OPPOSITION No B 2 656 729

OPPOSITION DIVISION

OPPOSITION No B 2 656 729

Real Automovil Club de España, Isaac Newton, 4 Parque Tecnológico de Madrid (PTM), 28760 Tres Cantos (Madrid), Spain (opponent), represented by Elzaburu, S.L.P., Miguel Angel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Heinz-Rüdiger Schimanko, Tiefer Graben 30, 1010 Wien, Austria (applicant), represented by Heinz-Dietmar Schimanko, Reisnerstr. 20/4, 1030 Wien, Austria (professional representative).

On 31/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 656 729 is partially upheld, namely for the following contested goods and services:

Class 4: Fuels (including motor spirit).

Class 9: Recorded content.

Class 12: Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances; Water vehicles; Amphibious vehicles.

Class 16: Printed matter.

Class 35: Professional business consulting; Business management and organization consultancy; Business organisation consulting; Office functions; Personnel management consultancy; Procurement for others (purchasing of goods and services for other businesses); Opinion polling; Business research; Business information; Commercial information agencies; Economic forecasting; Compilation of statistics; Business administration and business management services.

Class 39: Travel arrangement; Travel arrangement; Transport; Packaging and storage of goods.

Class 41: Education; Providing of training; Ongoing education; Entertainment; Sporting and cultural activities; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of symposiums; Arranging and conducting of seminars; Workshops (Arranging and conducting of -) [training]; Arranging and conducting of colloquiums; Arranging and conducting of concerts; Arranging of exhibitions for cultural or educational purposes; Organization of balls; Arranging of beauty contests; Providing of shows for entertainment purposes; Performances (Presentation of live -); Organisation and staging of competitions; Organisation of sports competitions; Arranging and conducting of sporting events; Arranging and conducting of trips by means of vehicles of all kinds; organisation and provision of auto sports.

Class 43: Temporary accommodation.

Class 45: Arranging of travellers; Arranging of tour guides; Arranging of participants in competitions; Arranging of participants in sporting events; Arranging of participants in motorsport events; Arranging of participants in sporting competitions; Arranging of participants in trips by means of vehicles.

2. European Union trade mark application No 14 341 309 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 14 341 309, namely against all the goods and services in Classes 4, 9, 12, 16, 18, 25, 28, 35, 39, 41, 42, 43 and 45. The opposition is based on Spanish trade mark registration No 3 551 123. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Spain.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 08/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Spain prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

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

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; banking actuarial services; real estate management; apartment house management; financial management; customs brokerage; accommodation bureaux (apartments); debt collection agencies; credit bureaux; real estate agencies; housing agents; renting of flats; rental of offices (real estate); financial analysis; lease-purchase financing; leasing of real estate; leasing of farms; debt advisory services; home banking; safe deposit services; financial clearing; rent collection; mutual funds; insurance consultancy; financial consultancy; brokerage; brokerage of carbon credits; insurance brokerage; securities brokerage; stocks and bonds brokerage; stock exchange quotations; deposits of valuables; factoring; issue of tokens of value; issuing of travellers' checks (cheques); issuance of credit cards; repair costs evaluation (financial appraisal); fiscal assessments; financial evaluation (insurance, banking, real estate); surety services; trusteeship; financing services; provident fund services; insurance information; financial information; capital investments; retirement payment services; business liquidation services, financial; exchanging money; organization of collections; instalment loans; financial sponsorship; lending against security; loans (financing); pawnbrokerage; charitable fund raising; mortgage banking; savings bank services; insurance underwriting; accident insurance underwriting; fire insurance underwriting; life insurance underwriting; marine insurance underwriting; health insurance underwriting; credit card services; debit card services; antique appraisal; jewellery appraisal; art appraisal; stamp appraisal; numismatic appraisal; real estate appraisal; electronic funds transfer; financial evaluation of standing timber; financial evaluation of wool; check (cheque) verification.

Class 37: Building construction; assembly (installation) of parts (including electronic parts) of vehicles; advisory services relating to the installation of engines and gearboxes; advisory and information services relating to vehicle repair; motor vehicle repair shop services; vehicle upholstering and repair services; upholstering; knife sharpening; air conditioning apparatus installation and repair; building insulating; masonry; warehouse construction and repair; rental of drainage pumps; rental of bulldozers; rental of excavators; rental of cranes (construction equipment); rental of road sweeping machines; rental of construction equipment; rental of cleaning machines; burglar alarm installation and repair; pumicing; mending clothing; elevator installation and repair; asphalting; vehicle breakdown assistance (repair); airplane maintenance and repair; varnishing; clothes bleaching; pump repair; safe maintenance and repair; boiler cleaning and repair; heating equipment installation and repair; shoe repair; strong-room maintenance and repair; film projector repair and maintenance; kitchen equipment installation; bricklaying; paper hanging; construction; building of fair stalls and shops; shipbuilding; construction consultation; leather care, cleaning and repair; demolition of buildings; chimney sweeping; disinfecting; rat exterminating; cabinet making (repair); electric appliance installation and repair; vehicle lubrication (greasing); vehicle service stations (refuelling and maintenance); quarrying services; vermin exterminating, other than for agriculture; mining extraction; factory construction; photographic apparatus repair; installation, maintenance and repair of computer hardware; furnace installation and repair; building sealing; fire alarm installation and repair; construction information; repair information; installation of doors and windows; washing; washing of linen; vehicle wash; painting or repair of signs; sanding; vehicle cleaning; cleaning of buildings (exterior surface); cleaning of buildings (interior); diaper cleaning; cleaning of clothing; window cleaning; dry cleaning; street cleaning; swimming-pool maintenance; machinery installation, maintenance and repair; scaffolding; furniture maintenance; snow-making services; office machines and equipment installation, maintenance and repair; pipeline construction and maintenance; umbrella repair; road paving; drilling of wells; drilling of deep oil or gas wells; fur care, cleaning and repair; interior and exterior painting; pressing of clothing; linen ironing; plumbing; clothing repair; harbour construction; vehicle polishing; burner maintenance and repair; refilling of toner cartridges; retreading of tires (lyres); rebuilding machines that have been worn or partially destroyed; rebuilding engines that have been worn or partially destroyed; freezing equipment installation and repair; clock and watch repair; riveting; renovation of clothing; repair of security locks; underwater repair; re-tinning; restoration of musical instruments; furniture restoration; restoration of works of art; irrigation devices installation and repair; pier breakwater building; carpentry services; parasol repair; underwater construction; building construction supervision; interference suppression in electrical apparatus; upholstery repair; roofing services; telephone installation and repair; anti-rust treatment for vehicles; rustproofing; vehicle maintenance; car wash; motor vehicle maintenance and repair; vulcanization of tires (tyres) (repair); plastering; tire (tyre) balancing; installation, maintenance and repair of computer hardware; vehicle battery charging; inspection of vehicles prior to maintenance and repair; servicing of motor vehicles; vehicle tuning.

Class 39: Transport; packaging and storage of goods; travel arrangement; carting; escorting of travellers; air transport; storage; storage of goods; physical storage of electronically stored data or documents; aircraft rental; rental of warehouses; motor coach rental; car rental; boat rental; horse rental; rental of diving bells; rental of motor racing cars; railway coach rental; rental of freezers; rental of storage containers; rental of diving suits; garage rental; rental of aircraft engines; parking place rental; rental of vehicle roof racks; refrigerator rental; rental of wheelchairs; railway truck rental; vehicle rental; car parking; vehicle breakdown assistance (towing); bus transport; car transport; boat storage; hauling; chauffer services; operating canal locks; freight brokerage (forwarding); transport brokerage; ship brokerage; unloading cargo; water distribution; electricity distribution; distribution of energy; packaging of goods; wrapping of goods; flower delivery; freight forwarding; stevedoring; freighting; freight (shipping of goods); franking of mail; transport by pipeline; storage information; traffic information; transportation information; lighterage services; launching of satellites for others; marine transport; removal services; transporting furniture; arranging of cruises; arranging of tours: passenger transport; piloting; porterage; pleasure boat transport; refloating of ships; towing; message delivery; delivery of goods; delivery of goods by mail order; parcel delivery; delivery of newspapers; booking of seats for travel; icebreaking; salvaging of ships; rescue operations (transport); salvaging; underwater salvage; bottling services; courier services (messages or merchandise); transportation logistics; water supplying; ferry-boat transport; transportation; ambulance transport; boat transport; barge transport; taxi transport; armored car transport; river transport; railway transport; guarded transport of valuables; transport reservation; transport and storage of waste; tram transport; transport of travellers; travel reservation; sightseeing (tourism): rental of navigational systems; providing driving directions for travel purposes.

Class 41: Education; providing of training; entertainment: sporting and cultural activities; academies (education); animal training; modelling for artists; rental of radio and television sets; rental of video cameras; rental of movie projectors and accessories; rental of sports grounds; rental of videotapes; rental of show scenery; rental of audio equipment; rental of skin diving equipment; rental of lighting apparatus for theatrical sets or television studios; games equipment rental; rental of sports equipment, except vehicles; rental of stadium facilities; rental of sound recordings; toy rentals; rental of motion pictures; rental of tennis courts; rental of camcorders; entertainer services; mobile library services; ticket agency services (entertainment); calligraphy services; sport camp services; holiday camp services (entertainment); providing casino facilities (gambling); circuses; conducting of fitness classes; health club services (health and fitness training); night clubs; club services (entertainment or education); coaching (training); layout services, other than for advertising purposes; music composition services; timing of sports events; vocational retraining; correspondence courses; discotheque services; dubbing; educational services; physical education; religious education; entertainment; stage scenery (rental of); music halls; presentation of live performances; production of shows; movie studios; recording studio services; educational examination; cinema presentations; providing golf facilities; providing sports facilities; providing amusement arcade services; practical training (demonstration); photography; gymnastic instruction; videotaping; nursery schools; entertainment information; recreation information; education information; boarding schools; sign language interpretation; gambling; game services provided on-line from a computer network; providing karaoke services; electronic desktop publishing; microfilming; videotape editing; production of radio and television programmes; providing museum facilities (presentation, exhibitions); organization of balls; organization of sports competitions; organization of competitions (education or entertainment); arranging of beauty contests; organization of fashion shows for entertainment purposes; organization of shows (impresario services): organization of exhibitions for cultural or educational purposes; party planning (entertainment); operating lotteries; 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 of award ceremonies; arranging and conducting of symposiums; arranging and conducting of workshops (training); vocational guidance (education or training advice): orchestra services; amusement parks; personal trainer services (fitness training); lending libraries; videotape film production; film production, other than advertising films; production of music; radio entertainment; television entertainment; publication and editing of texts, books, magazines and other printed matter; editing, publication and electronic delivery of books and journals on line: publication of books; publication of texts, other than publicity texts; publication of electronic books and journals on-line; providing recreation facilities; scriptwriting services; writing of texts, other than publicity texts; photographic reporting; news reporters services; theatre productions; booking of seats for shows; disc jockey services; school services; language interpreter services; zoological garden services; subtitling; providing on-line electronic publications, not downloadable; translation; funfairs; providing gaming house facilities; entertainment ticket agency services; providing on-line music, not downloadable; providing on-line videos, not downloadable; driving instruction and driving instruction in road safety; dissemination of educational material; electronic library services for the supply of electronic information (including archive information) in the form of text, audio and/or video information.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 20/06/2016 the opponent submitted the following evidence:

A market survey conducted in July-August 2013 by the company TNS. This shows that within the automobile insurance sector in Spain, the RACE mark takes the first place in spontaneous awareness, at 47%, ahead of MAPFRE, MM (MUTUA MADRILENA) and RACC.

Numerous, partially translated, decisions of EUIPO, the Spanish Trademark Office, Chamber Three of the Contentious-Administrative Division of the Spanish Supreme Court and the High Court of Justice of Madrid acknowledging the reputation of the mark RACE.

Untranslated copies of part of the book ‘Topbrands - El Libro de las Grandes Marcas en España- Volumen I’ published in 2002 by the ‘Brand Council, The Independent Authority on Branding’ in which RACE is listed as a top brand among other brands like McDonalds, Volkswagen, Yahoo and Nestlé.

Copy of an Affidavit dated 22/01/2003 by the President of Real Automovil Club de España in which is, inter alia, stated that:

RACE was awarded the Gold medal for Traffic Safety and the Gold Badge for Touristic merit by King Juan Carlos in 1982.

Is founding member of the International Automobile Federation (IAF) since 1904 and of Arc Transistance S.A. since 1990 and member of Alliance of International Tourism (AIT) since 1923.

RACE performs its operations through almost fifty offices throughout Spain and through the San Sebastian de los Reyes Sports Complex and the Jarama Race Track where various automobile sports events are held and other activities, such as advanced driving courses, are undertaken.

Translated copies of portions of the undated members’ magazine ‘Autoclub - Revista de los socios del Real Automóvil Club de España’ containing a description of the history, the foundation and the services provided by RACE, i.e. recovery of vehicles, roadside assistance, technical inspection of vehicles, travel assistance, legal assistance regarding traffic violations, vehicle formalities services, driving school/perfection services, car insurance, provision of tourist and travel information and organisation of motor competitions. It also contains a list of RACE offices in Spain.

Partially translated copies of the relevant portions of the opponent’s annual reports corresponding to the fiscal years 2011, 2012 and 2013. The revenues were EUR 25 191 409 in 2013 and EUR 26 376 099 in 2014.

Translated copies of portions of the opponent’s by-laws indicating that the association’s corporate purpose is, inter alia, to provide advice, protection, information and representation to its members in relation to the use and enjoyment of automobiles, to promote sporting activities and to organise car races, competitions and tests.

An extract from the web site www.fia.com, dated 14/10/2002, containing links to press release about motor rallies, crash test reports, a FIA brochure, a road safety campaign and a description of RACE and its activities.

Undated extracts from the web site www.arceurope.com.

An undated partially translated brochure from ARC Transistance indicating the main objectives of this organisation.

Several undated partially translated advertising brochures concerning, inter alia, RACE’s assistance in helping members to find the best suitable car and other membership advantages.

An extract from the magazine ‘Trafico’ (2003 edition) showing that in June 2003 the Spanish Post Office issued a set of four stamps to mark the centenary of RACE.

A copy of an undated and partially translated document titled ‘RACE multimedia magazine’ containing an overview of all the media in which the RACE marks are mentioned in the year 2013.

A translated list of reports and studies undertaken by RACE in the years 2012 and 2013 in the field of road safety including a partially translated document about a fatigue prevention campaign launched by, inter alia, RACE.

Untranslated copies of the Spring-Summer 2013 number of the RACE ‘Autoclub’ magazine and of the RACE ‘actualidad’ magazine of February 2013.

Partially translated photocopy of an article in which the RACE marks appear, published online in the newspaper ABC dated 20/07/2015 in connection with an event called Conducir una ilusión (drive with enthusiasm) arranged by the Organización de Ciegos Españoles (ONCE) (the Spanish organization for the blind), the automobile manufacturer SEAT and the Real Automóvil Club de España (RACE).

A partially translated article published in the Spanish daily newspaper ‘ABC’, dated 12/12/2013, where reference is made to the remodelling, scheduled for competition in 2021 of RACE’s Jarama track. And further information concerning the Jarama track, such as the calendar of sporting events programmed there in the years 2014 and 2015 and some specific sports events.

The opponent has submitted an abundance of documents comprising, amongst other evidence, several decisions of EUIPO and the Spanish Patent Office, as well as judgments of the national courts. Both the Offices and the Spanish courts have on many occasions held, according to the material submitted by the opponent, that the mark of the opponent is well known. Although on the mere basis of earlier decisions and judgments the Office cannot conclude that the earlier mark is reputed, it can be deduced from the remaining evidence, in particular the other evidence of independent sources, such as the market survey regarding car insurances, the book ‘Topbrands - El Libro de las Grandes Marcas en España- Volumen I’ and the websites of the European automobile clubs, that even if the mark was recently registered the mark RACE has been present in the Spanish market since the beginning of the 20^th century offering all sorts of services related to the use and enjoyment of automobiles to its members and members of the international automobile clubs it is a (founding) member of. Furthermore, it is clear from the association’s by-laws and members’ magazine that the opponent’s activities range from recovery of vehicles, roadside assistance, technical inspection of vehicles, travel assistance, legal assistance regarding traffic violations, vehicle formalities services, driving schools, car insurance and the provision of tourist and travel services to the organisation of sporting activities offered via its widespread offices and sport complexes in Spain. Further taking into account that the opponent’s publicly available annual reports demonstrate that in the year 2012 it obtained EUR 29 010 297 from membership fees only, it must be concluded that the mark enjoys a high degree of recognition among the relevant public.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Spain for the following services:

Class 35: Vehicle formalities services.

Class 36: Car insurance.

Class 37: Car repair services.

Class 39: Travel assistance and provision of tourist and travel information.

Class 41: Driving schools; car races.

Although most of these specifications are not mentioned in the list of services for which the opponent claims reputation, they can be considered to form objective subcategories of the broader categories of services for which the opponent has claimed reputation, namely

Class 35: Office functions.

Class 36: Insurance.

Class 37: Motor vehicle maintenance and repair.

Class 39: Travel arrangement.

Class 41: School services; organization of sports competitions.

The signs

RACE TRAIN ENTERTAIN

Earlier trade mark

Contested sign

The relevant territory is Spain.

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 applicant argues that the word ‘RACE’ is descriptive, because it is the common English word for a competition, in which one competitor (participant) tries to be faster and reach the goal sooner than the other competitors (participants). Since this term is also known in Spain, it is devoid of any distinctive character merely serving to designate characteristics of the goods and services, in particular when it refers to general competition, which is immanent in any business related to the offering of goods and services against competitors. Therefore, the mark was only registered because of its figurative elements.

The Opposition Division disagrees since this line of reasoning is contrary to the relevant case law. See for example decisions 30/01/2015, R 175/2014-5, RACEKING (FIG. MARK) / RACE, 09/04/2014, R 786/2013-1, RACECODE / RACE, 08/01/2008, R 382/2007-2, RACE FACE PERFORMANCE PRODUCTS (fig.)/ RACE and 09/09/2015, R 1566/2014-4, RACECRAFT / RACE, where the Boards of Appeal stated the following concerning the meaning of the word ‘RACE’ “this word does not belong to the category of basic English words that a significant part of the relevant public in Spain would be familiar with […] To the Board’s knowledge, the salesperson and the purchaser of, for example, a ‘racing bicycle’ or a ‘racer’ would refer to it in Spanish as a ‘bicicleta de carreras’ and not to its English equivalent”. Hence, the word ‘RACE’ will not be understood by a significant part of the relevant public and, therefore, must be considered distinctive.

Therefore, contrary to the applicant’s argument the earlier mark is not registered merely because of its figurative elements. In fact, the crown is a commonly used laudatory symbol of power, legitimacy, victory, triumph, honour and glory and, therefore, is clearly less distinctive than the meaningless verbal element ‘RACE’. Further, considering the sheer size of the word ‘RACE’ vis-à-vis the image of the crown, this word also clearly stands out as the dominant element of the earlier mark marking it the most important element of the mark.

The applicant further argues that even if the term ‘RACE’ is considered as an acronym for the name of the opponent, the marks are not similar because the term ‘RACE’ in the contested mark is used in combination with other English words ‘TRAIN’ and ‘ENTERTAIN’ and together they create a new term with an independent meaning.

For the reasons explained above this argument cannot succeed either. Neither ‘RACE’ nor ‘TRAIN or ENTERTAIN’ are basic English words that a significant part of the Spanish relevant consumer will be familiar with. Therefore, it must be concluded that the contested sign has no elements which are clearly more distinctive than others, both being equally distinctive. As a word mark, it has no elements which are more dominant than others either.

Visually, the signs coincide in the distinctive verbal element ‘RACE’. They differ in the earlier mark’s figurative element and the words ‘TRAIN ENTERTAIN’ of the contested sign which differentiate the marks in their structure and length, the earlier mark being mainly composed of a single word and the contested sign of three words. However, considering that the word ‘RACE’ is the dominant and more distinctive element of the earlier mark, and is repeated in the contested sign at the more noticeable beginning of the mark, some similarity cannot be denied. Hence, the signs must be considered visually similar to a low degree.

Aurally, the signs coincide in the pronunciation of the two-syllable-word /RA-CE/. What differentiates them are the additional one-syllable word /TRAIN/ and the three-syllable-word /EN-TER-TAIN/ of the contested sign, which give the marks as a whole a different rhythm and intonation. However, due to the common beginning and complete repetition of the earlier mark at the more noticeable beginning of the contested sign the similarity in the first two identical syllables will not go unnoticed. Therefore, thesigns must be considered aurally similar to a low degree.

Conceptually, the opponent has produced convincing evidence to show that the earlier sign ‘RACE’ is well known in Spain as an acronym of ‘Real Automóvil Club de España’. However, the name of the opponent, or the acronym of that name, is not a concept. As mentioned above, the word ‘race’ has a meaning in English, but this meaning will not be understood by a significant part of the relevant Spanish public. The additional verbal elements of the contested sign ‘TRAIN’ and ‘ENTERTAIN’ have no meaning for the Spanish public either. Although the crown of the earlier mark will evoke a concept, this figurative element does not serve to differentiate the marks conceptually, since it will be perceived as a laudatory element of limited distinctiveness. Therefore, in spite of the concept of the figurative element in the earlier mark, the conceptual comparison does not really influence the assessment of similarity of the marks.

The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar to some extent.

The contested goods and services are the following:

Class 4: Fuels (including motor spirit).

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Computer programs; Computer software; Computer games programs; Fire-extinguishing apparatus; Diving equipment; Safety, security, protection and signalling devices; Optical devices, enhancers and correctors; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, indicators and controllers; Magnets, magnetizers and demagnetizers; Information technology and audiovisual equipment; Devices for treatment using electricity; Recorded content; Apparatus, instruments and cables for electricity; Scientific research and laboratory apparatus, educational apparatus and simulators.

Class 12: Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances; Water vehicles; Amphibious vehicles.

Class 16: Filtering materials of paper; Fiberboard boxes; Printed matter; Newspapers; Periodicals; Folders; Informational sheets; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 18: Leather and imitation leather; Briefcases [leather goods]; Key cases made of leather; Trimmings of leather for furniture; Animal skins, hides; Trunks and travelling bags; Saddlery, whips and animal apparel; Umbrellas and parasols; Sausage skins and imitations thereof; Luggage, bags, wallets and other carriers.

Class 25: Clothing; Headgear; Footwear.

Class 28: Toys, games, playthings and novelties; Sporting articles and equipment.

Class 35: Advertising; Advertising agencies; Arranging advertising contracts for others; Planning services for advertising; Production of advertising films; Writing of publicity texts; Layout services for advertising purposes; Arranging and conducting of advertising events; Demonstration of goods; Presentation of goods and services for advertising and sales purposes; Publication of printed matter (including in electronic form), for advertising purposes; Dissemination of advertising matter; Distribution of advertising material; Dissemination of advertising matter; Bill-posting; Advertising by mail order; Radio advertising; Arranging sponsor agreements for advertising purposes; Professional business consulting; Business management and organization consultancy; Business organisation consulting; Office functions; Personnel management consultancy; Public relations services; News clipping services; Presentation of companies on the internet and other media for advertising and sales purposes; Presentation of goods on communications media for retail purposes; Procurement for others (purchasing of goods and services for other businesses); Marketing services; Commercial promotions; Collection of goods, for others, for presentation and sales purposes; Organisation of trade fairs for commercial or advertising purposes; Arranging and conducting of fashion shows for advertising and sales promotion purposes; Auctioneering services; Marketing studies; Opinion polling; Business research; Business information; Commercial information agencies; Economic forecasting; Compilation of statistics; Business administration and business management services.

Class 39: Travel arrangement; Travel arrangement; Transport; Packaging and storage of goods.

Class 42: Scientific and technological services and research services.

Class 43: Services for providing food and drink, temporary accommodation.

Class 45: Personal background investigations; Personal shopping services for others; Adoption agency services; Arranging of travellers; Arranging of tour guides; Arranging of participants in competitions; Arranging of participants in sporting events; Arranging of participants in motorsport events; Arranging of participants in sporting competitions; Arranging of participants in trips by means of vehicles; Adoption placement; Marriage bureaus; Dating services; Chaperoning; Organization of religious meetings.

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As for the proximity of the market sectors, even if the relevant section of the public as regards the goods or services for which the conflicting marks are registered is the same or overlaps to some extent, those goods or services may be so dissimilar that the later mark is unlikely to bring the earlier mark to the mind of the relevant public (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 49).

It is in the light of the above jurisprudence that the opponent’s claim must be examined. In the present case it is likely that such a link will exist with respect to the following contested goods and services:

Class 4: Fuels (including motor spirit)

Class 9: Recorded content.

Class 12: Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances; Water vehicles; Amphibious vehicles.

Class 16: Printed matter.

Class 39: Travel arrangement; Travel arrangement; Transport; Packaging and storage of goods.

Class 43: Temporary accommodation.

A number of factors lead to this conclusion. First, the opponent’s ‘RACE’ mark is such a well‑known mark in Spain that it is bound to be known to the public to which the abovementioned contested goods and services are directed. Secondly, although the nature of the services for which the earlier mark is well‑known is not exactly the same as that of some of the contested goods and services mentioned above, they are connected in the sense that they relate to the proper use or functioning of vehicles or share the same purpose and/or common origin and distribution channels and thus pertain to neighbouring markets where a brand extension would seem more natural. All goods and services in Classes 4, 12 and 45 and the majority of the services in Classes 35, 39 and 41 involve the use of vehicles, while those that do not have such a link with vehicles, i.e. the goods and services in Classes 9, 16 and 43 and the remaining services in Classes 35, 39 and 41, are provided by the same type of companies as the opponent’s reputed services or share the same purpose. For example, the content in Class 9 and 16 could be provided by driving schools as complementary learning material. The contested business support services of Class 35 could be provided by the same undertakings as the opponent’s vehicle formalities services since they are all intended to help other companies with the management and daily operations of their businesses. The temporary accommodation of Class 43 could be rendered by the same companies as the opponent’s travel arrangement, since it is common for travel agents to provide hotel reservations services at the same time and in the same package as transport for leisure. Finally, the contested entertainment services in Class 41 have the same general purpose as the opponent’s organization of sports competitions in the sense that they both relate to the favoured arts and manners of a particular group.

Therefore, the first element ‘RACE’ of the contested sign when used in relation to these goods and services, is likely to bring to mind the opponent’s famous mark, that is to say, consumers will establish a mental ‘link’ between these signs.

However, an association between the signs is not likely insofar as the other remaining goods and services in Classes 9, 16, 18, 25, 28, 35, 42, 43 and 45 are concerned, since they are so different from the services for which the earlier mark is reputed that, in spite of some overlap between the marks’ targeted publics, the later mark is unlikely to bring the earlier mark to the mind of the relevant public. Unlike the goods and services for which a link has been established above, the remaining contested goods and services neither have anything to do with the use and enjoyment of automobiles nor pertain to neighbouring markets.

The remaining contested goods in Classes 9, 16, 18, 25 and 28 are used in science or IT or have an audio visual function (Class 9), are used as office materials (Class 16), are (used to make) leather (goods), are used to cloth oneself (Class 25), used to play or exercise oneself (Class 28), while the remaining contested services in Classes 35, 42, 43 and 45 are either intended to help others with advertisement of their products (Class 35), with the execution of technical and scientific works (Class 42) or aim at satisfying others needs for food or drinks (Class 43), or other very specific personal and social services (Class 45). Consequently, they differ in their purpose and tend to come from different undertakings. Moreover, all these goods and services are by no means related to the use of cars in case of damage (vehicle formalities, insurance, repair, travel assistance) or their enjoyment (learning to drive or watch car races). Therefore, given the enormous cleavage between the nature of these goods and services and the services for which the opponent has demonstrated repute, the Opposition Division does not consider it plausible that the relevant consumer would make any link to the earlier mark if the contested sign were used in relation to these goods or services merely because of the high repute of the earlier mark and the fact that the signs have the element ‘RACE’ in common. Furthermore, the opponent has failed to put forward any concrete evidence or argument on the basis of which the Opposition Division could hold that the use of the contested sign in relation to such goods and services would bring the opposing trade mark to mind.

Given that the relevant section of the public of the remaining contested goods and services is unlikely to establish a link between the trade marks in dispute, such a link being a precondition for the application of Article 8(5) EUTMR (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 30–31), the Opposition Division concludes that the use of the contested sign in connection with those goods and services will not take advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark in so far as it is made in relation to the following goods and services:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Computer programs; Computer software; Computer games programs; Fire-extinguishing apparatus; Diving equipment; Safety, security, protection and signalling devices; Optical devices, enhancers and correctors; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, indicators and controllers; Magnets, magnetizers and demagnetizers; Information technology and audiovisual equipment; Devices for treatment using electricity; Apparatus, instruments and cables for electricity; Scientific research and laboratory apparatus, educational apparatus and simulators.

Class 16: Filtering materials of paper; Fiberboard boxes; Newspapers; Periodicals; Folders; Informational sheets; Bookbinding material; Photographs; Stationery; Adhesives for stationery or household purposes; Artists' materials; Paint brushes; Typewriters and office requisites (except furniture); Instructional and teaching material (except apparatus); Plastic materials for packaging (not included in other classes); Printers' type; Printing blocks.

Class 25: Clothing; Headgear; Footwear.

Class 28: Toys, games, playthings and novelties; Sporting articles and equipment.

Class 35: Advertising; Advertising agencies; Arranging advertising contracts for others; Planning services for advertising; Production of advertising films; Writing of publicity texts; Layout services for advertising purposes; Arranging and conducting of advertising events; Demonstration of goods; Presentation of goods and services for advertising and sales purposes; Publication of printed matter (including in electronic form), for advertising purposes; Dissemination of advertising matter; Distribution of advertising material; Dissemination of advertising matter; Bill-posting; Advertising by mail order; Radio advertising; Arranging sponsor agreements for advertising purposes; Public relations services; News clipping services; Presentation of companies on the internet and other media for advertising and sales purposes; Presentation of goods on communications media for retail purposes; Marketing services; Commercial promotions; Collection of goods, for others, for presentation and sales purposes; Organisation of trade fairs for commercial or advertising purposes; Arranging and conducting of fashion shows for advertising and sales promotion purposes; Auctioneering services; Marketing studies.

Class 42: Scientific and technological services and research services.

Class 43: Services for providing food and drink.

Class 45: Personal background investigations; Personal shopping services for others; Adoption agency services; Adoption placement; Marriage bureaus; Dating services; Chaperoning; Organization of religious meetings.

Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected as far as it concerns these goods and services.

The Opposition Division will now continue with the further examination of Article 8(5) EUTMR in relation to the goods and services for which a link has been established above.

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

Granting the contested mark would allow the trade mark’s owner to benefit from the reputation of the earlier mark by taking unfair advantage of its capacity to attract consumers and of the advertising investments made therein. The other party’s mark would thus be permitted to penetrate the market far more easily, thanks to the familiarity of consumers with the RACE mark and to the trust that they place in it. Consumers who chose to use the services offered under the RACE TRAIN ENTERTAIN mark could gather the mistaken impression that they were RACE services or were being offered with our the opponent’s approval or authorization, when that is not the case.

The grant of the contested application could thus give rise to misappropriation of the fame, prestige and reputation of the opponent’s RACE marks, not only because of the high degree of recognition which the latter has earned among consumers but also because of the image of excellence, reliability and quality which it conveys. That image can exert a positive influence on the choice consumers make at the time of purchasing the goods/services of one manufacturer or another. Thus, the opponents should have the right to prevent the applicant from taking unfair advantage of the fame, prestige and reputation of the RACE mark to the benefit of the later mark.

According to the Court of Justice of the European Union as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

As has been seen above, the opponent, in part, bases its claim on the allegation that the contested sign will free-ride on the coattails of the reputed trademark ‘RACE’ because it will unfairly enjoy some of the recognition that attaches to the earlier mark and in this way benefit from the years of effort and investment that the opponent has expended in advertising and building up the reputation of its earlier mark.

The concept of taking unfair advantage does not necessarily imply a deliberate intention to exploit the goodwill attaching to someone else’s trade mark. In several cases, the General Court has held that the concept of taking unfair advantage ‘concerns the risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods covered by the mark applied for, with the result that the marketing of those goods is made easier by that association with the earlier mark with a reputation (see judgments of 19/06/2008, T‑93/06, ‘Mineral Spa’, EU:T:2008:215, § 40; of 22/03/2007, T‑215/03, ‘VIPS’, EU:T:2007:93, § 40; and of 30/01/2008, T‑128/06, ‘Camelo’, EU:T:2008:22, § 46).

As mentioned in section c) above, the relevant consumers may establish a link between the opponent’s reputed earlier mark and the contested sign for part of the goods and services applied for, as a result of the very high reputation of the opponent’s mark, the fact that the word ‘RACE’ is repeated in the contested sign as the more noticeable first distinctive element, and the fact that the contested goods and services are connected to the opponent’s reputed services in the sense that they relate to the proper use or functioning of vehicles or share the same common origin and distribution channels and/or purpose.

The misappropriation of the distinctiveness and the repute of the earlier mark presupposes an association between the marks at issue, which makes possible the transfer of attractiveness and prestige to the sign applied for. An association of this kind will be more likely where there is a special connection between the goods and services which allows for some of the qualities of the opponent’s services to be attributed to the goods and services of the applicant. This will be particularly so in the case of goods and services already provided by the opponent such as car races (Class 41) and vehicle formalities services (Class 35), those connected with the use of vehicles or those pertaining to neighbouring markets where a brand extension would seem more natural.

Considering all that has been said above, it seems inevitable that the reputation of the earlier mark and the characteristics that it projects will be transferred to the goods and services for which a link was found if they are marketed under the contested sign. These goods and services may well be sought by the same public seeking the opponent’s car related services, given that both address the public at large. Therefore, the relevant consumer will, when faced with the contested sign ‘RACE TRAIN ENTERTAIN’, immediately make the connection with the opponent‘s ‘RACE’ mark and will expect that the goods and services offered have the same image and quality standards as those offered by the opponent. For example, they may think that these goods have been approved, certified or recommended by RACE.

Consequently, in view of the reproduction of the distinctive term ‘RACE’, the contested sign would receive an unfair ‘boost’ as a result of its being linked with the opponent’s ‘RACE’ mark in the minds of consumers in Spain. This may lead to an unacceptable situation in which the applicant is allowed to take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its marks, as it may stimulate the success of the applicant’s goods and services to an extent which is disproportionately high in comparison with the size of its promotional investment. The benefit gained by the applicant would not be based on the applicant’s merits but solely on the reputation of the earlier mark. Of course, it is because of the efforts of the opponent in Spain, not those of the applicant, that the contested sign would start off with an immediate degree of recognition. Again, it must be recalled that ‘RACE’ is inherently distinctive in Spain and has no meaning in Spanish, so it is not a term that is used in other contexts. Overall, the contested sign’s association with the opponent’s earlier well-known sign in Spain makes the contested sign easier for the relevant Spanish consumer to remember and recognise and, given this, the contested sign would exploit the attractive powers or distinctiveness of the earlier mark. The contested sign will thus benefit from the repute of the earlier mark.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark for the goods and services for which a link between the competing signs was established.

The Opposition Division will now continue the examination of the opposition on the basis of the ground of Article 8(1)(b) EUTMR in relation to the remaining contested goods and services.

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 goods and services

The goods and services on which the opposition is based are the goods and services of Classes 9, 12, 16, 18, 25, 28, 35, 39, 41, 42, 43 and 45. The goods and services of Classes 35, 39 and 41 have already been listed under Article 8(5) EUTMR (see pages 3-6). The goods and services of Classes 9, 12, 16, 18, 25, 28, 42, 43 and 45 are the following:

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compacts discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; correcting lenses; spectacles; sunglasses; clip-on sunglasses; contact lenses; lenses, glasses, frames, sidepieces, chains and cords for spectacles and sunglasses; covers and cases adapted for optical apparatus and products; covers and cases for spectacles, sunglasses and contact lenses; holders for spectacles and sunglasses; covers, carriers and bags adapted for computers, telephones, electronic agendas, radios and portable media players; accelerometers; acid hydrometers; batteries, electric, for vehicles; aerometers; agendas (electronic -); anti-theft warning apparatus; alcoholmeters; mouse pads; ammeters; calibrating rings; aerials; speed checking apparatus for vehicles; global positioning system [GPS] apparatus; navigation apparatus for vehicles [on-board computers]; vehicle radios; radio pagers; precision measuring apparatus; telephone apparatus; life saving apparatus and equipment; beacons, luminous; batteries, electric; compasses (directional -); starter cables for motors; junction boxes [electricity]; gauges; shoes for protection against accidents, irradiation and fire; signal bells; battery chargers; chargers for electric batteries; headphones; protective helmets; protective helmets for sports; life jackets; life belts; traffic cones; cell phone straps; milage recorders for vehicles; revolution counters; densimeters; reflecting discs for wear, for the prevention of traffic accidents; steering apparatus, automatic, for vehicles; balancing apparatus; gasometers [measuring instruments]; gloves for protection against accidents; gloves for divers; hardware; pressure in vehicle tires [tyres] (automatic indicators of low -); gasoline gauges; slope indicators; electric loss indicators; temperature indicators; vacuum gauges; speed indicators; water level indicators; theft prevention installations, electric; hand free kits for phones; limiters [electricity]; signal lanterns; safety tarpaulins; flashing lights [luminous signals]; protective masks; USB flash drives; modems; signalling panels, luminous or mechanical; vehicle steering apparatus, automatic; pointers (light-emitting electronic -); radar apparatus; nets for protection against accidents; safety nets; life nets; voltage regulators for vehicles; knee-pads for workers; life buoys; whistle alarms; signalling whistles; simulators for the steering and control of vehicles; computer keyboards; teleprompters; thermostats for vehicles; electronic pocket translators; clothing for protection against accidents, irradiation and fire; anti-dazzle and anti-glare visors; downloadable electronic publications; electronic publications recorded on computer media; computer software applications, downloadable.

Class 12: Vehicles; apparatus for locomotion by land, air or water; couplings for land vehicles; air bags [safety devices for automobiles]; anti-theft alarms for vehicles; spoilers for vehicles; saddlebags adapted for bicycles; shock absorbers for vehicles; head-rests for vehicle seats; transmission shafts for land vehicles; vehicle seats; safety seats for children, for vehicles; horns for vehicles; engine mounts for land vehicles; treads for retreading tires [tyres]; torsion bars for vehicles; undercarriages for vehicles; bicycles; connecting rods for land vehicles, other than parts of motors and engines; air pumps [vehicle accessories]; chains for automobiles, bicycles and cycles; gear boxes for land vehicles; inner tubes for bicycles, cycles; inner tubes for pneumatic tires [tyres]; automobile hoods; hoods for vehicles; casings for pneumatic tires [tyres]; bodies for vehicles; baskets adapted for cycles; vehicle chassis; mopeds; safety belts for vehicle seats; hydraulic circuits for vehicles; spikes for tires [tyres]; panniers adapted for cycles; balance weights for vehicle wheels; torque converters for land vehicles; windows for vehicles; frames for bicycles, cycles; vehicle brake disks; anti-glare devices for vehicles; antitheft devices for vehicles; clutches for land vehicles; cigar lighters for automobiles; trailer hitches for vehicles; gearing for land vehicles; reduction gears for land vehicles; repair outfits for inner tubes; vehicle running boards; brake linings for vehicles; brakes for bicycles, cycles; saddle covers for bicycles or motorcycles; seat covers for vehicles; vehicle covers [shaped]; covers for vehicle steering wheels; mudguards; direction indicators for bicycles; direction signals for vehicles; pumps for bicycles, cycles; headlight wipers; windshield wipers; rims for wheels of bicycles, cycles; handle bars for bicycles, cycles; driving motors for land vehicles; motorcycles; motors, electric, tor land vehicles; motors for land vehicles; shock absorbing springs for vehicles; vehicle suspension springs; pneumatic tires [tyres]; windshields; vehicle bumpers; sun-blinds adapted for automobiles; brake pads for automobiles; luggage carriers for vehicles; ski carriers for cars; doors for vehicles; spokes for bicycles, cycles; spokes (vehicle wheel-); luggage nets for vehicles; dress guards for bicycles, cycles; rearview mirrors; wheels for bicycles, cycles; mudflaps; saddles for bicycles, cycles or motorcycles; hub caps; upholstery for vehicles; caps for vehicle petrol [gas] tanks; bells for bicycles, cycles; tubeless tires [tyres] for bicycles, cycles; valves for vehicle tires [tyres]; valves for vehicle tires [tyres]; snowmobiles; brake shoes for vehicles.

Class 16: Paper, cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus): plastic materials for packaging (not included in other classes); printers’ type; printing blocks; writing materials; document files [stationery]; clips for offices; flower-pot covers of paper; bookbindings; inkstands; document holders [stationery]; drawing instruments; writing instruments; tablecloths of paper; bookmarkers; writing brushes; paper-clips; paperweights; pen cases; pencil holders; pencil lead holders; coasters of paper; erasing products; printed publications; periodicals; table napkins of paper; bookends; page holders; greeting cards; towels of paper; napkins of paper for removing make-up; face towels of paper; newsletters; printed publications and manuals on the subject of road safety.

Class 18: Leather and imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery; luggage, bags, briefcases and carrier bags; handbag; evening bags; bags; shopping bags; pouches; holdalls; rucksacks; school bags; fanny packs; duffel bags; shoulder belts [straps]; sling bags for carrying infants and safety harnesses for children; vanity cases, not fitted; travelling sets [leatherware]; cases, of leather or leatherboard; garment bags for travel; tie cases; portfolios; purses; wallets (pocket-); key cases; card holders; credit card cases; jewellery rolls for travel; leather garments; coverings of skins [furs]; boxes of leather; laces and straps of leather; umbrella and parasol covers; clothing for pets; collars for animals; covers and wraps for animals; leatherboard; leather, unworked or baby carriers; furniture coverings of leather; hat boxes of leather.

Class 25: Clothing; footwear, headgear; aprons [clothing]; masquerade costumes; overalls; belts (money -) [clothing]; kerchiefs [clothing]; pocket squares; shoulder scarves; garments for protecting clothing; motorists’ and motorcyclists’ clothing; uniforms; wedding gowns.

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; golf bags, with or without wheels; edges of skis; golf bag carts; wax for skis; skis; waterskis; ski bindings; water wings; bags especially designed for skis and surfboards; gloves for games; golf gloves; models being toys; masts for sailboards; scale model vehicles; cards (playing-); golf clubs; paragliders; skating boots with skates attached; skateboards; piñatas; scrapers for skis; nets for sports; radio-controlled toy vehicles; toy vehicles.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; vehicle roadworthiness testing; tyre analysis services; testing of vehicles; software (updating of computer-); electronic data storage; hosting computer sites [web sites]; computer rental; rental of web servers; rental of computer software; computer system analysis; web site design consultancy; data conversion of computer programs and data [not physical conversion]; creating and maintaining web sites for others; design of interior decor; dress designing; computer system design; design (industrial-); mechanical research; technical research.

Class 43: Services for providing food and drink; temporary accommodation; reservations (temporary accommodation -); making reservations and bookings for restaurants and meals; providing campground facilities; accommodation bureaux [hotels, boarding houses]; catering (food and drink -); holiday camp services [lodging]; tourist homes; boarding for animals; retirement homes.

Class 45: Legal services; security services for the protection of property and individuals; stolen vehicle location services; security information, advisory, and consultancy services; monitoring of burglar and security alarms; monitoring of burglar and security alarms; monitoring of alarms; security risk assessment; accident investigation; accident reporting; missing person investigations; escorting in society (chaperoning); adoption agency services; detective agencies; night guards; marriage agencies; rental of fire alarms; rental of safes; rental of fire extinguishers; clothing rental; evening dress rental; opening of security locks; arbitration services; dating services; licensing of intellectual property; licensing of computer software (legal services); security consultancy; intellectual property consultancy; litigation services; crematorium services; pet sitting; baby sitting; house sitting; lost property return; funerals; fire-fighting; copyright management; personal body guarding; horoscope casting; baggage inspection for security purposes; inspection of factories for safety purposes; personal background investigations; genealogical research; legal research; mediation; organization of religious meetings; planning and arranging of wedding ceremonies; undertaking; intellectual property watching services; guards; registration of domain names (legal services); alternative dispute resolution services; stolen goods location services.

The remaining contested goods and services are the following:

Class 9: Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Computer programs; Computer software; Computer games programs; Fire-extinguishing apparatus; Diving equipment; Safety, security, protection and signalling devices; Optical devices, enhancers and correctors; Navigation, guidance, tracking, targeting and map making devices; Measuring, detecting and monitoring instruments, indicators and controllers; Magnets, magnetizers and demagnetizers; Information technology and audiovisual equipment; Devices for treatment using electricity; Apparatus, instruments and cables for electricity; Scientific research and laboratory apparatus, educational apparatus and simulators.

Class 25: Clothing; Headgear; Footwear.

Class 28: Toys, games, playthings and novelties; Sporting articles and equipment.

Class 35: Advertising; Advertising agencies; Arranging advertising contracts for others; Planning services for advertising; Production of advertising films; Writing of publicity texts; Layout services for advertising purposes; Arranging and conducting of advertising events; Demonstration of goods; Presentation of goods and services for advertising and sales purposes; Publication of printed matter (including in electronic form), for advertising purposes; Dissemination of advertising matter; Distribution of advertising material; Dissemination of advertising matter; Bill-posting; Advertising by mail order; Radio advertising; Arranging sponsor agreements for advertising purposes; Public relations services; News clipping services; Presentation of companies on the internet and other media for advertising and sales purposes; Presentation of goods on communications media for retail purposes; Marketing services; Commercial promotions; Collection of goods, for others, for presentation and sales purposes; Organisation of trade fairs for commercial or advertising purposes; Arranging and conducting of fashion shows for advertising and sales promotion purposes; Auctioneering services; Marketing studies.

Class 42: Scientific and technological services and research services.

Class 43: Services for providing food and drink

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; computer programs; computer software; fire-extinguishing apparatus are identically contained in both lists of goods (including synonyms).

The contested computer games programs are included in the broad category of the opponent’s computer software. Therefore, they are identical.

The contested optical devices, enhancers and correctors are included in the broad category of the opponent’s optical apparatus and instruments. Therefore, they are identical.

The contested navigation, guidance, tracking, targeting and map making devices overlap with the opponent’s nautical apparatus and instruments to the extent that the latter are used for navigation, guidance, tracking, targeting and map making purposes. Therefore, these goods are identical.

The contested measuring, detecting and monitoring instruments, indicators and controllers are either included in the broad category of the opponent’s measuring apparatus and instruments or overlap with this broad category to the extent that former goods detect, monitor or control by measuring. Therefore, they are identical.

The contested scientific research and laboratory apparatus are included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested educational apparatus and simulators are included in the broad category of the opponent’s teaching apparatus and instruments. Therefore, they are identical.

The contested cables for electricity are included in the broad category of the opponent’s apparatus and instruments for conducting electricity. Therefore, they are identical.

The contested apparatus, instruments for electricity include, as a broader category, the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested devices for treatment using electricity are scientific or laboratory devices that use electricity to change the composition of a material, such as ozonators and ionizers and therefore are included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested information technology equipment includes, as a broader category, the opponent’s data processing equipment. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested audiovisual equipment is included in the broad category of the opponent’s apparatus for recording, transmission or reproduction of sound or images.

Therefore, they are identical.

The contested safety, security and protection devices include, as broader categories, inter alia the opponent’s beacons, luminous; safety tarpaulins; nets for protection against accidents; safety nets; life nets; life buoys. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested signalling devices include, as a broader category, inter alia the opponent’s signal lanterns; flashing lights [luminous signals]; signalling panels, luminous or mechanical. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested diving equipment is included in the broad category of the opponent’s nautical apparatus and instruments. Therefore, they are identical.

The contested magnets can be used in a number of ways and serve a variety of purposes. Inter alia, they are routinely used as a decorative or functional piece of stationery at home (e.g. fridge magnets) or in the office environment (e.g. board magnets) to hold in place reminders or sheets of paper in presentations. The contested magnetizers and demagnetizers are devices used to give or remove magnetic properties to or from various objects. All the aforementioned goods can serve the same purpose as the opponent’s stationery in Class 16. They target the same relevant public and are sold through the same distribution channels. Therefore, these goods are similar.

Contested goods in Class 16

The contested periodicals; informational sheets; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks are identically contained in both lists of goods.

The contested folders are identical to the opponent’s document files [stationery] albeit phrased differently.

The contested newspapers are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested filtering materials of paper are included in the broad category of the opponent’s paper, as the latter includes filter paper. Therefore, they are identical.

The contested fiberboard boxes are similar to the opponent’s plastic materials for packaging (not included in other classes), since these goods have the same purpose (packaging) and, therefore, can be in competition, bought in the same shops and target the same public.

Contested goods in Class 18

The contested leather and imitation leather; Briefcases [leather goods]; trimmings of leather for furniture; animal skins, hides; Trunks and travelling bags; saddlery, whips; umbrellas and parasols; bags, wallets are identically contained in both lists of goods.

The contested key cases made of leather are included in the broad category of the opponent’s key cases. Therefore, these goods are identical.

The contested animal apparel includes, as a broader category the opponent’s clothing for pets. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested luggage overlaps with, or includes, as a broader category the opponent’s travelling sets [leatherware]; cases, of leather or leatherboard; garment bags for travel. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested other carriers includes, as a broader category the opponent’s pouches; fanny packs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

However, the remaining contested goods in Class 18, namely sausage skins and imitations thereof have no relevant connections with the opponent’s goods and services in Classes 9, 16, 18, 25, 35, 39, 41, 42, 43 and 45. The contested goods are used to enclose the filling of a sausage and are either derived from the intestinal tract of farmed animals and edible, or made of collagen, cellulose or plastic and may not be edible at all. Therefore, they do not only have a different nature but also satisfy different purposes than the goods and services covered by the earlier mark, including the animal skins. They are neither complementary nor in competition. Furthermore, their usual origin is different. These goods are, therefore, dissimilar.

Contested goods in Class 25

Clothing; Headgear; Footwear are identically contained in both lists of goods.

Contested goods in Class 28

Games, playthings; Sporting articles are identically contained in both lists of goods.

The contested toys include, as a broader category the opponent’s toy vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sporting equipment includes, as a broader category the opponent’s skis. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested novelties are similar to the opponent’s decorations for Christmas trees since they have the same festive purpose, target the same public and can be bought in the same shops.

Contested services in Class 35

The contested advertising; auctioneering services; news clipping services are identically contained in both lists of services (including synonyms).

The contested advertising agencies; arranging advertising contracts, for others; planning services for advertising; production of advertising films; writing of publicity texts; layout services for advertising purposes; arranging and conducting of advertising events; demonstration of goods; presentation of goods and services for advertising and sales purposes; publication of printed matter (including in electronic form), for advertising purposes; dissemination of advertising matter; distribution of advertising material; dissemination of advertising matter; bill-posting; advertising by mail order; radio advertising; arranging sponsor agreements for advertising purposes; public relations services; presentation of companies on the internet and other media for advertising and sales purposes; presentation of goods on communications media for retail purposes; marketing services; commercial promotions; collection of goods, for others, for presentation and sales purposes; arranging and conducting of fashion shows for advertising and sales promotion purposes; marketing studies are all types of advertising and therefore they are included in the broad category of the opponent’s advertising. Thus, they are identical.

The contested organisation of trade fairs for commercial or advertising purposes is similar to a low degree to the opponent’s advertising, since they are both aimed at promoting the launch and/or sale of a company’s products/services, and may target the same undertaking seeking help with the promotion of their products/services.

Contested services in Class 42

The contested scientific and technological services and research services are identically contained in both lists of services.

Contested services in Class 43

The contested services for providing food and drink are identically contained in both lists of services.

Contested services in Class 45

The contested personal background investigations; adoption agency services; marriage bureaus; dating services; chaperoning; organization of religious meetings are identically contained in both lists of services including synonyms.

The contested adoption placement is included in the broad category of the opponent’s adoption agency services. Therefore, they are identical.

However, the contested personal shopping services for others have no relevant points in common with the opponent’s goods and services in Classes 9, 16, 18, 25, 35, 39, 41, 42, 43 and 45. These goods and services have different natures and purposes as can be gleaned from the wording. Furthermore, they are not provided by the same companies or through the same distribution channels. Even though it is noted that the opponent’s clothing rental; evening dress rental may involve clothing advice, this service is ancillary intended to support or supplement the rental services; they are not considered to be complementary within the meaning of the case law in the sense that they are indispensable for the use of the opponent’s services. Therefore, the contested personal shopping services for others are considered dissimilar to all of the opponent’s goods and services.

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 identical or similar are partly directed at the public at large including professionals (e.g. the scientific goods in Class 9) and partly at business customers with specific professional knowledge or expertise only (e.g. the business support services in Class 35 and scientific and technological services of Class 42). Their degree of attention may vary from low to high depending on the price, (specialised) nature, or terms and conditions of the purchased or contracted goods and services. For example, where the consumer is likely to pay a low attention when purchasing the often inexpensive daily consumer goods such as the newspapers of Class 16, he/she may be highly attentive when acquiring the services of a consultancy firm.

The signs

The signs have already been compared above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

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 trade mark has a reputation in Spain in connection with the services in Classes 35, 36, 37, 39, and 41 for which it is registered.

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).

However, enhanced distinctiveness cannot be validly claimed for goods or services which are not the basis of the opposition under Article 8(1)(b) EUTMR. In the present case, the services for which the opponent claims a reputation in Classes 36 and 37 are not invoked under Article 8(1)(b) EUTMR (see section a. above) and therefore cannot be taken into account.

As regards the remaining services for which a reputation has been claimed, the evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(5) EUTMR, where it was concluded that the earlier trade mark has a reputation in Spain for the following services:

Class 35: Vehicle formalities services.

Class 39: Travel assistance and travel arrangement.

Class 41: Driving schools; car races.

However, these services are dissimilar to the remaining contested services. Indeed, where the opponent’s reputed services (Vehicle formalities services Class 35, Travel assistance and travel arrangement Class 39 and Driving schools; car races Class 41) are all related to the enjoyment or use of vehicles, the contested services are either goods which are not complementary to the opponent’s services or are services of a different nature and purpose which do not involve vehicles and therefore are not likely to be offered by the same undertakings through the same distribution channels. Therefore, the enhanced distinctiveness or reputation of the earlier mark cannot increase the likelihood of confusion in respect of those goods and services (11.11.1997, C-251/95, Sabèl, EU:C:1997:528).

For the remaining goods and services, i.e. for which no reputation has been claimed and for which reputation was not proven, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning in relation to any of the goods and services at hand from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

Global assessment, other arguments and conclusion

The risk that the relevant public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion. The existence thereof must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 22), in particular the degree of similarity between the trade marks and between the goods or services covered, the distinctiveness of the earlier mark (22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19-20), and also the likelihood of association between the signs (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

A global assessment of the likelihood of confusion implies some interdependence between the relevant factors that must be taken into account. Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa (11.11.1997, C-251/95, Sabèl, EU:C:1997:528, § 24; 29.09.1998, C-39/97, Canon, EU:C:1998:442, § 17; 22.06.1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 20).

However, in this case the low degree of visual and aural similarity referred to in section c) above, cannot be counterbalanced by the identity of the goods and services. Contrary to the assessment under Article 8(5) EUTMR where a mere association between the signs is sufficient to establish a link between them, this is not sufficient under Article 8(1)(b) EUTMR where no enhanced distinctiveness for the earlier mark is proven in relation to the relevant identical or similar goods and services.

Taking into account that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23), the differences between the signs on a visual and aural level outweigh the single point of similarity created by the word ‘RACE’. The contested sign contains additional verbal elements, namely the words ‘TRAIN’ and ‘ENTERTAIN’, which result in considerable differences between the signs as regards their appearance, structure, aural pattern and intonation. These additional words more than triple the first part of the contested sign in length and change its rhythm and intonation considerably. Further considering that the other elements ‘TRAIN’ and ‘ENTERTAIN’ of the contested sign have an equal distinctive character as the word ‘RACE’ has inherently and ‘RACE’ neither dominates the contested sign visually, these different elements cannot be dismissed as having no impact on its overall impression which only shows a low degree of similarity with that of the earlier mark.

Therefore, taking all of the above into consideration, and bearing in mind, in particular, that no enhanced distinctiveness of the earlier mark was proven, the overall impression given by the signs is sufficiently different for consumers to safely distinguish between the signs and, consequently, they will be unlikely to believe that the goods originate from the same undertaking or from economically-linked undertakings. Having regard to the differences between the conflicting marks, this assessment is not invalidated by the fact that part of the goods and services are identical.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) EUTMR.

Conclusion

Considering all the above, the opposition is only well founded under Article 8(5) EUTMR insofar as it is directed against the following goods and services:

Class 4: Fuels (including motor spirit)

Class 9: Recorded content

Class 12: Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances; Water vehicles; Amphibious vehicles.

Class 16: Printed matter.

Class 39: Travel arrangement; Travel arrangement; Transport; Packaging and storage of goods.

Class 43: Temporary accommodation.

The opposition is not successful insofar as the remaining goods and services are concerned.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

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

The Opposition Division

Boyana NAYDENOVA

Adriana VAN ROODEN

Catherine MEDINA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

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