OPPOSITION No B 2 477 522

Novaled AG, Tatzberg 49, 01307 Dresden, Germany (opponent), represented by Boehmert & Boehmert Anwaltspartnerschaft mbB – Patentanwälte Rechtsanwälte, Kurfürstendamm 185, 10707 Berlin, Germany (professional representative)

a g a i n s t

Novaldo B.V., Spoorakkerweg 6, 5071 NC Udenhout, The Netherlands (applicant), represented by Merk-Echt B.V., Keizerstraat 7, 4811 HL Breda, The Netherlands (professional representative).

On 05/12/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 477 522 is partially upheld, namely for the following contested goods:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Data processing equipment and computers; Computer software, including for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector; Electronic systems, whether or not wireless, for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector; Mobile applications; Web applications; Control panels; Digital projectors and projectors; Stroboscopes; Portable computer equipment, including tablet computers; Electronic systems and computer systems for the transmission of video, audio and data via electronic communication networks, whether or not wireless; Components for all the aforesaid goods, included in this class.

Class 11: Apparatus for lighting, Apparatus for lighting and Lighting systems; lights; LED lighting; Amenity lighting; Discotheque spotlights; Lighting used for lighting stages and for use in light shows; Parts for the aforesaid goods included in the class.

2. European Union trade mark application No 13 224 712 is rejected for all the above goods. It may proceed for the remaining 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 13 224 712, namely against all the goods and services in Classes 9, 11 and 42. The opposition is based on European Union trade mark registration No 3 552 239, German trade mark registrations No 302 010 057 426 and No 30 327 791, and international trade mark registration No 1 081 028 designating the European Union. 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 European Union trade mark registration No 3 552 239 and German trade mark registration No 30 327 791 on which the opposition is based.

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

The contested application was published on 12/11/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and in Germany from 12/11/2009 to 11/11/2014 inclusive. Furthermore, the evidence must show use of the trade marks for the goods and services on which the opposition is based, namely the following:

European Union trade mark registration No 3 552 239 for the word mark ‘NOVALED’

Class 9: Scientific, photographic, cinematographic, optical, measuring signalling, checking (supervision) and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, data processing equipment and computers.

Class 11: Apparatus for lighting.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware.

German trade mark registration No 30 327 791 for the word mark ‘NOVALED’

Class 9: Scientific, photographic, cinematographic, optical measuring signalling, checking (supervision) and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers. data processing equipment and computers.

Class 11: Apparatus for lighting.

Class 42: Scientific and technological services and research and design relating thereto; design and development of computer hardware.

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 28/09/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 28/11/2015, to submit evidence of use of the earlier trade marks, a time limit that was extended on 25/11/2015 to 28/01/2016. On 26/01/2016, within the time limit, the opponent submitted evidence of use. In its observations in response to the proof of use submitted, the applicant claims that the requested proof of use was not submitted on time. This is because letter B224b to this party mentioned as the due date 18/01/2016 and not 28/01/2016, which was the correct deadline according to the calculation resulting from the addition of the two months from 28/11/2015, the date on which the opponent was originally to submit the requested proof of use. The Opposition Division considers this an obvious error and, therefore, the proof of use is considered to have been submitted on time.

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:

• Exhibit 1: printouts from the opponent’s website http://www.novaled.com, dated 2011. These documents provide information about the history of the opponent’s company. From these materials, it can be deduced that organic light-emitting diodes (OLEDs) is the name for the opponent’s semiconductor devices, used as a source of light.

• Exhibit 2: a presentation by the opponent, dated 2011, which explains the opponent’s activity in relation to scientific research and the structure of the company’s organisation. The presentation concerns the development of OLED devices, for their use with lighting apparatus.

• Exhibit 2a: press articles explaining technological advances in OLED lighting products. This information also comes from the opponent’s website and is dated 2009 and 2015.

• Exhibit 2b: a copy of the opponent’s patent DE 102009013685.1, granted in 2013.

• Exhibit 3: press releases that also come from the opponent’s website. This information is dated 2011-2013.

• Exhibit 4: seven photographs dated 2011-2013, showing lighting apparatus marked with the mark ‘NOVALED’ or in an environment where the trade mark ‘NOVALED’ is visible.

• Exhibit 5: more printouts from the opponent’s website, this time with pictures of a shop, dated 2011.

• Exhibit 6: 13 invoices and delivery notes related to the trade mark ‘NOVALED’ for apparatus for lighting. The mark appears in some of them together with the products. Eleven of these documents are addressed to customers in Germany, one to a customer in France and one to a customer in Italy. They are dated between 2010 and 2013.

The Opposition Division finds that the abovementioned evidence proves that the earlier trade marks have been genuinely used in the course of trade.

The information contained in the invoices and delivery notes and the press articles provide sufficient indications of the period of use, place of use, extent of use and nature of use. The indications of the trade marks ‘NOVALED’ in the photographic material, invoices and delivery notes submitted show that the marks ‘NOVALED’ are actually used on the abovementioned goods, and not only as a company name, as the applicant claims.

Taking the evidence as a whole, the various items of evidence considered in combination with each other provide sufficient indications to conclude that the earlier trade marks genuinely use in the European Union and Germany during the relevant period, for apparatus related to emitting light.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services covered by the earlier trade marks.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it shall, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the evidence filed by the opponent shows genuine use of the trade marks for organic light-emitting diode devices applied in lighting apparatus. Therefore, the evidence submitted shows use of the earlier marks for apparatus for lighting.

The opponent argues that organic light-emitting diodes have many different applications such as digital photography, PCs, notebooks, telecommunications apparatus, etc. Notwithstanding the fact that these goods may have ‘NOVALED’ light-emitting diodes as components, no evidence has been submitted proving that these kinds of goods are offered on the market bearing the trade mark ‘NOVALED’.

Moreover, as regards the services for which the opponent claims that use has been proven, apart from the references the opponent makes to them in its observations, such services do not appear in the invoices submitted by the opponent and there is no evidence that they have actually been provided to consumers. There is no information whatsoever concerning the commercial volume, the territorial scope, the duration and the frequency of use of the opponent’s mark in relation to any services.

Therefore, the Opposition Division will only consider apparatus for lighting in Class 11 in relation to European Union trade mark registration No 3 552 239 and German trade mark registration No 30 327 791 on which the opposition is based, in its further examination of the opposition.

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

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

The opposition is based on more than one earlier trade mark. For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to European Union trade mark registration No 3 552 239, for which the proof of use was examined above, and international registration No 1 081 028 designating the European Union, which is not subject to proof of use.

1. The goods

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

European Union trade mark registration No 3 552 239

Class 11: Apparatus for lighting.

International registration No 1 081 028

Class 1: Chemical products for use in industry and science, in particular for the production of (organic) light emitting diodes, lighting devices, lighting apparatuses, diodes, electronic components and equipment, displays, solar cells, batteries, transistors and optoelectronic components and equipment; chemical products for photographic, agricultural, horticultural and forestry purposes.

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling of electricity; electronic apparatuses and components of (organic) semiconductor electronics, as far as included in this class; (organic) light emitting diodes; (organic) transistors (electronic); batteries (electrically); electronic controlling and regulating instruments for lighting apparatuses; optoelectronic components; optical sensors; photoelectric detectors (as far as included in this class); zener diodes; (organic) solar cells and solar modules for electricity generation; display screens; monitors; electronic displays; televisions; apparatus for recording, transmission and reproduction of sound or images.

Class 10: Surgical, medical, dental and veterinary instruments and apparatuses, in particular apparatuses and instruments for medical and cosmetic treatment using (organic) light emitting diodes, light modules, lamps, lighting devices, laser diodes and laser; laser for medical purposes; laser diodes for medical purposes.

The contested goods are the following:

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Data processing equipment and computers; Computer software, including for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector; Electronic systems, whether or not wireless, for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector; Mobile applications; Web applications; Control panels; Digital projectors and projectors; Stroboscopes; Portable computer equipment, including tablet computers; Electronic systems and computer systems for the transmission of video, audio and data via electronic communication networks, whether or not wireless; Components for all the aforesaid goods, included in this class.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Apparatus for lighting and Lighting systems; lights; LED lighting; Amenity lighting; Discotheque spotlights; Smoke machines; Lighting used for lighting stages and for use in light shows; Parts for the aforesaid goods included in the class.

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; Design and development of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, data processing equipment, computers, computer software, including for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector, electronic systems, whether or not wireless, for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector, mobile applications, web applications, control panels, projectors and digital projectors, stroboscopes, portable computer equipment, including tablet computers, electronic systems and computer systems for the transmission of, video, audio and data via electronic communication networks, whether or not wireless, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, lighting equipment and lighting systems, lamps, LED lighting, ambient lighting, discotheque spotlights, smoke machines, lighting used for lighting stages and for use in light shows and parts for the aforesaid goods; Technical consultancy relating to the use of electronics, electronic systems, video and audio equipment and lighting; Design and development of lighting concepts, Including for the entertainment sector; Industrial design; Product development; Consultancy and information regarding the aforesaid services, including via electronic networks, such as the Internet.

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 9

The contested Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images are identically contained in the list of goods of international registration No 1 081 028 in Class 9.

The contested components for all the aforesaid goods, included in this class are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling of electricity of international registration No 1 081 028. Therefore, they are identical.

The contested data processing equipment and computers; portable computer equipment, including tablet computers; electronic systems and computer systems for the transmission of video, audio and data via electronic communication networks, whether or not wireless; components for all the aforesaid goods, included in this class include, as broader categories, the opponent’s apparatus for recording, transmission and reproduction of sound or images of international registration No 1 081 028. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested control panels; components for all the aforesaid goods, included in this class are included in the broad category of the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating and controlling of electricity of international registration No 1 081 028. Therefore, they are identical.

The contested digital projectors and projectors; components for all the aforesaid goods, included in this class are included in the broad category of the opponent’s apparatus for recording, transmission and reproduction of sound or images of international registration No 1 081 028. Therefore, they are identical.

The contested magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; components for all the aforesaid goods, included in this class are similar to a high degree to the opponent’s apparatus for recording, transmission and reproduction of sound or images of international registration No 1 081 028. This is because the goods can be either complementary or in competition. They can also have the same purpose and methods of use. Moreover, they have the same distribution channels, relevant public and producers.

The contested computer software, including for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector; mobile applications; web applications; components for all the aforesaid goods, included in this class are similar to the opponent’s apparatus for recording, transmission and reproduction of sound or images of international registration No 1 081 028. This is because these goods have the same producers. Moreover, they are complementary.

The contested electronic systems, whether or not wireless, for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector; stroboscopes; components for all the aforesaid goods, included in this class are similar to the opponent’s electronic controlling and regulating instruments for lighting apparatuses of international registration No 1 081 028. These goods can be complementary and it is likely that the goods would be produced by the same undertaking and target the same end users.

Contested goods in Class 11

Apparatus for lighting (listed twice) is identically contained in the lists of goods of European Union trade mark registration No 3 552 239 and the contested mark.

The contested parts for the aforesaid goods included in the class are included in the broad category of the opponent’s apparatus for lighting of European Union trade mark registration No 3 552 239. Therefore, they are identical.

The contested lighting systems; parts for the aforesaid goods included in the class overlap with the opponent’s apparatus for lighting of European Union trade mark registration No 3 552 239. Therefore, they are identical.

The contested lights; LED lighting; amenity lighting; discotheque spotlights; lighting used for lighting stages and for use in light shows; parts for the aforesaid goods included in the class are included in the broad category of the opponent’s apparatus for lighting of European Union trade mark registration No 3 552 239. Therefore, they are identical.

The contested apparatus for heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; smoke machines; parts for the aforesaid goods included in the class are intended to control temperature, humidity and ventilation in a building or a vehicle, to cook, to supply water, to serve sanitary purposes and to produce smoke. The opponent’s apparatus for lighting consists of devices for supplying artificial light and for illumination or the specific goods of Class 11. These contested goods and the opponent’s goods in Classes 1, 9, 10 and 11 of earlier international registration No 1 081 028 and earlier European Union trade mark registration No 3 552 239 do not meet any of the criteria for similarity; their natures and purposes differ, as do their producers, consumers and distribution channels. Furthermore, they are neither complementary nor in competition with one another.

Contested services in Class 42

The contested scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; design and development of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, data processing equipment, computers, computer software, including for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector, electronic systems, whether or not wireless, for controlling electronics, electronic systems, video and audio equipment and lighting, including for the entertainment sector, mobile applications, web applications, control panels, projectors and digital projectors, stroboscopes, portable computer equipment, including tablet computers, electronic systems and computer systems for the transmission of, video, audio and data via electronic communication networks, whether or not wireless, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, lighting equipment and lighting systems, lamps, LED lighting, ambient lighting, discotheque spotlights, smoke machines, lighting used for lighting stages and for use in light shows and parts for the aforesaid goods; technical consultancy relating to the use of electronics, electronic systems, video and audio equipment and lighting; design and development of lighting concepts, including for the entertainment sector; industrial design; product development; consultancy and information regarding the aforesaid services, including via electronic networks, such as the internet are dissimilar to the opponent’s goods. There are numerous differences between goods and services. By their nature, goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise or real estate. Their sale usually entails the transfer of title in something physical, namely movables or real estate. Services, on the other hand, consist in the provision of intangible activities. Fundamentally, the applicant’s goods have a different purpose from the opponent’s services. Furthermore, the opponent’s goods in Classes 1, 9, 10 and 11 are aimed mainly at consumers interested in buying domestic appliances, chemicals, electric and electronic apparatus and instruments, and medical apparatus, inter alia. The contested services target specialist consumers, such as lighting manufacturing companies.

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, highly similar and similar are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention varies from average to high depending of the price of the relevant goods.

3. The signs

Novaled	NOVALDO
Earlier trade marks	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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the relevant public.

The marks under comparison are word marks. The earlier marks consist of the word ‘NOVALED’ and the contested mark consists of the word ‘NOVALDO’. In the case of word marks, the word as such is protected and not its written form. Therefore, it is irrelevant whether the word marks under comparison are depicted in upper or lower case letters.

The marks at issue have no elements that could be considered more dominant (visually eye-catching) than other elements.

The words ‘NOVALED’ and ‘NOVALDO’ do not exist as such in Spanish and will be perceived – at least by part of the relevant public – as meaningless terms without any recognisable components and with an average degree of distinctiveness for the relevant goods and services.

The element ‘LED’ of the earlier signs, being the abbreviation of light emitting diode, will be associated with a lighting technology, as correctly pointed out by the applicant. Bearing in mind that the relevant goods are lighting apparatus, it is considered that this element is weak for these goods. The part of the relevant public who will dissect the earlier marks into two elements, namely ‘NOVA’ and ‘LED’, and understands the meaning of the second element will not pay as much attention to this weak element as to the other more distinctive elements of the marks. Consequently, the impact of this weak element is limited, for part of the public, when assessing the likelihood of confusion between the marks at issue.

The applicant has argued that ‘NOVA’, present in all the marks, is also a descriptive element and therefore is not distinctive. Nevertheless, although this element may be understood by part of the relevant public as suggesting something new, it cannot be considered weak for all the relevant public, since it is not the normal word in Spanish to refer to something new (which would be nuevo) and it is not used as a prefix or as an independent word conveying such a meaning. Furthermore, part of the relevant public may not perceive this meaning, since it is not clearly separated in the signs.

Therefore, the Opposition Division finds it appropriate to focus the comparison on the significant part of the Spanish-speaking public for which the words ‘NOVALED’ and ‘NOVALDO’ are meaningless and do not have any recognisable components.

Visually, the signs coincide in ‘NOVAL*’ and the letter ‘D’, although the latter is placed in a different position at the end of the signs. However, they differ in the ‘E’ of the earlier marks in the penultimate position and the last letter, ‘O’, of the contested sign.

Moreover, this commonality is at the beginning of the signs. 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.

Considering all the above, the level of visual similarity is high.

Aurally, the pronunciation of the signs coincides in the sound of the identical string of letters ‘NOVAL*’ and the sound of the letter ‘D’, placed in different positions in the earlier marks and in the contested sign. The pronunciation differs in the sound of the letter ‘E’ in the penultimate position of the earlier marks and the letter ‘O’ at the end of the contested sign , which have no counterparts in the other signs. Although they have six letters in common and only one is different, the differing letters are vowels and their pronunciation does make a difference between the signs.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has any meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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 marks 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 marks are particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on its distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to a high degree, partly similar and partly dissimilar.

The signs are visually similar to a high degree and aurally similar to an average degree because they have six out of seven letters/sounds in common, five of them in the same order and position. The different letters/sounds ‘E’ and ‘O’ in the final parts of the words are not sufficient to exclude similarity between the overall impressions of the marks. 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). Furthermore, the coinciding element ‘NOVAL’ is placed at the beginning of the signs.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union and international trade mark registrations. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical and similar to various degrees to those of the earlier trade marks.

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.

The opponent has also based its opposition on the following earlier trade marks:

German trade mark registration No 302 010 057 426 for the word mark ‘NOVALED’;

German trade mark registration No 30 327 791 for the word mark ‘NOVALED’.

Since these marks are identical to the ones which have been compared and cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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

Martin EBERL

Anna POLITI

Zuzanna STOJKOWICZ

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.