OPPOSITION No B 2 712 001

DIADORA S.P.A., Via Montello, 80, 31031, Caerano di San Marco (Treviso), Italy (opponent), represented by Nicola Novaro, Via Marconi, 14, 18013, Diano Castello (Imperia), Italy (professional representative)

a g a i n s t

KEEN Inc., 515 NW 13th Avenue, 97209 Portland, United States (applicant), represented by Michal Havlík, Hálkova 2, 120 00, Praha 2, Czech Republic (professional representative).

On 09/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 712 001 is upheld for all the contested goods.

2. European Union trade mark application No 15 056 211 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 15 056 211 for the word mark ‘KEEN UTILITY’. The opposition is based on European Union trade mark registrations No 1 174 747 for the figurative mark , No 1 753 482 for the figurative mark and the Italian trade mark registration No 880 636 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of all the earlier marks on which the opposition is based, namely on European Union trade mark registrations No 1 174 747 for the figurative mark , No 1 753 482 for the figurative mark and the Italian trade mark registration No 880 636 for the figurative mark .

The contested EUTM application claimed two priority rights in relation to the United States applications No 86 874 691 with the filing date 13/01/2016 for the word mark ‘KEEN UTILITY’ in relation to goods in Class 9 protective safety footwear and No 86 815 790 with the filing date 10/11/2015 for the word mark ‘KEEN UTILITY’ in relation to goods in Class 25 footwear and socks.

Consequently, the date of priority of the contested application in relation to the goods in Class 25 is 10/11/2015 and the date of priority of the contested application in relation to the goods in Class 9 is 13/01/2016.

As a result, the opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Italy from 10/11/2010 to 09/11/2015 inclusive in relation to the goods in Class 25.

Furthermore, the opponent was required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Italy from 13/01/2011 to 12/01/2016 inclusive in relation to the goods in Class 9.

The request was submitted in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade marks for the goods on which the opposition is based. In the Notice of Opposition the opponent mentioned that it wished to base its opposition on all the goods for which the below mentioned trade marks were registered and therefore, the Opposition Division will enumerate them all as follows:

European Union trade mark registration No 1 174 747

Class 9: Glasses, helmets, clothing and footwear for protection against accidents, irradiation and fire.

European Union trade mark registration No 1 753 482

Class 9: Goggles, helmets, clothing and footwear for protection against accidents, irradiation and fire.

Class 25: Clothing, footwear, headgear; Visors [headwear]; Dress shields; Footwear uppers; Frames (Hat -) [skeletons]; Heelpieces for boots; Heelpieces for footwear; Heelpieces for stockings; Heels; Insoles; Fittings of metal for footwear; Non-slip devices for boots; footwear (non-slipping devices for —); Shoes (non-slipping devices for- ); Pockets for clothing; Linings (Ready-made -) [parts of clothing]; Shirt fronts; Shirt yokes; Footwear soles; football boots [shoes] (studs for —); Tips for footwear; Visors (hatmaking); Welts for boots; Boot uppers.

Italian trade mark registration No 880 636

Class 9: Goggles; helmets; protective clothing and footwear against accidents; irradiation and fire.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 14/07/2017, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent initially until 19/09/2017, which was extended until 19/11/2017, to submit evidence of use of the earlier trade marks. On 07/11/2017, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is the following:

• Catalogues 2012-2017 of the opponent’s products, referring to the relevant earlier goods, in particular, protective glasses, helmets, clothing and footwear but also ‘after work’ clothing, footwear and headgear (for trekking). This material refers to the earlier mark ‘UTILITY’. This evidence includes also historical developments of the opponent’s company and its brands (Annex 2).

• Excerpts from the opponent’s Internet website ‘DIADORA UTILITY’. They show the relevant goods such as clothing, shoes, gloves, jackets, trousers, etc, both work and ‘after work’ collections (Annex 3).

• Press releases, mostly in Italian but also in German and English and financial and economic information for the years 2013, 2016 and 2017. These documents show important turnover for most of the EU countries in relation to the earlier mark ‘DIADORA UTILITY’ (Annex 4).

• Copies of numerous publications in French magazine ‘‘BBi’, Spanish magazine ‘Protección Laboral’ or online publications in German at www. technischer handel.com, online publications in Swedish and UK publications in ‘Health and safety’, ‘iFer’, related to the relevant period and goods and showing the earlier mark (Annex 5).

• Decision of the Columbian Trade Mark Office referring to the issue of similarity between ‘UTILITY’ and ‘UTILIYU DIADORA’ (Annex 7).

• Documents (mostly invoices) referring to exhibitions organized, in particular, in Germany (‘Koelnmesse’ in Köln, ‘Premium’ in Berlin), in Italy (‘Milano Bricoday’), Poland (Poznan), France (Rennes) in relation to security clothing, footwear addressed to the opponent’s company ‘Diadora Sport SRL’., being part of the Diadora S.P.A. (Annex 8).

• Numerous invoices referring to the relevant goods and addressed to various clients – opponent’s distributors in Austria, Belgium, Bulgaria, Croatia, Cyprus, Denmark, Estonia, Finland, Frances, Germany, Greece, Ireland and Italy and showing one of the earlier marks .The invoices bear important amounts (Annex 9).

Assessment of evidence

Firstly, in response to the applicant’s arguments that some parts of the evidence are irrelevant, in particular, the invoices issued by Diadora Sport S.R.L. and not from the opponent Diadora SPA, the Opposition Division wishes to clarify that the payment documents issued by Diadora Sport S.R.L. do not constitute the use by the third person which would require the prior consent of the owner of the earlier trade mark. In the present case, the companies Diadora SPA and Diadora Sport S.R.L. are economically related as members of the same group of companies DIADORA and therefore the use of Diadora Sport S.R.L must be considered as authorised use (judgment of 30/01/2015, T-278/13, now, EU:T:2015:57, § 38).

As regards place of use, trade marks must be used in the territory where they are protected.

Numerous invoices issued to various clients/distributors based in different countries of the European Union, press releases and publications in various magazines mostly in Italian, but also in other languages of the EU such as English, German, French, Swedish, and Spanish, addresses of clients and the currency (EUR) on the invoices show that the place of use of the earlier marks is the European Union.

In this regard, if the earlier mark is a European Union mark, it must be used ‘in the Union’ (Articles 18(1) and 47(2) EUTMR). Following ‘Leno Merken’, Article 18(1) EUTMR must be interpreted as meaning that the territorial borders of the Member States should be disregarded when assessing whether an EUTM has been put to ‘genuine use’ in the Union (paragraph 44).

In territorial terms and in view of the unitary character of the EUTM, the appropriate approach is not that of political boundaries but of market(s). Moreover, one of the aims pursued by the EUTM system is to be open to businesses of all kinds and sizes. Therefore, the size of an undertaking is not a relevant factor to establish genuine use.

As the Court indicated in ‘Leno Merken’, it is impossible to determine a priori and in the abstract what territorial scope should be applied in order to determine whether the use of the mark is genuine or not (paragraph 55). All the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (paragraph 58). Use of an EUTM in the UK (judgment of 15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57) or even in London and its immediate surroundings may be geographically sufficient (30/01/2015, T-278/13, now, EU:T:2015:57). Therefore, it is concluded that the earlier marks have been used in the relevant territories (the European Union, including Italy).

As far as the time of use is concerned, according to case-law, it is sufficient that a trade mark should have been put to genuine use during a part of the relevant period for it not to be subject to the sanctions (25/03/2009, T-191/07, Budweiser, EU:T:2009:83, § 108).

The applicant argues that some items of the evidence are dated 2017, therefore outside the relevant period.

In this regard, the Opposition Division notes that the evidence dated outside the relevant time plays a supporting role in relation to the means of evidence referring to the relevant period. The Court held in this context that circumstances subsequent to the relevant point of time may make it possible to confirm or better assess the extent to which the trade mark was used during the relevant period and the real intentions of the proprietor during that time (order of 27/01/2004, C-259/02, Laboratoire de la mer, EU:C:2004:50, § 31). Therefore, it is concluded that the earlier marks were used within the relevant period.

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. Nature of use requires, inter alia, that the earlier trade marks are used as trade marks that are for identifying origin, thus making it possible for the relevant public to distinguish between goods and services of different providers.

Therefore, the use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor.

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, EU:T:2006:65, § 50).

In the present case, the evidence shows the earlier marks used mainly as figurative marks, therefore, in the form in which they have been registered, but also as word marks: ‘UTILITY’ or ‘DIADORA UTILITY’.

Consequently, in the case at hand, the evidence filed shows the use of the earlier marks in its acceptable variations which do not alter their distinctive character within the meaning of Article 18(1)(a) EUTMR.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In its observations the applicant claims that the invoices do not prove the genuine use of the earlier marks in relation to all the goods in question. In this regard, the Opposition Division, indeed, points out that the invoices filed by the opponent have clearly an exemplary character and they refer to some of the earlier goods. On the other hand, they show that the use was constant and intensive during the relevant period.

Furthermore, after a thorough analysis of the material filed by the opponent, in particular, the press releases and magazine publications together with the invoices unequivocally show that the opponent was seriously engaged in sale of some of the relevant goods and they show convincingly that the opponent tried seriously to conquer a share on the relevant market within the relevant territories in relation to security/protective clothing, footwear and headgear and everyday clothing, footwear and headgear.

The Opposition Division concludes that the facts exposed by the opponent in its observations, together with the material submitted show that the use of the earlier marks in relation to some of the goods in question was deemed to be significant enough, not to be concluded as merely token, minimal or notional for the sole purpose of preserving the rights conferred by the earlier mark. Taking into account the nature of the goods in question and highly competitive character of the industry sector of clothing, headgear and footwear, the Opposition Division considers that although the material filed by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods covered by them. After a thorough analysis of the materials submitted by the opponent in the purpose of proving the genuine use of its earlier marks, the Opposition Division comes to the conclusion that the opponent proved the genuine use of its earlier marks only in relation to only some of the goods for which the earlier marks have been registered.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

Therefore, in the present case, the evidence shows genuine use of the trade marks for the following goods:

Class 9: Glasses, helmets, clothing and footwear for protection against accidents, irradiation and fire.

Class 25: Clothing, footwear, headgear.

The opponent’s registered Visors [headwear] and Visors (hatmaking) fall under the broad category of the opponent’s headgear. However, there is no indication, or insufficient indications that the opponent offers remaining goods in Class 25 such as Dress shields; Footwear uppers; Frames (Hat -) [skeletons]; Heelpieces for boots; Heelpieces for footwear; Heelpieces for stockings; Heels; Insoles; Fittings of metal for footwear; Non-slip devices for boots; footwear (non-slipping devices for —); Shoes (non-slipping devices for- ); Pockets for clothing; Linings (Ready-made -) [parts of clothing]; Shirt fronts; Shirt yokes; Footwear soles; football boots [shoes] (studs for —); Tips for footwear; Welts for boots; Boot uppers of the earlier EUTM 1 753 482.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

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

The opposition is based on more than one earlier trade mark. Taking into account the best case scenario for the opponent, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 1 753 482 .

1. The goods

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

Class 9: Glasses, helmets, clothing and footwear for protection against accidents, irradiation and fire.

Class 25: Clothing, footwear, headgear.

The contested goods are the following:

Class 9: Protective safety footwear.

Class 25: Footwear; socks.

Contested goods in Class 9

The contested protective safety footwear overlap with the opponent’s footwear for protection against accidents, irradiation and fire. Therefore, they are identical.

Contested goods in Class 25

The contested footwear is identically mentioned in the opponent’s specification.

The contested socks are included in the broad category of the opponent’s clothing. These goods are, therefore, identical.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised protective nature, or terms and conditions of the goods purchased, in particular in relation to the goods in Class 9.

3. The signs

	KEEN UTILITY
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark is a figurative mark composed of the word ‘UTILITY’, written in rather standard uppercase white letters in bold against a black stripe-like background. Beneath, there is a smaller verbal element ‘DIADORA’, written in standard uppercase black letters. These elements are placed inside an ellipse with a double border.

The contested sign is a word mark consisting of two verbal elements ‘KEEN’ and ‘UTILITY’.

The common element ‘UTILITY’ is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Polish-speaking part of the public. As this element has no meaning for this part of the public, it is distinctive.

The element ‘KEEN’ of the contested sign has no meaning for the relevant public and is therefore distinctive.

The element ‘DIADORA’ of the earlier mark does not convey any clear meaning to the substantial part of the Polish-speaking public, and is, therefore, distinctive. It is possible that this element may be perceived by a part of the relevant public as a female name. However, as mentioned above, the substantial part of the Polish-speaking part of the public will not associate it with any clear concept and, therefore, for reasons of procedural economy, the comparison of the signs conducted hereunder will focus on the perception of the aforementioned substantial part of the Polish-speaking public.

As regards, the figurative elements present in the earlier mark (ellipse with a double contour, background, stylisation of letters), account must be taken that when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Therefore, in view of the composition of the earlier mark, the verbal elements are the ones that will be used to refer to it.

Additionally, the figurative elements of the earlier mark constitute commonplace shapes which will only perform a decorative and non-distinctive function in the earlier mark. The relevant public is accustomed to such decorative (ornamental) elements accompanying commercial brands and they will pay more attention to the distinctive verbal elements of the sign.

Although the earlier mark does not possess an element that could be considered clearly more dominant (visually eye-catching) than other elements, the Opposition Division notes that the verbal element ‘DIADORA’ is subordinated to the verbal element ‘UTILITY’ and, consequently, it plays a secondary role within the sign due to its size and position.

Visually and aurally, the signs coincide in the element ‘UTILITY’. The marks differ in the secondary verbal element ‘DIADORA’ of the earlier mark and the word ‘KEEN’ of the contested sign. Furthermore, the signs differ in the figurative elements of the earlier mark (only visually). Taking into account the abovementioned principle, the figurative elements present in the earlier mark are unable to indicate the origin of the goods however the coincidence in the element ‘UTILITY’, which plays an independent and distinctive role in both signs will be afforded more trade mark significance by consumer.

For the above-mentioned reasons the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the substantial part of the Polish-speaking public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

As concluded above, the conflicting goods are identical.

The signs are visually and aurally similar to an average degree due to the coincidence in the distinctive element ‘UTILITY’. Furthermore, they have no clear concepts that would help consumers to distinguish them.

The inherent distinctiveness of the earlier mark is average.

As stated above in section c) of this decision, the relevant substantial part of the Polish-speaking public will not fail to notice the coincidence in the distinctive and independent element ‘UTILITY’, placed in the prominent position within the earlier mark and reproduced identically as the second element of the contested sign. This word is meaningless for the substantial part of the relevant Polish-speaking public.

The differences between the signs lie in the secondary verbal element of the earlier mark ‘DIADORA’ and in the element ‘KEEN’ of the contested sign, which have an average degree of distinctiveness. Furthermore, the figurative elements present in the earlier mark will be seen by consumers as being, in essence, purely ornamental.

As a rule, when one of the conflicting trade marks or a part thereof is reproduced in the other mark as a distinctive element, the signs will be found similar, which, together with other factors, may lead to a likelihood of confusion.

Additionally, although the average consumers of the category of products concerned are deemed to be reasonably well-informed and reasonably observant and circumspect, average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that the identity between the goods in question outweighs and offsets any differences between the signs.

Additionally, likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related undertakings (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16).

In the present case, the consumer may easily conclude that the identical goods labelled and offered under the contested sign come from the same undertaking or from an economically linked undertaking, as those labelled and offered under the earlier mark due to the reproduction in the contested sign of the element ‘UTILITY’ which is equally present as its main element in the earlier mark. In other words, the relevant consumers might be led to believe that the contested sign designates a new line of products that originate from the opponent’s company as it is a common market practice for brands to advertise a new brand-line thorough the addition of another verbal element, in combination with the main/house brand such as ‘UTILITY’ in the present case.

In its observations, the applicant argues that the signs in question are similar to the extent that they coincide in the element ‘UTILITY’ which if understood, has a non-distinctive character and, therefore, this coincidence cannot lead to the likelihood of confusion between the signs.

In this regard, the Opposition Division notes that if there is a likelihood of confusion in at least one Member State and when it is justifiable for reasons of economy of procedure the Office’s analysis may focus on only one part or parts of the relevant territory where there is a clear likelihood of confusion. Indeed, in the present case, the common element ‘UTILITY is meaningless in Polish and, therefore, distinctive to an average degree and, consequently, the existence of likelihood of confusion for the Polish-speaking part of the public is sufficient to uphold the present opposition.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion in the form of a likelihood of association on the substantial part of the Polish-speaking part of the public and, therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 1 753 482. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier European Union trade mark registration No 1 753 482, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, as the earlier European Union trade mark registration No 1 753 482 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

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

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

The Opposition Division

Gueorgui IVANOV

Monika CISZEWSKA

Marzena MACIAK

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