OPPOSITION No B 2 587 494

4D, Société par actions simplifiée, 60, rue d'Alsace, 92110 Clichy La Garenne, France (opponent), represented by Desbarres & Staeffen, 18, avenue de l'Opéra, 75001 Paris, France (professional representative)

a g a i n s t

4D Data Centres Limited, 30 City Road, London EC1 2AB, United Kingdom (applicant), represented by Michael Bilewycz, Decisis Intellectual Property 5, St John's Lane, London EC1M 4BH, United Kingdom (professional representative).

On 09/04/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 002587494 is upheld for all the contested services.

2. European Union trade mark application No 13 910 724 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

Preliminary Remark

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 13 910 724 for the word mark ‘4D HOSTING’, namely against all the services in Classes 38, 39 and 42. The opposition is based on, inter alia, French trade mark registration No 1 370 259 for the word mark ‘4 D’ and the French company name ‘4D’. The opponent invoked Article 8(1)(b) and Article 8(4) EUTMR.

PROOF OF USE

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

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

The applicant states that the opponent had submitted evidence which only seemed to prove the use of its trade marks in France and Italy. The applicant further contends that there is no evidence of use by the opponent of any of the other invoked earlier trade marks. Accordingly, the applicant submits that, to the extent that such trade marks have been registered for more than five years ago, they should be disregarded for the purposes of this opposition.

According to the Office’s practice, a request for proof of use must be explicit, unambiguous and unconditional. This is because it has important procedural consequences: if the opponent does not file proof of use, the opposition must be rejected.

Since the applicant’s statement is not an explicit, unambiguous and unconditional request for proof of use, it has not been treated as such. Therefore, the opponent was not under any obligation to submit proof that its earlier trade marks had been put to genuine use.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s French trade mark registration No 1 370 259.

1. The goods and services

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

Class 9: Computer programs, software, computer software packages.

The contested services are the following:

Class 38: Internet service provision; Provision of internet connectivity; Provision of Ethernet networks; Provision of telecommunication and communications links, computer intercommunication, network communications services, computerised data communications; Provision of apparatus, installations or components for use in telecommunication services; Hosting and management of telecommunications and communications; Provision telecommunications access to internet platforms; Advisory, consultancy, management and information services relating to all the aforesaid services.

Class 39: Provision of physical storage for electronic data; Provision of storage for data servers, computers and information technology equipment and systems; the provision of dedicated racks and dedicated storage space and shelving for servers and other IT equipment, and the provision of power sources/power source access, power cabling/connections and Internet/cloud connecting cabling, connections/connectors and interfacing devices; Rental/leasing/hiring of storage space for data servers, computers and information technology equipment and systems; Advisory, consultancy, management and information services relating to all the aforesaid services.

Class 42: Cloud computing; Cloud Template Library; Cloud services; Creating, maintaining and hosting the websites of others; Provision of website templates; Provision of domain names; IT support services; Provision of data backup services; Provision of communications backup services; Provision of electronic data storage; Provision of data, communications and IT systems security; Rental of dedicated and virtual servers to third parties; Server and data storage hosting; Web hosting services; Application service provider [ASP], namely, hosting computer software applications of others; Data migration services; Digital data storage and retrieval; Provision of data carriers; Leasing/rental/hiring out of data processing systems and computers; Leasing of access time to information technology devices; Professional consultancy relating to information technology; Disaster recovery services for information technology systems and equipment; Engineering services relating to information technology; Design and development of electronic data security systems; Development of systems for the storage and/or transmission of data; Design and development of hardware for multimedia data storing and retrieval; Encryption, decryption and authentication of information, messages and data; Advisory, consultancy, management and information services relating to all the aforesaid services.

The Opposition Division considers it appropriate to address upfront the applicant’s arguments with regard to the comparison of the relevant goods and services and their respective scope. The applicant submits that the opponent´s particular core software product is a database management system using architecture described as the ‘relational model’, i.e. a software product with a specific functionality, as well as software tools enabling the development and deployment of business applications. Furthermore, the applicant holds that it is the opponent’s goods defined by their core functionality that need to be considered.

As regards the contested services, the applicant explains that in fact it provides data centre services and submits voluminous evidence (Wikipedia extracts, separate explanatory documents, five witness statements signed by expert witnesses from within the IT industry) intended to describe and explain the highly specialised technological character of its services which would be subject to a very high degree of scrutiny and regulation. Due to the importance of data centres, the acquisition process of such services would be conducted with a high degree of care and attention exercised by the relevant IT professionals.

The applicant emphasises the clear distinction between its data centre services and the opponent’s software products as well as the differences in terms of nature, purpose, distribution channels, relevant public and producers/providers, etc. and concludes that there would be no possibility of confusion between the applicant and its business and the opponent’s actually marketed goods.

However, as correctly pointed out by the opponent, account should be taken of the fact that the comparison of the goods and services must be based on the wording indicated in the respective lists of goods/services. Any actual or intended use not stipulated in the list of goods/services is not relevant for this comparison since it is part of the assessment of likelihood of confusion in relation to the goods/services on which the opposition is based and against which it is directed; it is not an assessment of actual confusion or infringement (judgment of 16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

In the particular case, the opponent’s specification is not limited to a particular type of software. Moreover, while it is not disputed that the contested services may be the type of services which would typically be provided by a data centre, the opponent is correct in noting that the applicant’s specification is not limited to services provided by a data centre but comprises broadly defined services, i.e. services targeting also the general public (such as internet service provision or cloud computing).

Therefore, the applicant’s arguments and evidence in relation to the above must be set aside.

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 services in Class 38

The opponent’s software is composed of programs, routines, and symbolic languages that control the functioning of the hardware and direct its operation.

The applicant maintains that the opponent’s goods in Class 9 would be too vague and imprecise for the purposes of establishing whether or not there would be similarity and refers to its submitted evidence and to the Office’s Guidelines to back up its statement.

The Opposition Division points out that the opponent’s software/computer programs are not considered vague, as is evident from the Common Communication on the Common Practice on the General Indications of the Nice Class Headings, 28/10/2015. Contrary to the applicant’s view, even if the term software is regarded within the IT industry as not being sufficiently accurate for business purposes, according to the Office’s Guidelines (Part B: Examination, Section 3: Classification) this term (albeit broad and not limited to products of particular type and functions) complies with the requisites of clarity and precision and is therefore acceptable for classification purposes. Furthermore, software is included in the harmonised database TMClass.

Consequently, the opponent’s goods will be compared applying the natural and usual meaning of the terms, without expanding the definitions to attributes that are not specifically mentioned.

The contested services in Class 38 fall under the broad category of telecommunication services (i.e. services that allow people to communicate with one another by remote means), provision of telecommunication equipment and advisory, consultancy, management and information services relating to all the aforesaid services.

Since the 1990s, the boundary between telecommunications equipment and IT software has become blurred as a result of the growth of the internet and its increasing role in the transfer of telecommunications data. Equipment used for telecommunication purposes, like modems, mobile phones, landline telephones, answering machines, fax machines, pagers, routers, etc., is also considered to cover the telecommunications control software that must be in place to successfully support such telecommunications activities (and that is taken into consideration in the course of the provision of advisory, consultancy, management and information services relating to telecommunications services). Any software that provides the ability to perform telecommunication operations can be considered telecommunications control software.

Clearly, there is a link between the above goods in Class 9 and the contested services in Class 38. These goods and services are similar, given their complementary character; although their nature is different, their purpose and distribution channels are the same (judgment of 12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26).

Contested services in Class 39

The contested services in Class 39 (which consist of provision of (physical) storage for electronic data, IT equipment and systems as well as related services and advisory, consultancy, management and information services relating to all the aforesaid services) are typically provided by undertakings belonging to the IT industry. Such services have evolved to cope with the growing demands of the users (not only big corporate clients but also small businesses, etc.) for increased processing and storage capacity. The provision of such services is linked to the physical keeping of electronic data and IT equipment at specific facilities (where such facilities require an appropriate infrastructure, power supply, bandwidth and connectivity, etc.) for the client against a fee, often combined with the provision of actual equipment for IT operations and storage of the organization’s data (such as storage hardware, cables and racks, as indicated in the applicant’s specification). Such services also go hand in hand with ensuring further technical functionalities and capabilities, such as access applications or firewalls (to block malicious traffic) or even data base applications, modelling, and transaction processing. Furthermore, the providers of such services frequently offer their clients customised solutions, service level agreements and combine the (physical) storage of data and IT equipment with cloud computing, IT virtualization technologies, etc. Therefore, in the Opposition Division’s view a certain link between the contested services and the opponent’s software (which is not limited to a particular type of software but includes also firewalls and access applications, for example) cannot be denied. Therefore, and in spite of the fact that the nature of the goods and services is not the same, both the end users and the producers/providers of the goods and services may coincide. Furthermore, they are goods and services that are complementary. For these reasons, these goods and services are considered similar to a low degree.

Contested services in Class 42

The contested cloud computing; cloud template library; cloud services; application service provider [ASP], namely, hosting computer software applications of others; advisory, consultancy, management and information services relating to all the aforesaid services are similar to the opponent’s software in Class 9. This is because in the computer software market it is becoming frequent for consumers, instead of using conventional software or storage facilities, to use services such as these to be delivered on a pay-as-you-go or on a fixed-rent basis. Among the benefits of such an approach is that it removes the need for organisations to install and run applications on their own computers, which reduces the expense of hardware acquisition, provision and maintenance, as well as software licensing, installation and support. Therefore, although the nature of the goods and services is different, they have the same producers/providers, distribution channels and end users. Moreover, they can be in competition.

The contested creating, maintaining and hosting the websites of others; provision of website templates; provision of domain names; IT support services; provision of data backup services; provision of communications backup services; provision of electronic data storage; provision of data, communications and IT systems security; rental of dedicated and virtual servers to third parties; server and data storage hosting; web hosting services; data migration services; digital data storage and retrieval; professional consultancy relating to information technology; disaster recovery services for information technology systems and equipment; engineering services relating to information technology; design and development of electronic data security systems; development of systems for the storage and/or transmission of data; design and development of hardware for multimedia data storing and retrieval; encryption, decryption and authentication of information, messages and data; advisory, consultancy, management and information services relating to all the aforesaid services are commonly provided by the same entities as those involved in the provision of software. Such services target the same consumers and they are offered through the same channels, very frequently in combination with each other. In fact, it is very common in the computer software market for relevant consumers to seek related services (maintenance, updates/upgrades, backups/copies, consultancy in how to use specific software, etc.) via the same distribution channels. Therefore, the foregoing contested services are similar to the opponent’s software in Class 9.

The remaining contested provision of data carriers; leasing/rental/hiring out of data processing systems and computers; leasing of access time to information technology devices; advisory, consultancy, management and information services relating to all the aforesaid services are considered to be similar to a low degree to the opponent’s software. In spite of the fact that the nature of the goods and services is not the same, both the end users and the producers/providers of the goods and services coincide.

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 and services found to be (lowly) similar are directed at the public at large and at professionals.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

3. The signs

4 D	4D HOSTING
Earlier trade mark	Contested sign

The relevant territory is France.

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 consisting of the alphanumerical combination ‘4 D’ which, as pointed out by the applicant, may be associated with several meanings, inter alia, four-dimensional; relating to or denoting a 3D film or video game featuring additional effects such as smells, movement, and simulated weather; the quality of being four dimensional.

Although the definitions referred to by the applicant are indeed in English while the relevant territory is France (as correctly noted by the opponent), in the Opposition Division’s view a significant part of the relevant public will have no difficulties in grasping these concepts because of the common use of the term ‘3D’ (where ‘D’ stands for ‘dimension’, see entry in relation to ‘2D’ and ‘3D’ in Larousse French dictionary online) and because of the identically used word ‘dimension’ in French.

The applicant claims that the opponent’s mark possesses only a low level of distinctiveness without, however, providing reasons for this statement. In the Opposition Division’s view, although the alphanumerical combination ‘4 D’ cannot be considered to be directly descriptive of the relevant goods (software), it may be seen as referring to certain functionalities thereof and, consequently of being of somewhat limited distinctiveness.

The above considerations as regards the possible meanings and distinctiveness of the alphanumerical combination ‘4D’ apply equally to the first element of the contested sign.

The second element of the contested sign, ‘HOSTING’, has become widely used in relation to computing and telecommunications and refers to the storing (of a website, software, data, etc.) on a server or other computer so that it can be accessed through the Internet. This term will be understood by the vast majority of the relevant public (irrespective whether general consumer or specialist working in the IT industry) and has a clear and direct link to all the contested IT and telecommunications services. Therefore, the Opposition Division is of the view that this element is of very limited (if any) distinctiveness.

The Opposition Division considers that in the overall impression of the contested sign the element ‘4D’ will be attributed more trade mark significance than the second element ‘HOSTING’ which will be rather perceived as referring to the services and not as a badge of origin.

Furthermore, the fact that the coinciding element of the signs, ‘4D’ is the first element of the contested sign is of particular relevance. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the earlier mark is entirely reproduced in the first element of the contested sign (the only difference being a space in the earlier mark which neither changes the meaning of the element nor influences the way the sign is perceived, so that this difference is insignificant and will go unnoticed by the consumers). The signs differ in the second element of the contested sign, ‘HOSTING’, which is, however, of secondary impact in the contested sign, as explained above.

Therefore, the signs are similar to a higher than average degree.

Aurally, the earlier mark and the first element of the contested sign will be pronounced as the French words ‘quatre d’ [katr de]. The pronunciation differs in the sound of the second element of the contested sign, ‘HOSTING’, which is, however, of secondary impact in the contested sign, as explained above.

Therefore, the signs are similar to a higher than average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The relevant public will perceive in both signs the concept of ‘4D’ which, although of somewhat limited distinctiveness, still has a bigger impact on the overall impression of the contested sign than the additional element ‘HOSTING’. Consequently, the signs are similar to a higher than average degree.

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

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 claimed, in relation to the ground of Article 8(4) EUTMR and the invoked company name, that the company 4D is a global leader in business software development solutions. According to the opponent, for over 30 years, 4D provides integrated platforms that simplify and speed up the development and deployment of Web, mobile, desktop, and client-server business applications. It is explained that 4D solutions and development tools are used in more than 70 countries, count millions of end users and over 10,000 Independent Software Vendors (ISVs). In its submissions, the opponent makes reference to its ‘flagship product called 4D’. In the Opposition Division’s view, the opponent’s statements amount in essence to a claim that the earlier trade mark enjoys a high degree of recognition among the relevant public in France in connection with, inter alia, software. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

• Extract of principal registration on the trade and companies register with regard to the opponent, accompanied by a translation into English;

• A “Who is” notice of the domain name 4d.fr, accompanied by a translation into English;

• Corporate brochure (dated May 2008) providing information on the opponent and its products;

• Invoices (approx. 100 invoices issued to different companies in France in the period from 2010 up to 2015 and further invoices issued to companies in Italy and Luxembourg);

• Press releases (article of 17/06/2011 published on www.lemondeinformatique.fr: ‘4D delivers a preview of Wakanda to develop in JavaScript’; article of 27/02/2012 published on TendancesIT: ‘The new version of 4D integrates the latest Web technologies’; article of 28/02/2012, published on silicon.fr: ‘4D is enriched with the latest web technologies’; article of 12/07/2013 published on silicon.fr: ‘4D Wakanda 5 shows its maturity’; all of the articles contain information on the opponent’s software solutions);

• Homepages of the website www.4d.com from the website https://web.archive.org/;

• Copy of the homepages of the website www.4d.fr.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Taking into account all the pieces of evidence in combination with one another, it cannot be denied that there is a certain use of the earlier sign by the opponent in the relevant territory. The press articles and the invoices suggest serious marketing efforts and use, and show that the trade mark has a certain presence in the relevant market.

However, enhanced distinctiveness implies that the earlier mark is known by a relevant part of the public for the goods it covers. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, there is no indication of the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. In order to prove that its mark has acquired enhanced distinctiveness the opponent should have filed more evidence showing the market share held by the mark; how intensive the use of the mark has been; the size of the investment made by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods as originating from a particular undertaking, statements from chambers of commerce and industry or other trade and professional associations. As a result, the evidence does not show any awareness of the earlier mark on part of the relevant public.

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 lower than average for the relevant goods.

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.

The contested services were found to be similar (to various degrees) to the opponent’s goods.

The conflicting signs were considered to be similar to a higher than average degree from all three aspects of the comparison on account of the fact that the earlier mark is entirely reproduced in the beginning of the contested sign. Furthermore, in the composition of the contested sign, the element ‘4D’ will be seen by the relevant consumers as the one functioning as a badge of origin, considering the rather descriptive character of the additional element ‘HOSTING’.

Therefore, in the present case, although the public in the relevant territory might detect certain differences between the signs and not confuse them directly, it is likely to associate the signs with each other. Indeed, it is highly likely that the relevant consumer will perceive the contested sign as a sub-brand, a variation of the earlier mark, configured in a different way depending on the type of goods/services that it designates.

The Opposition Division finds that the weak distinctive character of the earlier trade mark does not remove the likelihood of confusion between the marks at issue. Indeed, according to established case-law, the finding of a weak distinctive character for the earlier trade mark does not prevent a finding that there is a likelihood of confusion in the present case. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61; 13/12/2007, T-134/06, Pagesjaunes.com, EU:T:2007:387, § 70). This is the situation in the present case, in view of the high degree of similarity between the conflicting marks and the similarity of the goods and services at issue.

The above finding cannot be called into question by the applicant’s arguments as to the high degree of attention displayed by the relevant public when purchasing the relevant goods and services. First, contrary to the applicant’s assertions, the level of attention that will be displayed by the relevant public is not high for all the goods and services in question, but ranges from average to high, depending on the complexity and the price of the goods and services in question. Moreover, given the degree of similarity found between the marks and of the goods and services concerned, the fact that the level of attention of the relevant public would be above average for some of the goods and services in question is not sufficient to exclude the possibility that that public might believe that the goods in question come from the same undertaking or, as the case may be, from economically-linked undertakings.

The applicant argues that it is recognised by IT professionals by the trade mark ‘4D’ as identifying the applicant’s data centre services business and filed various items of evidence to substantiate this claim.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

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

Likewise, the examples given by the applicant of experts, who would not confuse the opponent’s and the applicant’s products carry little weight in the assessment of likelihood of confusion. Likelihood of confusion means a probability of confusion on the part of the relevant consumer and does not require actual confusion. The average consumer is assumed to be ‘reasonably well informed and reasonably observant and circumspect’, even though in purely factual terms some consumers are extremely observant and well informed, whilst others are careless and credulous (decision of 10/07/2007, R 40/2006-4, SDZ DIRECT WORLD / SAZ, § 32). Therefore, these arguments of the applicant must be dismissed.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s French trade mark registration No 1 370 259. It follows that the contested trade mark must be rejected for all the contested services.

The opposition is also successful insofar as the contested services for which only a low degree of similarity with the opponent´s goods has been considered to exist since, also in that case, the higher than average degree of visual, aural and conceptual similarity between the marks is enough to outweigh the low similarity of those goods and services.

As the earlier French trade mark registration No 1 370 259 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(4) EUTMR.

COSTS

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

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

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Alexandra APOSTOLAKIS

Denitza STOYANOVA-VALCHANOVA

Claudia MARTINI

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Article 109(8) EUTMR (former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be filed within one month of the date of notification of this fixation of costs and will be deemed to have been filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.