OPPOSITION No B 2 619 602

MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Eva Schiller, MIP Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

2266170 Ontario Inc., 2531 Stanfield Road, L4Y 1S4 Mississauga, Canada (applicant), represented by Barker Brettell LLP, 100 Hagley Road, Edgbaston, Birmingham B16 8QQ, United Kingdom (professional representative).

On 28/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 619 602 is upheld for all the contested goods.

2. European Union trade mark application No 13 925 003 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 350.

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As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain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. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. 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 goods of European Union trade mark application No 13 925 003 for the mark ’ ’. The opposition is based on German trade mark registration No 302 010 062 993 for the mark ‘ ’, on international registration designating the European Union No 983 684 for the mark ‘ ’, international registration designating the European Union No 983 683 for the mark ‘ ’ and international registration designating the European Union No 983 681 for the mark ‘ ’. The opponent invoked Article 8(1)(b) EUTMR.

NON-SUBSTANTIATION OF SOME EARLIER MARKS

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark that is not a European Union trade mark, the opposing party must submit a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in Article 7(1) EUTMDR and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Article 7(2)(a)(ii) EUTMDR. Where the evidence concerning the registration of the trade mark is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR. Therefore, oppositions based on international registrations designating the European Union must also be substantiated by the opponent and the following databases are accepted as appropriate evidence, Madrid Monitor (formerly Romarin) and TMview (as far as it contains all the relevant data (26/11/2014, T-240/13, Alifoods, EU:T:2014:994).

In the present case, the notice of opposition filed on 04/12/2015 was accompanied by an extract from the German Patent and Trade Mark Office’s on-line database concerning the earlier German trade mark registration No 302 010 062 993 and on 07/12/2015 the opponent also submitted an English translation of the same. The existence, validity and scope of protection of this earlier mark and the opponent's entitlement to file the opposition on the basis of the same have therefore been appropriately proven. However, no evidence as regards the earlier international trade mark registrations on which the opposition is based was filed either together with the notice of opposition or in the subsequent submission referred to above.

On 29/12/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. Following an extension of the cooling-off period, this time limit expired on 03/12/2017.

On 01/12/2017, the opponent filed further facts, evidence and arguments in support of its opposition but did not submit any evidence concerning the substantiation of the earlier international trade mark registrations, namely international registration designating the European Union No 983 684, international registration designating the European Union No 983 683 and international registration designating the European Union No 983 681. Moreover, the opponent did not make reference to evidence accessible online from a source recognised by the Office.

According to Article 8(1) EUTMDR, if until expiry of the period referred to in Article 7(1) EUTMDR, the opposing party has not submitted any evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, or where the evidence submitted is manifestly irrelevant or manifestly insufficient, the opposition will be rejected as unfounded.

In view of this, the opposition must be rejected as unfounded, as far as it is based on the three earlier marks for which no evidence was submitted. Nevertheless, the assessment of a likelihood of confusion will proceed on the basis of the remaining earlier mark, German trade mark registration No 302 010 062 993.

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.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, coffee replacement; flours and cereal preparations, bread, pastries, edible ices; honey, golden syrup; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice for refreshment, flavorings (flavourings), other than essential oils, for beverages, flavourings other than essential oils, flavorings (flavourings), other than essential oils, for cakes, thickening agents for cooking foodstuffs, binding agents for ice cream (edible ices), biscuits, sweetmeats (candy), bread rolls, sandwiches, cornflakes, iced tea, essences for foodstuffs, except etheric essences and essential oils, meat tenderizers, for household purposes, meat pies, meat gravies, spring rolls, pastries, cereals, husked barley, tea-based beverages, condiments, glucose for food, gluten for food, yeast, coffee flavorings (flavourings), coffee-based beverages, cocoa products, cocoa-based beverages, candy for food, capers, potato flour for food; biscuits, ketchup (sauce), cake powder, cakes, cake paste, corn, milled, corn, roasted, corn flour, maltose, malt for human consumption, marzipan, mayonnaise, farinaceous foods, gruel, with a milk base, for food, nutmeg, flour-milling products, muesli, noodles, breadcrumbs, pastries, pies, pancakes, pizzas, popcorn, puddings, popcorn, quiches, ravioli, dressings for salad, sandwiches, leaven, chocolate, chocolate-based beverages, mustard meal, soya flour, soya sauce, sherbets (ices), spaghetti, powders for ice cream, starch for food, sushi, natural sweeteners, tacos, tapioca flour for food, tomato sauces, pasta, tarts, tortillas, glucose for food, waffles, seasonings, aromatic preparations for food, confectionary, rusks, confectionary for decorating Christmas trees; ready meals and partially cooked products and salads, mostly consisting of rice and pasta, baking powder, cereal products, corn snacks, bread for toasting, bread for sandwiches, all croissants and baguettes, with and without fillings, crispbread, hamburgers, vegetarian burgers, hot dogs, rice snacks, produced using extrusion methods, wheat, rice and corn products for food, corn crisps, popcorn, salt sticks, savoury snacks, pretzels; confectionary, pralines, also filled, sugar foam products, chocolate products, chocolate marshmallows, wine and fruit gums, liquorice (confectionery), sweet spreads for bread, insofar as included in this class, sweets and desserts, pudding powder, red fruit jelly, rice pudding, gnocchi, tortellini, macaroni, lasagne, spaetzle, Maultaschen (Swabian ravioli), fruit sauces, ready-made sauces, remoulade, pepper, dietic foods or food supplements not for medical purposes based on carbohydrates, fibre, with the addition of vitamins, minerals and trace elements individually or in combination, included in this class, pot herbs.

The contested goods are the following:

Class 30: Beverages, namely, coffee, tea, cocoa, cappuccino and hot chocolate; beverage mixes, namely mixes for making coffee, tea, cocoa, cappuccino and hot chocolate beverages; concentrates for making beverages, namely, coffee, tea, cocoa, cappuccino and hot chocolate; hot and cold beverages, namely coffee, tea, cocoa, cappuccino and hot chocolate sold in single-serving container for use in hot beverage brewing machines and cold beverage machines.

As a preliminary remark, an interpretation of the wording of the list of the contested goods is required to determine the scope of protection of these goods.

The term ‘namely’, used in the applicant’s list of goods to show the relationship of individual goods to a broader category, is exclusive and restricts the scope of protection only to the goods specifically listed.

Beverages, namely, coffee, tea, cocoa are (despite the slightly different wording) identically contained in both lists of goods in Class 30.

The contested beverages, namely, cappuccino and hot chocolate are included in the broader categories of the opponent’s coffee-based beverages and cocoa-based beverages respectively in Class 30. Therefore, they are identical.

The contested hot and cold beverages, namely coffee, tea, cocoa, cappuccino and hot chocolate sold in single-serving container for use in hot beverage brewing machines and cold beverage machines are also included in the opponent’s coffee-based beverages, cocoa-based beverages and tea-based beverages respectively in Class 30. Therefore, these goods are identical.

The contested beverage mixes, namely mixes for making coffee, tea, cocoa, cappuccino and hot chocolate beverages are all mixes containing all the substances needed in order to make coffee, tea, cocoa, etc. and to which only liquid has to be added. Consequently, these goods are overlap with, and are thus considered identical to, the opponent’s broader categories coffee, tea, cocoa, respectively.

The contested concentrates for making beverages, namely, coffee, tea, cocoa, cappuccino and hot chocolate are all substances for making coffee, tea etc. from which water has been removed in order to make it stronger, or to make it easier to store. Consequently, these goods are also included in the opponent’s broader categories mentioned above and are thus considered likewise identical to the earlier goods coffee, tea and, cocoa.

b) 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 are directed at the public at large.

The degree of attention is considered to be at most average or even somewhat lower than average, since the goods at issue are frequently purchased and not particularly expensive.

c) The signs

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 common verbal element ‘real’ will be understood by the relevant public as referring to something ‘existing or occurring in the physical world, not fictional; material, factual’ (information extracted from German Dictionary Duden at http://www.duden.de/rechtschreibung/real).

The earlier mark is a figurative mark, consisting of the sole verbal element ‘real’ in a standard, italic bold font, followed by two short strokes reminiscent of a comma and a dash.

As regards the verbal element ‘real’, the applicant, in its observations of 07/02/2017, argues that this element is descriptive because it describes a characteristic of the relevant goods. To support its argument, the applicant cites a decision of the General Court in Case T-798/16 of 30/11/2017 that confirmed a previous Board of Appeal decision – also considering that the losing party did not put forward any arguments which were capable of calling into question the Board of Appeal’s conclusion (see § 20-21 and 288) – to the extent that it held that the word ‘real’ was immediately descriptive of a characteristic of the goods. Nevertheless, first of all, account must be taken of the fact that this cited decision related to the rejection of application for an European Union trade mark registration, where the whole territory of the EU was taken into account; therefore, an obstacle pertaining to only part of the relevant population of the European Union is sufficient to reject such an application. While this decision concerned also the goods at issue in Class 30, however, it referred to the English, Romanian, Portuguese and Spanish- speaking public, while the case at hand concerns the German- speaking public. The decision cited by the applicant, in fact, refers to the meaning of ‘real’ in English (thereto citing the definition in Collins English dictionary, i.e. ‘not artificial or simulated, genuine’, states that this English term has the same meaning in Romanian, Portuguese and Spanish) and comes to the conclusion that for that part of the public the term directly and immediately informs the relevant public that the goods (mainly foodstuffs, grains, agricultural, horticultural and forest products, seeds, natural plants and flowers) are solely composed of the product and do not contain any artificial additives or supplements or have not been prepared or treated in any way.

However, in the present proceedings, as in the case law cited herein below, different from the public taken into account in the decision of the General Court cited by the applicant, the relevant territory is Germany.

Furthermore, according to a body of case law, this element does not describe or create associations in relation to the goods at issue and is thus of normal distinctiveness. In particular, in Case T-816/14 of 24/02/2016 that concerned the exact same relevant (German) public and identical goods (coffee, tea, cocoa), the General Court confirmed that the meaning of the term ‘real’ cannot be regarded as being descriptive of the goods in question for the German average public (24/02/2016, T-816/14 of REAL HANDCOOKED, ECLI:EU:T:2016:93, § 64; 06/10/2014, R 842/2013-4, § 24; see also, with specific reference to the German public, inter alia, B 2 294 182 of 27/07/2017, page 3; B 2 631 920, pages 3-4; B 2 594 730, pages 8-9; B 2 479 460, page 18; B 2 338 443, page 4; B 2 194 895, page 6). Therefore, this argument of the applicant must be set aside.

In this regard, the applicant also refers to a Cancellation Division Decision No 5 779 C of 29/10/2013 that has held the word ‘real’ either non distinctive or weak; in this decision a reference was made to decision of the German and UK Trade Mark Offices. However, first of all, the Opposition Division notes that this finding on the distinctiveness of the word ‘real’ was annulled in appeal by the subsequent Board of Appeal decision of 16/03/2015 (in proceedings No R 2285/2013-4, see in particular § 28 page 8). Furthermore, account must be taken of the fact that later and higher instance decisions amongst which (as cited above) the judgement of 24/02/2016 of the General Court in Case T-816/14 (related to the Board of Appeal decision of 06/10/2014, in Case R 842/2013-4) with specific reference to identical (Class 30) In addition, the applicant has not even attached this decision of the German Trade mark office which is merely mentioned in the cited Cancellation decision of 2013 and which relates in any event to the distinctiveness in the context of separate and national proceedings concerning different parties and different legal and factual elements. It is for any party relying on a claim, to argue and provide evidence in the circumscribed context of each set of proceedings to which it is a party; it cannot merely claim to adduce that evidence by virtue of the recognition of it, including for the same mark, in a separate administrative procedure (by analogy, 23/10/2015, T-597/13, dadida / CALIDA, EU:T:2015:804, § 43-45). For the sake of completeness, it must also be noted that decisions of national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Also, there might be differences between the substantive and procedural conditions applicable in national proceedings and those applied in opposition proceedings before the Office. Consequently, the probative value of national decisions should be assessed on the basis of their contents and it may vary depending on the case.

In view of the above, it follows that the applicant’s arguments in this regard must be dismissed.

In light of all the foregoing, the element ‘real’ must be considered of normal distinctiveness in relation to the goods at issue for the relevant public in Germany.

As regards the remaining elements of the earlier mark, namely the graphic features (the very minor stylisation of the verbal element as well as the comma and dash), they clearly play a secondary role within the overall impression of the earlier mark and will be perceived as being of a decorative nature.

Account must be taken of the fact that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, the Opposition Division agrees with the applicant that 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. Therefore, the comma and dash, placed at the end of the mark will not have much impact and will certainly not significantly catch the attention of the relevant public, who will focus on the verbal element ‘real’. Therefore ‘real’ is the more distinctive element of the earlier mark which will also have the most impact on consumers who will refer to the earlier mark by this verbal element, rather than describing its figurative aspects.

The contested sign is a complex sign, composed of the verbal element ‘RealCup’ depicted - in a fairly standard, handwritten, black italic and bold font - against the image of a cup, within a black basic circular device and surrounded by a black, partial circle as well as by the verbal elements, ‘POWERED BY’ and ‘SINGLE SERVE CUPS’. The latter verbal elements are depicted in a significantly smaller size and placed, along a curve, respectively above and underneath the component ‘RealCup’.

The meaning and the distinctiveness of the verbal element ‘Real’ is as detailed above. As regards the verbal element ‘Cup’, despite the fact that this English term might be understood by some as a trophy, bearing in mind that the usual term for this English loan word is ‘Pokal’ and that the goods concerned have no connection to games or trophies, a non-negligible part of the public under analysis will receive it as fanciful and meaningless; thus it is normally distinctive for a non-negligible part of the relevant public under analysis. Furthermore, the verbal components ‘POWERED BY’ and ‘SINGLE SERVE CUPS’ are meaningless expressions and thus of normal distinctiveness.

While it is acknowledged that ‘Realcup’ in the contested sign is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). In the present case, this is further enhanced due to the use of capital letters for the letters ‘R’ and ‘C’, respectively. Therefore, the public is likely to perceive the term ‘Real’ within the component ‘RealCup’.

Furthermore, the image of a cup in relation to the goods at issue (beverages and concentrates and mixes for making beverages) lacks distinctiveness; the basic circular shapes will be perceived as being of a merely decorative nature and thus also lack distinctiveness.

Finally, it is to be noted that the element ‘RealCup’, due to its bigger size and central position within the contested sign, is more dominant (visually eye-catching) than the remaining elements. Therefore, contrary to the applicant’s view that ‘POWERED BY’ would be the dominant element by which consumers will refer to the contested sign, the Opposition Division considers that the element ‘RealCup’ is the element that primarily will catch the attention of consumers.

Since a non-negligible part of consumers is likely to perceive both the word ‘Cup’ and the verbal components ‘POWERED BY’ and ‘SINGLE SERVE CUPS’ in the contested sign as meaningless and fanciful terms or expressions for the reasons outlined above, and since it is not necessary to establish that there is a likelihood of confusion for the whole of the relevant public (20/07/2017, T-521/15, Diesel v EUIPO, EU:T:2017:536, § 69), the Opposition Division finds it appropriate to focus the comparison of the signs on this part of the public in the relevant territory.

Visually, the signs coincide in the more distinctive element, ‘real’, of which the earlier mark is composed, present at the beginning of the more dominant element, ‘RealCup’, in the contested sign. They differ in the secondary visual aspects of the earlier mark, on the one hand, and the additional verbal elements (i.e. ‘****Cup’, placed at the end of the more dominant element, as well as ‘POWERED BY’ and ‘SINGLE SERVE CUPS’ depicted in much smaller size and which are less eye-catching than the element ‘RealCup’) and the contested sign’s figurative elements (which however lack distinctiveness).

Nevertheless, the signs must be considered visually similar to a low degree overall.

Aurally, the pronunciation of the signs coincides in the sound of the word ‘REAL’, constituting the sole element of the earlier mark and present at the beginning of the verbal element ‘REALCUP’ of the contested sign which, for the reasons outlined above, is the element to which the relevant public will attach the most importance. The pronunciation differs in the sound of the word ‘CUP’ in this verbal element of the contested sign.

However, as regards the additional expressions ‘POWERED BY’ and ‘SINGLE SERVE CUPS’, they have secondary positions within the contested sign. In this respect, even if the expression ‘POWERED BY’ is present at the top of the contested sign, it is depicted in much smaller size and the element ‘REALCUP’, which is much larger and positioned in the middle of the sign, is its more dominant element. Therefore, taking into account that the additional expressions both have secondary positions within the contested sign and that consumers naturally tend to shorten long marks in order to reduce them to the elements that they find easiest to refer to and remember (see, to that effect, 07/02/2013, T-50/12, Metro Kids Company, EU:T:2013:68, § 41; 30/11/2011, T-477/10, SEⓒSports Equipment, EU:T:2011:707, § 55; 09/04/2013, T-337/11, Giuseppe by Giuseppe Zanotti, EU:T:2013:157, § 36; 28/09/2016, T-539/15, SILICIUM ORGANIQUE G5 LLR-G5 (fig.) / Silicium Organique G5- Glycan 5-Si-Glycan-5-Si-G5 et al., EU:T:2016:571, § 56), it is highly probable that a significant proportion of the relevant consumers will omit the additional expressions ‘POWERED BY’ and ‘SINGLE SERVE CUPS’ when referring to the contested sign.

Therefore, the signs must be considered to be aurally similar at least to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. To the extent that both signs refer to the same concept of something existing, not fictional, the signs are conceptually similar to at least an average degree. The additional, distinctive, verbal elements of the contested sign have no meaning for the part of the public under analysis and can thus not significantly influence the assessment of the conceptual similarity of the signs. Furthermore, although the public will also perceive the meaning of the image of the cup in the contested sign, this will not establish any conceptual dissimilarity between the signs, as this element is non-distinctive in relation to the goods concerned and cannot indicate the commercial origin.

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

d) 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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, for the reasons outlined in detail above, the word ‘real’ as such cannot reasonably be regarded as being descriptive of the goods in question from the perspective of the public in the relevant territory and the earlier trade mark as a whole has no meaning. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weaker elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The signs coincide in the more distinctive and sole verbal element of the earlier mark, which forms also the beginning of the dominant element of the contested sign that is also likely to first catch the attention of consumers. In view of this, the signs have been found visually similar to a low degree and, aurally conceptually similar to at least an average degree. The goods are identical and the degree of attention of the consumers is at most average.

Admittedly, there are differences between the signs that will not go unnoticed. However, these differences are not sufficient to counteract the similarities as their impact in the present case is not such as to enable the part of the public under analysis to safely distinguish between them in the context of identical goods, even where the degree of attention will be not lower than average.

Account must be 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).

In this respect, 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 covered are from the same or economically linked undertakings. In the present case, it is conceivable that the relevant consumer will perceive the contested sign as a sub-brand, or a variation of the earlier mark, configured in a different way according to the type of goods that it designates.

Therefore, despite the differences between the signs, which are, however, incapable of maintaining a sufficient distance between the overall impressions given by the signs in view of the coincidence in the verbal element ‘real’, a likelihood of association between the signs cannot be excluded.

In its observations, the applicant refers to previous decisions to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. However, in the present case, the previous decisions referred to by the applicant are not relevant to the present proceedings. In particular, in Case T-402/14 cited by the applicant, it concerned signs where the common element, ‘acqua’ was descriptive and devoid of distinctiveness in relation to the services in question (i.e. treatment and distribution of water; building and exploitation of water plants and studies and projects related to the aforesaid); in addition it concerned a professional public only. In Case R 04710/2015-4, it concerned two highly stylised signs, different from the case at hand where the stylisation of the common element was fairly standard and would be perceived as decorative. In the decision of 23/01/2013 in opposition proceedings B 2 010 912 to which the applicant also refers, the relevant territory was different (it concerned the whole European Union territory) and the contested sign was a word mark, in particular a slogan of which the term ‘real’ was the last term and not (part of) the dominant element (as in the present case). In addition, the goods were different (it concerned clothing and entertainment services in Classes 25 and 41) from those in the case at hand. Finally, in the decision of 11/12/2015 in opposition proceedings B 2 141 565 cited by the applicant, the contested sign was a word mark consisting of three verbal elements and the common term ‘real’ was not the dominant element within the sign; also the goods and services differed (it concerned goods and services in Classes 9, 16 and 42, as opposed to Class 30 goods in the present case).

In view of the above, it follows that the applicant’s arguments in this regard must be dismissed.

In its observations, the applicant also mentions that there are several other earlier marks incorporating the word ‘real’ on the EUTM register so that the opponent would only be able to claim a narrow scope of protection, if any, for its earlier mark. However, no evidence has been attached to support this argument. In any event, it must be noted that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the applicant has not demonstrated that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘real’. Under these circumstances, this claim of the applicant must also be set aside.

Considering all the foregoing, there is a likelihood of confusion on the part of the public under analysis in the relevant territory. As stated above in section c) of this decision, a likelihood of confusion for only a non-negligible part of the relevant public of the relevant territory is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 010 062 993. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its extensive use and reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

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. In the present case, the opponent did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Sam GYLLING

Edith Elisabeth VAN DEN EEDE

Francesca CANGERI SERRANO

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.