, also taken into account the minor stylisation of the verbal elements and the simple and weak figurative element, the verbal components will therefore have a stronger impact on the relevant consumer.

Visually, the signs coincide in their initial letter ‘B’ as well as the string of letters ‘CONTROL’, which form the seven last letters of both sign.

Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a sign, such as the earlier mark in this case, containing a verbal element, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). It is reasonable to assume that a part of the public will perceive the letters ‘bio’ in the earlier mark as a separate element, as ‘bio’ will be associated with a particular meaning, explained above (and this albeit fanciful in relation to the goods and services at issue). As detailed above, the ‘BE.’ element will be clearly perceived in the contested mark.

The coinciding letters constitute eight out of the ten characters of which both signs are made up. The signs differ in the second and third letter ‘IO’ in the earlier mark and in the second letter ‘E’ followed by a dot, in the contested mark, in addition to the minor stylisation and the weaker figurative element (which will be even more weaker in relation to certain goods and services) in the contested mark.

Therefore, the marks at issue are visually similar to at least an average degree. The visual differences between the signs are certainly not sufficient to offset this similarity.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘B_ _ CONTROL’, present identically in both signs, and in their vowel structure, rhythm and intonation. The pronunciation differs only in the sound of the second and third vowels ‘IO’ in the earlier mark and in the sound of the vowel ‘E’ in the contested mark. Therefore the marks are aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the element ‘CONTROL’ in both signs will be perceived as detailed above by part of the relevant public, to this extent, and for that public, the signs will be conceptually identical. For the other part of the relevant public, this element will be meaningless and thus no conceptual comparison will be possible as regards this element, and thus not influence the assessment of the similarity of the signs. However, the element ‘BIO’ in the earlier mark will be associated with the meaning mentioned above, and the element ‘BE.’ has no meaning for the relevant public, so that to this extent the signs will not be similar conceptually.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. 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 weaker for a part of the relevant public (namely part of the professional public) in relation to part of the goods and services (i.e. those goods and services involving monitoring activities and in relation to biometrics). The mark has a normal degree of distinctiveness for all the remaining goods and services in relation to which it has no meaning from the perspective of the public in the relevant territory.

5. 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).

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.

Furthermore, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

In the present case, the goods are partly similar (to various degrees) and partly dissimilar. The marks coincide in the initial letter ‘B’ and the string of letters ‘CONTROL’, which is distinctive and plays an independent distinctive role in both signs. The differences between the marks are confined to the second and third character in the marks and the minor stylisation and the figurative element (that is weak for part of the goods and services and moreover will have less impact). In the Opposition Division’s view, this is not sufficient to exclude the likelihood of confusion, not even in relation to specialised goods and services direct to the professional public with a high degree of attention and in connection with goods and services for which the element ‘BIO’ is distinctive. Due to the important visual and aural similarities between the signs, even that part of the relevant public, and despite their high attention, may, if not directly confuse the marks, associate them or may 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), and believe that the goods and services that have been found to be similar or even similar to a low degree come from the same, or at least linked, undertakings.

Considering all the above, and taking into account the fact that consumers, even with a higher degree of attention, rarely compare marks directly but rather rely on their imperfect recollection of them, the Opposition Division considers that the degree of similarity between the marks, as set out, above leads to a likelihood of confusion on the part of the Polish-speaking part of the public. 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. Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 4 030 151. It follows from the above that the contested mark must be rejected for the goods and services found to be similar (to various degrees) to those of the earlier mark.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part 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

Edith VAN DEN EEDE

Michele M. BENEDETTI-ALOISI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.