OPPOSITION No B 2 433 970

Aldi Einkauf GmbH & Co. oHG, Eckenbergstr. 16 A, 45307 Essen, Germany (opponent), represented by Schmidt, von der Osten & Huber Rechtsanwälte Steuerberater Partnerschaft mbB, Haumannplatz 28, 45130 Essen, Germany (professional representative)

a g a i n s t

Rives Pitman S.A., Aurora 4, 11500 Puerto de Santa Maria (Cádiz), Spain (applicant), represented by Rodolfo de la Torre S.L., C/ San Pablo nº15-3º, 41001 Sevilla, Spain (professional representative).

On 19/05/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 433 970 is partially upheld, namely for the following contested goods and services:

Class 29: Milk based food beverages and fruits.

Class 32: Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.

Class 35: Procurement of goods for others and wholesaling and retailing in shops and via global computer networks of beverages for consumption based on mineral and aerated waters and other non-alcoholic drinks, fruit beverages and fruit juices.

2. European Union trade mark application No 13 083 415 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 083 415. The opposition is based on German trade mark registration No 946 954. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR, if the applicant so requests, the opponent shall furnish proof that, during the period of five years 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 in respect of which it is registered and which it cites as justification for its opposition, or that there are proper reasons for non-use.

According to the same provision, in the absence of such proof the opposition must be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely German trade mark No 946 954.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the publication of the contested application.

The contested application was published on 02/09/2014. 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 02/09/2009 to 01/09/2014 inclusive. Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 32: Non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries.

Preliminary remarks:

In order to assess the proof of use, it is beneficial to clarify the scope of protection of the earlier trade mark’s goods in Class 32. The Office considers that the intention of the opponent was to exclude only citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks that come from English-speaking countries. In other words, the excluded goods are citrus fruit juices and drinks made of these juices, particularly tonic, bitter and cola drinks that come from English-speaking countries.

According to Rule 22(3) EUTMIR, the evidence of use shall consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 08/09/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 13/11/2015 to submit evidence of use of the earlier trade mark. On 03/11/2015, 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:

• An affidavit (Item 1) signed on 18/09/2015 by Ms Kathrin Kleimeier – acting as buyer of the opponent’s company ALDI Einkauf GmbH & Co. oHG –responsible for both the advertising and the distribution of the goods sold under the German trade mark No 946 954 ‘RIVER’. The affidavit, in affirming that the trade mark at issue was used in Germany from 02/09/2009 to 02/09/2014, includes a list of ‘minimum sales figures’ referring to the period 2009-2014, showing sales of products under the displayed trade mark ‘River’. The presence of the elements ‘0% 1,5 L’ clearly shows that the sign is used for non-alcoholic beverages, as ‘0%’ indicates the alcohol by volume percentage and ‘1,5 L’ the volume in litres contained in each item sold.

• The affidavit refers also to the following documents, submitted with translations of the relevant parts:

• A set of copies of 14 advertisements (Item 2) published in Germany on various dates between 2010 and 2014 and showing the trade mark ‘River’ used for non-alcoholic beverages such as cola, bitter and sugar-free cola.

• A set of labels (Item 3) bearing the trade mark ‘River’, used for identifying non-alcoholic beverages such as cola, sugar-free cola and orangeade. The text on the packaging is in German.

• A list of 67 invoices (Item 4) sent by suppliers to the opponent’s sales companies, issued in Germany. The trade mark ‘River’ is clearly displayed and it is clear to which goods the invoices refer, namely various non-alcoholic beverages such as cola, bitter, etc. The invoices bear various dates between 2009 and 2014.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

As far as the affidavit is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, 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.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The affidavit, advertisements and invoices show that the place of use is Germany. This can be inferred from the declaration made in the affidavit by the opponent’s employee and is supported by the presence of German addresses in the invoices submitted. Moreover, although Germany is not the only German-speaking country in the European Union, the fact that the invoices (Item 4), advertisements (Item 2) and packaging sample (Item 3) are in German has to be taken into consideration.

Time of use

Most of the evidence is dated within the relevant period, namely from 02/09/2009 to 01/09/2014 inclusive. The invoices (Item 4) are dated within the relevant period (dates include 07/12/2009, 14/04/2010, 06/07/2011, 06/11/2012, 30/01/2013 and 09/04/2014). Furthermore, the advertisements (Item 3) are declared, in the affidavit and in the attached translations, to have been published within the relevant period, (e.g. on 04/03/2010, 23/05/2011, 06/08/2012, 29/08/2013 and 18/06/2014).

Extent of use

Concerning the extent of the use made of the earlier mark, account must be taken, in particular, of the commercial volume of all the acts of use on the one hand and the duration of the period in which those acts of use occurred as well as the frequency of those acts on the other (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The assessment 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 (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 42).

Under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (08/07/2010, T‑30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

Moreover, it should be noted that use need not have been made throughout the period of five years; any time within the five years is sufficient, as the provisions on use do not require continuous use (16/12/2008, T‑86/07, Deitech, EU:T:2008:577, § 52).

The documents filed, namely the affidavit (Item 1) containing also the list of sales figures, the advertisements (Item 2) and the invoices (Item 3), provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. The invoices submitted were issued between 2009 and 2014. The amounts in the invoices for the goods in question sold under the sign ‘RIVER’ provide sufficient information regarding the commercial volume of use. It is clear from the evidence that the opponent distributed or provided goods bearing German trade mark No 946 954 ‘RIVER’ on the German market. The Opposition Division therefore has sufficient information regarding the commercial activities of the opponent during the relevant period. The invoices and the advertisements prove that the use of the sign in Germany has been more than mere token use. Therefore, these documents prove the duration and frequency of the use of the mark.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The proof of use must establish a clear link between the use of the mark and the relevant goods or services. As indicated in Rule 22(4) EUTMIR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T‑105/13, TrinkFix, EU:T:2014:1070, § 28-38). A depiction of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

In the present case, German trade mark No 946 954 is registered for the word mark ‘RIVER’. The invoices and some of the advertisements bear the word mark. In addition, in the advertisements and in the packaging the mark at issue appears, for example, as .

The use of a stylised blue italic typeface and some decorative elements constitutes an acceptable means of bringing the mark in question to the public’s attention and consequently does not affect the distinctiveness of the earlier mark ‘RIVER’, which was registered as a word mark.

The additional element ‘COLA’ merely designates the nature of the goods offered by the opponent. In this regard, it should be noted that, if the addition is not distinctive, is weak and/or is not dominant – as in the case at issue, where ‘cola’ is non-distinctive for non-alcoholic beverages – it does not alter the distinctive character of the registered trade mark (30/11/2009, T‑353/07, Coloris, EU:T:2009:475, §§ 29-33 et seq.; 10/06/2010, T‑482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

Therefore, the use of the earlier mark as described above constitutes use of the sign as a trade mark in the course of trade and in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered.

In view of the above, the Opposition Division considers that the evidence shows that the mark has been used as registered for all the goods for which the mark is registered.

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, and 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

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 on which the opposition is based are the following:

Class 32: Non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries.

The contested goods and services are the following:

Class 29: Milk based food beverages and fruits.

Class 32: Mineral and aerated waters and other non-alcoholic drinks; Fruit drinks and fruit juices; Syrups and other preparations for making beverages.

Class 35: Procurement of goods for others and wholesaling and retailing in shops and via global computer networks of beverages for consumption based on milk and fruits, mineral and aerated waters and other non-alcoholic drinks, fruit beverages and fruit juices, syrups and other preparations for making beverages; Advertising, publicity, promotion and business representation, exclusive sale of beverages for consumption based on milk and fruits; Import and export services.

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.

As already stated in the assessment of proof of use, the opponent’s goods as classified in Class 32 have to be interpreted as non-alcoholic drinks with the exception of citrus fruit juices and drinks made of these juices, particularly tonic, bitter and cola drinks that come from English-speaking countries.

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 29

The contested milk based food beverages and fruits are food beverages containing predominantly milk with the addition of fruit. The opponent’s goods are non-alcoholic beverages. These goods have the same purpose. They can have the same end users and distribution channels. Furthermore, they are in competition. Therefore, they are similar.

Contested goods in Class 32

The contested mineral and aerated waters are included in the broad category of the opponent’s non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries. Therefore, they are identical.

The contested other non-alcoholic drinks include, as a broader category, or at least overlap with, the opponent’s non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries. 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 fruit drinks and fruit juices overlap with the opponent’s non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries. Therefore, they are identical.

The contested syrups and other preparations for making beverages are goods expressly designed and intended to be used in the preparation of beverages. These items generally require only the addition of water to produce a beverage. As these goods have the same nature, purpose, distribution channels and end users as the opponent’s goods, they are considered similar.

Contested services in Class 35

The activity of retail in goods, as a service for which protection of an EUTM can be obtained, consists not of the mere act of selling the goods, but of the services rendered around the actual sale of the goods, which are defined in the explanatory note to Class 35 of the Nice Classification as ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’.

Retail services concerning the sale of particular goods are similar (to a low degree) to these particular goods (05/10/2011, T‑421/10, Rosalia de Castro, EU:T:2011:565, § 33). Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as 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.

The goods covered by the retail services and the specific goods covered by the other mark have to be identical to find similarity, that is to say, they must either be exactly the same goods or fall under the natural and usual meaning of the category.

However, retail services relating to the sale of particular goods and other goods are not similar. In principle, goods are not similar to services. Too broad a protection would be given to retail services if similarity is found where the goods sold at retail are only highly similar or similar to the goods covered by the other mark.

In contrast, the principles set out above do not apply to other services that are not limited to services around the sales of goods, or that do not fall into Class 35, such as auctioneering services (Class 35), import and export services (Class 35), distribution services (Class 39), transport or repair services (Class 37), etc.

In the light of the above, the contested procurement of goods for others and wholesaling and retailing in shops and via global computer networks of beverages for consumption based on mineral and aerated waters and other non-alcoholic drinks, fruit beverages and fruit juices are complementary to the opponent’s non-alcohol drinks with exception of citrus fruit juices as well as drinks made of these juices, particularly tonic, bitter and cola drinks, all goods coming from English speaking countries. In addition, the contested services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, they are similar to a low degree.

Conversely, the contested procurement of goods for others and wholesaling and retailing in shops and via global computer networks of beverages for consumption based on milk and fruits syrups and other preparations for making beverages; advertising, publicity, promotion and business representation, exclusive sale of beverages for consumption based on milk and fruits; import and export services are retailing and wholesaling of particular goods, business representation and advertising services, and import and export services. These services do not have any similarity to the opponent’s goods, having a different nature, purpose and method of use. In addition, they are neither complementary nor in competition and do not have the same distribution channels, end users or usual origin. Therefore, they are dissimilar.

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, the goods found to be identical and similar to various degrees are directed at the public at large as well as business customers with specific professional knowledge or expertise. The degree of attention may vary from average to low, as some of the goods at issue, in Classes 29 and 32, are relatively inexpensive goods purchased on a daily basis.

3. The signs

RIVER
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 a word mark, ‘RIVER’.

The contested sign is a figurative mark consisting of the verbal element ‘RIVES’ in standard upper case gold letters, all but the first of which are underlined. To the right of this element is a yellow oval that contains the verbal element ‘NON ALCOHOLIC’ in lower case green letters.

The earlier mark has no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The element ‘NON ALCOHOLIC’ of the contested sign will be associated with a substance that does not contain alcohol, as the word ‘NON’ is a basic English word understood by German-speaking consumers. In addition, the word ‘ALCOHOLIC’ will be understood, as it is similar to the German equivalent, ‘ALKOHOLISCH’. Bearing in mind that the relevant goods are non-alcoholic beverages, this element is non-distinctive for all the applicant’s goods in Classes 29 and 32. This is true also for the relevant services in Class 35, as the element ‘NON ALCOHOLIC’ merely indicates the nature of the specific goods retailed or wholesaled.

The element ‘RIVES’ in the contested sign is the dominant element as it is the most eye-catching.

Visually, the signs coincide in the first four letters, ‘RIVE’, of the earlier mark, ‘RIVER’, and of the contested sign’s dominant element, ‘RIVES’. The first parts of the conflicting marks are identical. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. However, the signs differ in their last letters, ‘R’ in the earlier sign and ‘S’ in the contested sign. In addition, they differ in the contested sign’s non-distinctive and secondary element ‘NON ALCOHOLIC’ and in all its graphical elements. Nonetheless, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘RIVE’, present identically in the earlier mark, ‘RIVER’, and the contested sign’s dominant element, ‘RIVES’. Conversely, the pronunciation differs in the sound of the letters ‘R’ of the earlier mark and ‘S’ of the contested sign and in the non-distinctive and secondary element ‘NON ALCOHOLIC’.

Therefore, the signs are aurally highly similar.

Conceptually, the public in the relevant territory will perceive the contested mark’s non-distinctive and secondary element ‘NON ALCOHOLIC’ as referring to a substance not containing alcohol. For part of the German-speaking public the earlier sign ‘RIVER’ lacks any meaning. Therefore, since for this part of the public one of the signs will not be associated with any meaning, the signs are not conceptually similar.

Conversely, at least part of the public will understand the earlier sign, ‘RIVER’, as a large natural stream of fresh water flowing along a definite course. Therefore, for this part of the public, as the signs will be associated with dissimilar meanings, they are not conceptually similar.

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. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The signs are visually and aurally highly similar and not conceptually similar. The goods and services are partly identical, partly similar, partly similar to a low degree and partly dissimilar. They target the public at large as well as professionals. The degree of attention may vary from average to low.

The trade marks coincide in the first four letters, ‘RIVE’, of the earlier sign, ‘RIVER’, and the contested sign’s element ‘RIVES’.

Consequently, taking into consideration 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), the Opposition Division – bearing in mind also that consumers generally tend to focus on the first element of a sign when being confronted with a trade mark, as the part placed at the left of the sign (the initial part) is the one that first catches the attention of the reader – considers that the differences between the signs, which result from only the last letters, ‘R’ of the earlier sign and ‘S’ of the contested sign, the contested sign’s secondary and non-distinctive element ‘NON ALCOHOLIC’ and the graphical elements of the contested sign, are not able to safely exclude a likelihood of confusion between the marks.

This finding is also valid for the goods that are similar to only a low degree, as the similarities between the signs outweigh the low degree of similarity between those goods.

In its observations, the applicant argues that it owns several registrations including the word ‘RIVES’, inter alia, in the European Union and that these registrations coexist with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of 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 intervener’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 co‑existence on 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 shall in principle be 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 registry) on a national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which 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 case at issue, the applicant filed various items of evidence to demonstrate the coexistence. However, it did not submit any evidence from which it would be possible to infer that the relevant German consumers are used to seeing the marks at issue without confusing them, or any evidence related to actual use in the relevant German territory.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded. For the same reason, the applicant’s claim that its mark belongs to a family of marks has to be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration No 946 954.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical, similar and similar to a low degree to those of the earlier trade mark.

The rest of the contested 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 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

Michele M. BENEDETTI - ALOISI

Karin KUHL

Claudia MARTINI

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.