OPPOSITION No B 2 569 591

The Alpen House ULC, 2700, 10155 – 102 Street, T5J 4G8 Edmonton, Alberta, Canada (opponent), represented by Fieldfisher (Germany) LLP, Am Sandtorkai 68, 20457 Hamburg, Germany (professional representative)

a g a i n s t

Allflex Europe, Zi de Plague - Route des Eaux, 35500 Vitre, France (applicant), represented by Cabinet Vidon Marques & Juridique PI, 16B, rue Jouanet - B.P. 90333, Technopôle Atalante, 35703 Rennes Cedex 7, France (professional representative).

On 30/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 569 591 is partially upheld, namely for all the contested services, with the exception of the following:

Class 42: Quality control for certification and guarantee purposes; quality control of products for the purpose of certification; testing, analysis and evaluation of goods and services of others for the purpose of certification; control of the provenance of foodstuffs and animals for certification and guarantee purposes; quality control of foodstuffs for certification, guarantee and identification purposes; control of foodstuffs; awarding of compliance certificates and quality labels (quality control); quality assessment (quality control); qualitative evaluation relating to the identification of animals; technical studies provided by engineers, auditing and evaluation of foodstuffs for animals for the purpose of awarding a label (quality control); surveying; testing of foodstuffs for animals; scientific laboratory services for identifying, evaluating and checking foodstuffs for animals; providing of technical information and advice for consumers relating to the identification and quality of foodstuffs for animals; providing of technical information and advice relating to the composition, quality, origin, checking and traceability of foodstuffs; providing of technical information and advice relating to the nutritional and energy values of foodstuffs for animals; providing of technical information and advice relating to the composition and combination of foodstuffs for animals; analysis of a computerised system for the management of animals; design of computer software for the identification of foodstuffs; design of computer software and computer programs in the field of identifying animals, animal management and/or genomic analysis; conversion of computer programs and data (except physical conversion) in the field of identifying animals, animal management and/or genomic analysis; conversion of data from a physical medium to an electronic medium in the field of identifying animals, animal management and/or genomic analysis; research and development of new products, for others, in the field of identifying animals, animal management and/or genomic analysis; technical project studies in the field of identifying animals, animal management and/or genomic analysis; development (design), installation, maintenance, updating or rental of computer software in the field of identifying animals, animal management and/or genomic analysis; design, development and maintenance of databases in the field of identifying animals, animal management; electronic storage of data relating to genomic analysis; design of data storage systems relating to genomic analysis; genetic fingerprinting.

2. European Union trade mark application No 14 015 309 is rejected for all the contested services, with the exception of the ones listed above (i.e. part of Class 42), in relation to which it may proceed.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 14 015 309 .

The opposition is based on the following earlier rights:

 European Union trade mark registration No 10 846 038 for the word mark ‘ADENA’;

 European Union trade mark registration No 11 103 637 for the word mark ‘ADENA GOURMET’.

The opponent invoked Article 8(1)(b) EUTMR in relation to both earlier rights.

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 services

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

EUTM registration No 10 846 038

Class 41: Education; providing of training; entertainment; sporting and cultural activities; organization, presentation and production of shows, live performances and audience participation events; organizing, arranging and conducing tournaments, competitions, games, quizzes, fun days and sporting events; cooking classes for educational and entertainment purposes; food and drink tastings for educational and entertainment purposes; information and advice regarding the aforementioned services.

Class 44: Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; information and advice regarding the aforementioned services.

EUTM registration No 11 103 637

Class 35: Advertising; business management; business administration; office functions; accounting; accounts (drawing up of statements of -); administrative processing of purchase orders; advertising by mail order; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; auctioneering; auditing; bill-posting; business appraisals; business consultancy (professional -); business information; business inquiries; business investigations; business management and organization consultancy; business management assistance; business management consultancy; business management of hotels; business management of performing artists; business management of sports people; business organization consultancy; business research; commercial administration of the licensing of the goods and services of others; commercial information agencies; commercial information and advice for consumers [consumer advice shop]; commercial or industrial management assistance; compilation of information into computer databases; compilation of statistics; cost price analysis; data search in computer files for others; demonstration of goods; direct mail advertising; dissemination of advertising matter; distribution of samples; document reproduction; economic forecasting; efficiency experts; employment agencies; fashion shows for promotional purposes (organization of -); file management (computerized -); import-export agencies; invoicing; layout services for advertising purposes; management (advisory services for business -); marketing; marketing research; marketing studies; modelling for advertising or sales promotion; news clipping services; office machines and equipment rental; on-line advertising on a computer network; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; outsourcing services [business assistance]; payroll preparation; personnel management consultancy; personnel recruitment; photocopying services; presentation of goods on communication media, for retail purposes; price comparison services; procurement services for others [purchasing goods and services for other businesses]; production of advertising films; psychological testing for the selection of personnel; public relations; publication of publicity texts; publicity; publicity agencies; publicity columns preparation; publicity material rental; radio advertising; relocation services for businesses; rental of advertising space; rental of advertising time on communication media; rental of photocopying machines; rental of vending machines; sales promotion for others; secretarial services; shop window dressing; shorthand; sponsorship search; systemization of information into computer databases; tax preparation; telemarketing services; telephone answering for unavailable subscribers; television advertising; transcription; typing; updating of advertising material; word processing; writing of publicity texts; retail services related to butcher shops; retail services related to gourmet food shops; information and advice regarding the aforementioned services.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; academies [education]; amusement parks; amusements; animal training; arranging and conducting of colloquiums; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of workshops [training]; arranging of beauty contests; boarding schools; booking of seats for shows; bookmobile services; calligraphy services; casino facilities [gambling] (providing -); cinema presentations; circuses; club services [entertainment or education]; coaching [training]; conducting fitness classes; correspondence courses; disc jockey services; discotheque services; dubbing; education information; educational examination; electronic desktop publishing; entertainer services; entertainment information; fashion shows for entertainment purposes (organization of -); film production, other than advertising films; gambling; game services provided on-line from a computer network; games equipment rental; golf facilities (providing -); gymnastic instruction; health club services [health and fitness training]; holiday camp services [entertainment]; language interpreter services; layout services, other than for advertising purposes; lending libraries; live performances (presentation of -); microfilming; modelling for artists; movie studios; museum facilities (providing -) [presentation, exhibitions]; music composition services; music-halls; news reporters services; night clubs; nursery schools; operating lotteries; orchestra services; organization of balls; organization of competitions [education or entertainment]; organization of exhibitions for cultural or educational purposes; organization of shows [impresario services]; organization of sports competitions; party planning [entertainment]; personal trainer services [fitness training]; photographic reporting; photography; physical education; practical training [demonstration]; production of music; production of radio and television programmes; production of shows; providing amusement arcade services; providing karaoke services; providing on-line electronic publications, not downloadable; providing sports facilities; publication of books; publication of electronic books and journals on-line; publication of texts, other than publicity texts; radio entertainment; recording studio services; recreation facilities (providing -); recreation information; religious education; rental of audio equipment; rental of camcorders; rental of cine-films; rental of lighting apparatus for theatrical sets or television studios; rental of movie projectors and accessories; rental of radio and television sets; rental of show scenery; rental of skin diving equipment; rental of sound recordings; rental of sports equipment, except vehicles; rental of sports grounds; rental of stadium facilities; rental of stage scenery; rental of tennis courts; rental of video cassette recorders; rental of videotapes; scriptwriting services; sign language interpretation; sport camp services; subtitling; television entertainment; theatre productions; ticket agency services [entertainment]; timing of sports events; toy rental; translation; tuition; videotape editing; videotape film production; videotaping; vocational guidance [education or training advice]; vocational retraining; writing of texts, other than publicity texts; zoological garden services; organization, presentation and production of shows, live performances and audience participation events; organizing, arranging and conducing tournaments, competitions, games, quizzes, fun days and sporting events; cooking classes for educational and entertainment purposes; food and drink tastings for educational and entertainment purposes; information and advice regarding the aforementioned services.

Class 43: Services for providing food and drink; accommodation bureaux [hotels, boarding houses]; accommodation reservations (temporary -); bar services; boarding for animals; boarding house bookings; boarding houses; cafés; cafeterias; canteens; catering (food and drink -); day-nurseries [crèches]; holiday camp services [lodging]; hotel reservations; motels; providing campground facilities; rental of chairs, tables, table linen, glassware; rental of cooking apparatus; rental of drinking water dispensers; rental of meeting rooms; rental of temporary accommodation; rental of tents; rental of transportable buildings; restaurants; retirement homes; self-service restaurants; snack-bars; tourist homes; bar, café, cafeteria, restaurant, self-service restaurant and take-out restaurant services; catering services for providing food and drink; providing banquet and social function facilities for special occasions; rental of crockery, cutlery, table linen, glassware, cooking apparatus and cooking utensils, tables, chairs, table decorations and tents; information and advice regarding the aforementioned services.

The contested services are the following:

Class 35: Consumers (commercial information and advice for -) [consumer advice shop]; demonstration of goods; providing of commercial information to consumers relating to the nutritional and energy values of foodstuffs for animals; providing of commercial information to consumers relating to the composition and combination of foodstuffs for animals; providing of commercial information and advice to consumers relating to the composition, quality, origin, checking and traceability of foodstuffs; organisation of promotional and advertising operations to obtain customer loyalty; organisation of commercial operations for encouraging customer loyalty; presentation of goods on communication media, for retail purposes; retailing or wholesaling of apparatus and instruments for the identification of animals, apparatus and instruments for taking tissue samples from animals, apparatus and instruments for the identification of foodstuffs for animals; sale via the internet of apparatus and instruments for the identification of animals, apparatus and instruments for taking tissue samples from animals, apparatus and instruments for the identification of foodstuffs for animals; import and export of apparatus and instruments for the identification of animals, apparatus and instruments for taking tissue samples from animals, apparatus and instruments for the identification of foodstuffs for animals; management of customer accounts in the field of animal identification and/or genomic analysis; computerised file management; collection and systematic ordering of data in a central file; compilation of information in the field of animal identification and/or genomic analysis; computerised file management; management of computer databases in the field of animal identification, animal DNA and/or genomic analysis; compilation and systemisation of information in the field of animal identification, animal DNA and/or genomic analysis, in computer databases.

Class 42: Quality control for certification and guarantee purposes; quality control of products for the purpose of certification; testing, analysis and evaluation of goods and services of others for the purpose of certification; control of the provenance of foodstuffs and animals for certification and guarantee purposes; quality control of foodstuffs for certification, guarantee and identification purposes; control of foodstuffs; awarding of compliance certificates and quality labels (quality control); quality assessment (quality control); qualitative evaluation relating to the identification of animals; technical studies provided by engineers, auditing and evaluation of foodstuffs for animals for the purpose of awarding a label (quality control); surveying; testing of foodstuffs for animals; scientific laboratory services for identifying, evaluating and checking foodstuffs for animals; providing of technical information and advice for consumers relating to the identification and quality of foodstuffs for animals; providing of technical information and advice relating to the composition, quality, origin, checking and traceability of foodstuffs; providing of technical information and advice relating to the nutritional and energy values of foodstuffs for animals; providing of technical information and advice relating to the composition and combination of foodstuffs for animals; analysis of a computerised system for the management of animals; design of computer software for the identification of foodstuffs; design of computer software and computer programs in the field of identifying animals, animal management and/or genomic analysis; conversion of computer programs and data (except physical conversion) in the field of identifying animals, animal management and/or genomic analysis; conversion of data from a physical medium to an electronic medium in the field of identifying animals, animal management and/or genomic analysis; research and development of new products, for others, in the field of identifying animals, animal management and/or genomic analysis; technical project studies in the field of identifying animals, animal management and/or genomic analysis; development (design), installation, maintenance, updating or rental of computer software in the field of identifying animals, animal management and/or genomic analysis; design, development and maintenance of databases in the field of identifying animals, animal management; laboratory research and analysis services; scientific analysis in laboratories; preparation of biological samples for testing and analysis in research laboratories; biological research; bacteriological research; chemical research; scientific and biological research and analysis for checking the composition, quality, origin and traceability of foodstuffs and/or the DNA of animals; computer-aided scientific research, testing and analysis; design and development of analysis and testing methods; biological testing for scientific research purposes; technical data analysis relating to the DNA of animals; biological analysis; structural and functional analysis of genomes; genetic research; scientific research relating to genetics; DNA tests for scientific research; electronic storage of data relating to genomic analysis; design of data storage systems relating to genomic analysis; genetic fingerprinting.

Class 44: Veterinary services; implantation of apparatus and instruments for the identification of animals; taking of tissue samples from animals; taking of samples from animals; storage of animal samples; performing biopsies on animals; biological testing of animals for veterinary purposes; analysis of the body composition of animals for veterinary purposes; genetic testing of animals; genetic screening of animals; analysis of animal DNA.

Contested services in Class 35

The contested consumers (commercial information and advice for -) [consumer advice shop]; demonstration of goods; computerised file management are identically contained (including synonyms) in earlier EUTM No 11 103 637.

The contested providing of commercial information to consumers relating to the nutritional and energy values of foodstuffs for animals; providing of commercial information to consumers relating to the composition and combination of foodstuffs for animals; providing of commercial information and advice to consumers relating to the composition, quality, origin, checking and traceability of foodstuffs fall within the broad category of the opponent’s commercial information and advice for consumers [consumer advice shop] of earlier EUTM No 11 103 637 and are therefore identical.

The contested organisation of promotional and advertising operations to obtain customer loyalty; organisation of commercial operations for encouraging customer loyalty; presentation of goods on communication media, for retail purposes fall within the broad category of the opponent’s advertising of earlier EUTM No 11 103 637 and are therefore identical.

The contested management of customer accounts in the field of animal identification and/or genomic analysis overlaps with the opponent’s business management of earlier EUTM No 11 103 637 and are therefore identical.

The contested collection and systematic ordering of data in a central file; compilation of information in the field of animal identification and/or genomic analysis; computerised file management; management of computer databases in the field of animal identification, animal DNA and/or genomic analysis; compilation and systemisation of information in the field of animal identification, animal DNA and/or genomic analysis, in computer databases fall within the broad category of the opponent’s office functions of earlier EUTM No 11 103 637 and are therefore identical.

The retail services related to specific goods are considered similar to retail services related to other goods. These services have the same nature, since both are retail services, have the same purpose of allowing consumers to conveniently satisfy different shopping needs and the same method of use. Furthermore, the contested retailing or wholesaling of apparatus and instruments for the identification of animals, apparatus and instruments for taking tissue samples from animals, apparatus and instruments for the identification of foodstuffs for animals; sale via the internet of apparatus and instruments for the identification of animals, apparatus and instruments for taking tissue samples from animals, apparatus and instruments for the identification of foodstuffs for animals are similar to the opponent’s retail services related to butcher shops; retail services related to gourmet food shops of earlier EUTM No 11 103 637.

The contested import and export of apparatus and instruments for the identification of animals, apparatus and instruments for taking tissue samples from animals, apparatus and instruments for the identification of foodstuffs for animals are import-export agency services. As such, they are similar to the opponent’s business management of earlier EUTM No 11 103 637 because they can coincide in distribution channels/points of sale, they can target the same consumers and can originate from the same kind of undertakings.

Contested services in Class 42

The contested services consist in part of testing, authentication and quality control, and related services (e.g. provision of information and advice in relation to them), others are science and technology services. Within this last category, some of the services are technical research relating to automatic identification systems and others are natural science services. Lastly, a few of the services in this class are IT services related to some of the contested services previously referred to in this same class.

The contested laboratory analysis services; scientific analysis in laboratories; design and development of analysis and testing methods; technical data analysis relating to the DNA of animals; biological analysis; structural and functional analysis of genomes are similar to at least a low degree to the opponent’s medical services in Class 44 since they can be complementary, can originate from the same kind of undertakings, can target the same consumers and coincide in distribution channels.

The contested services laboratory research services; preparation of biological samples for testing and analysis in research laboratories; biological research; bacteriological research; chemical research; scientific and biological research and analysis for checking the composition, quality, origin and traceability of foodstuffs and/or the DNA of animals; computer-aided scientific research, testing and analysis; biological testing for scientific research purposes; genetic research; scientific research relating to genetics; DNA tests for scientific research are mainly scientific research services, and they are similar to at least a low degree to the opponent’s education; providing of training in Class 41 of EUTM No 11 103 637, since they can coincide in purpose and distribution channels and can come from the same kind of undertakings (e.g. universities).

Some of the remaining contested services in Class 42 are testing, authentication and quality control-related services, offered by highly specialised companies that carry out studies in relation to the characteristics of goods, in order to evaluate if they fulfil certain requirements, conditions or characteristics. Others are for the design of computer software, software-related services (e.g. maintenance), services related to the storage/treatment/management of data, analysis of specific kinds of computer systems, various kinds of data-conversion services, research and development of new products, and technical project studies, all of them for very specific purposes (e.g. genomic analysis).

The opponent’s services in Class 35 include mainly services rendered by persons or organisations, principally with the object of helping in the working or management of a commercial undertaking, or in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services. The opponent’s services in Class 41 are mainly services related to educational, entertainment or sport-related purposes (and the provision of advice in relation to them) and those in Class 43 include mainly services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation. Lastly, the services in Class 44, are mainly those of medical care, hygienic and beauty care given by persons or establishments to human beings and animals; it also includes services relating to the fields of agriculture, horticulture and forestry.

Therefore, according to the definitions above, all the remaining contested services in Class 42 are dissimilar to the opponent’s services, since they differ in natures, purposes, methods of use, distribution channels and points of sale. They are neither complementary nor in competition, do not target the same consumers and are not likely to come from the same kind of undertakings.

Contested services in Class 44

Veterinary services; implantation of apparatus and instruments for the identification of animals; taking of tissue samples from animals; taking of samples from animals; performing biopsies on animals are identical to the opponent’s veterinary services of earlier EUTM No 10 846 038, either because they are identically contained in both lists (including synonyms) or because the opponent’s services overlap with the contested services.

The rest of the contested services in this class are similar to at least a low degree to the opponent’s veterinary services, since they can be complementary, can originate from the same kind of undertakings, can target the same consumers and coincide in distribution channels.

b) Relevant public — degree of attention

In the present case, the services found to be identical or similar to varying degrees are partly directed at professionals (e.g. preparation of biological samples for testing and analysis in research laboratories) and partly at the public at large (e.g. veterinary services).

The degree of attention paid during their purchase is deemed to vary from average to high. A high degree likely to be paid in relation to services that can be expensive and/or are not frequently purchased and/or involve important consequences for the health and/or can have an important impact for the companies. This is the case of, for instance, biological analysis.

c) The signs

EUTM No 10 846 038 ADENA EUTM No 11 103 637 ADENA GOURMET
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 word ‘gourmet’ is universally used to denote a connoisseur of food and drink. It is an ordinary, everyday word used in the food and drink industry, to which the conflicting services belong, or the kind of goods in relation to which the services are offered (12/12/2003, R 229/2003‑2, XAVIER GOURMET (FIG. MARK) / GOURMET, § 22). Although originally of French origin, the word ‘gourmet’ will be understood across the European Union due to its widespread use. In many Member States the word ‘gourmet’ has even found its way into the national language (e.g. English, German, Portuguese, Spanish). The word ‘gourmet’ will be understood as referring to gastronomy and the cultural idea of refined taste and culinary excellence (25/07/2018, R 83/2018‑2, GOURMET (fig.) / ORIGINE GOURMET (fig.)). In addition, this term can be seen as evocative of positive characteristics of the services (i.e. refined, excellent, superior, delicate, etc.).

To sum up, it is considered that ‘GOURMET’ is completely void of distinctive character in relation to the services that are related to food and/or drinks (e.g. some of the services in Class 43) and has a character of lower-than-average distinctiveness for the rest of the services covered by earlier EUTM No 11 103 637, in relation to which it can be seen as allusive or evocative of the positive characteristics, as explained above. In all these scenarios, the term is of reduced impact within the sign.

The word ‘ADENA’ in all the signs involved is meaningless and of average distinctive character for all the services concerned. In earlier EUTM No 11 103 637, this term constitutes the most or only distinctive element in the mark, depending on the specific services.

As regards the stylisation of the contested sign, despite the small variations in colour and typeface, the letters are in rather standard upper case, and no particular attention will be paid to it.

Lastly, 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 word ‘ADENA’ in earlier EUTM No 10 846 038 is the element causing a stronger impact.

The contested sign and earlier EUTM No 10 846 038 are visually quasi-identical, since they are composed of the identical verbal element ‘ADENA’, only differentiated by a slightly stylised typeface (i.e. the missing line in letter ‘E’ is a kind of stylisation frequently used in the market, and naturally completed by the consumers perceiving the mark visually).

They are aurally identical. Since neither of them has a meaning for the public in the relevant territory, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

The contested sign and earlier EUTM No 11 103 637 coincide in the verbal element and the sound of the letters ‘ADENA’, which constitutes the entire contested sign and the element with a greater impact (as detailed above) of the earlier mark. They differ in the verbal element ‘GOURMET’ of the earlier mark, which is of reduced impact (as explained above). Therefore, they are considered visually and aurally similar to a high degree. Conceptually, although the public in the relevant territory will perceive the meaning of ‘GOURMET’ in the earlier mark, the contested sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

d) Distinctiveness of the earlier marks

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 their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of an element considered non-distinctive or of low distinctive character in one of the earlier marks, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

The services compared are identical or similar, to varying degrees, except for part of the contested services in Class 42, which are dissimilar. They partly target the public at large and partly professionals. The degree of attention paid during their purchase is deemed to vary from average to high.

The earlier EUTM No 10 846 038 and the contested sign are visually quasi-identical, aurally identical and a conceptual comparison is not possible. Earlier EUTM No 11 103 637 and the contested sign are visually and aurally similar to a high degree, and not conceptually similar.

Both earlier marks have an average degree of distinctiveness.

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

The contested sign and the earlier EUTM No 10 846 038 ‘ADENA’ can only be differentiated at a visual level, by consumers perceiving the typeface of the contested mark. However, it is not stylised enough as to contribute to indicating a commercial origin of the services, or to clearly differentiate the marks. It is therefore considered that a likelihood of confusion clearly exists between the contested sign and earlier EUTM No 10 846 038 ‘ADENA’.

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). In this regard, it is considered that the coincidences between the contested sign and earlier EUTM No 11 103 637, together with the identity or similarity to varying degrees of part of the services involved, are clearly enough to counteract their dissimilarities (found in the element of reduced impact ‘GOURMET’, and in the non- striking typeface of the contested sign) and for a finding of likelihood of confusion in relation to those services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s EUTM No 10 846 038 and EUTM No 11 103 637.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar, to varying degrees, to those of the earlier trade marks.

The opposition is successful insofar as the services that are similar only to a low degree, since the strong similarities between the marks are clearly enough to outweigh the low similarity of those services.

The rest of the contested services are dissimilar (i.e. part of the contested services in Class 42). As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Manuela RUSEVA

María del Carmen SUCH SANCHEZ

Sofia SACRISTAN MARTINEZ

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.