OPPOSITION No B 2 841 735

Perform Investment Limited, Hanover House, Plane Tree Crescent, Feltham TW13 7BZ, United Kingdom (opponent), represented by Bird & Bird LLP, 12 New Fetter Lane, London, City of London, EC4A 1JP, United Kingdom (professional representative)

a g a i n s t

Electronic Systems Software Solutions Inc, 1795 Ironstone Manor, Suite 4, Pickering Ontario L1W 3W9, Canada (applicant), represented by Fladgate LLP, 16 Great Queen Street, London WC2B 5DG, United Kingdom (professional representative).

On 22/05/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 841 735 is upheld for all the contested services.

2. European Union trade mark application No 15 660 517 is rejected in its entirety.

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

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 15 660 517 for the word mark ‘ZoneTV’ in Classes 38, 41 and 42. The opposition is based on international trade mark registration No 1 318 032 designating the European Union and UK trade mark registration No 3 149 512, for the word marks ‘DA ZONE’. The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s UK trade mark registration No 3 149 512 for the word mark ‘DA ZONE’.

1. The services

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

Class 38: Broadcasting services; communications and telecommunications ; broadcasting of audiovisual content and multimedia content over the internet and other communication networks; streaming of audiovisual content and multimedia content; video-on-demand and near-video-on-demand transmission services; video-on-demand and near-video-on-demand streaming services; over-the-top broadcasting, transmission and delivery of sports-related content; subscription television broadcasting; subscription over-the-top broadcasting; on-line delivered television services; computer-aided transmission of audiovisual broadcasts; interactive television broadcasting services; transmission, broadcast, reception, delivery and conveyance of audiovisual content, multimedia content, recorded programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and podcasts by means of electronic communications systems, telephonic, telegraphic, cable and satellite transmissions and Internet protocol; webcasting services; podcasting services; provision of access and links to computer databases and the Internet; leasing access time to a computer databases; providing user access to the Internet; messaging services; online services for users to share messages, information, comments, photos, audio and/or videos content to form virtual communities and to engage in social networking; providing internet chatrooms, forums and message boards; consultancy, advisory and information services relating to any of the aforesaid services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels.

Class 41: Entertainment services relating to sporting events, sports entertainment, sport and sports; television entertainment services; entertainment services provided in connection with a video-on-demand or near-video-on-demand service; entertainment, sporting and cultural activities and events ; providing non-downloadable audiovisual content, multimedia content, recorded programmes for television and radio, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information and data, all relating to sporting events, sports entertainment, sport and sports; providing news, information, reviews, and recommendations regarding entertainment, television programmes, movies, sporting events, sports entertainment, sport, sports, audiovisual entertainment content and multimedia entertainment content; providing information in the nature of pre-game and post-game recaps and analysis, line-up introductions, press conferences, venue announcements, historical documentaries, scenes from movies and TV shows, and video highlights, previews, analysis, interviews and discussions regarding sports entertainment, athletes, sports, sport, sporting events, sporting competitions, and sporting venues; organisation, presentation, distribution, syndication, networking and rental of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; organisation, production, presentation and provision of shows, competitions, contests, games, quizzes and events; preparation, development, creation, production and editing of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; non-downloadable audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; provision of audio visual content of third parties relating to entertainment, sport, sports and culture via a video-on-demand service or a video-on-demand service; providing television programs, movies, videos, webcasts, and images of third parties via a global computer network; translation, dubbing and sub-titling services; interactive entertainment services in the nature of interactive television programmes, interactive games, interactive television shows, interactive contests, interactive game shows, interactive competitions, interactive quizzes, interactive studio entertainment, interactive audience participation events and interactive live entertainment services; game services provided on-line from a computer network; online publishing; electronic publishing services; publishing of information relating to sport and sports; provision of non-downloadable electronic publications online, through the Internet, applications or other communication networks, including all the aforesaid with embedded audiovisual content, multimedia content, commentary, videos, music, texts, still or moving images, graphics, cartoons, sound, voice, hyperlinks, or a combination thereof; publication of printed materials, printed publications, electronic publications, periodicals, newsletters, magazines, journals, texts, news articles, editorials, books, posters; fan clubs services; data analysis services relating to sports results, sports personalities, sports and sporting statistics, sports news and sports events; consultancy, advisory and information services relating to any of the aforesaid services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels.

Class 42: Software consultancy, design, analysis and development services ; installation, rental, updating and maintenance of computer software; computer services; design services; computer services for interactive communications and broadcasting; design, development , maintenance and rental of software and digital applications for interactive communications and broadcasting; computer services for storing, accessing, retrieval, broadcasting, transmission, reception, delivery and conveyance of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; design, development , maintenance and rental of software for storing, accessing, retrieval, broadcasting, transmission, reception, delivery and conveyance of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; computer services for accessing databases of entertainment and sporting content and information; application service provider (ASP) services, namely, hosting computer software applications of others; application service provider (ASP) featuring software to enable or facilitate the uploading, downloading, streaming, posting, displaying, blogging, linking, sharing or otherwise providing electronic media, videos, video files, photographs, still and moving images, graphics, voice, music, text, messages, news, information, data or information over communication networks; hosting of digital content, websites, webpages, digital applications, audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, radio programmes, films, motion pictures, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media; computerised data analysis services; providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; design, drawing and commissioned writing all for the compilation of web pages on the Internet; development and design services in relation to electronic publishing; operation of search engines; information, advisory and consultancy services relating to any of the aforementioned services; including all the aforesaid services provided through communication networks, global computer networks, cable, satellite, including provided on-line from a computer, a computer database, the Internet, websites, social media, search engines, mobile applications, digital applications, wireless devices, mobile devices, gaming consoles, blogs or other communication channels

The contested services, after the limitation filed by the applicant on 31/01/2018, are the following:

Class 38: Internet services namely, the operation of an Internet website relating to the development, production, distribution, transmission and broadcast of information and entertainment content, namely television programming and applications; delivery of audio and visual content in the field of entertainment, namely, films, television programs, streaming programs and musical performances via televisions, Set-Top-Boxes (STB), telephones, mobile phones, PDAs and computers; providing a viewer with internet links and online access, via televisions, Set-Top-Boxes (STB), telephones, mobile phones, PDAs, computers, computer networks and the internet to access information and content in the field of entertainment; none of the aforesaid relating to digital agency services, or information, advisory and consultancy services relating to digital advertising and digital marketing.

Class 41: Entertainment services, namely the development and production of television programming for transmission and broadcast via the media of television, satellite, computer networks, social networking services, computers, Set-Top-Boxes (STB), mobile and handheld electronic devices, PDAs, telephones, the Internet and e-mail; entertainment services namely, the provision of an ongoing television series and television programs through the mediums of television, Set-Top-Boxes (STB), computers, computer networks, mobile and handheld electronic devices, and the Internet; the provision of entertainment content, namely films, television programs, streaming programs and musical performances via television, Set-Top-Boxes (STB), computers, computer networks, telephones, mobile phones, handheld electronic devices, PDAs and the Internet; development, production and distribution of television programming and of specialty and premium television programming for television channels, networks and applications and for companies distributing television programs; development and production of aggregated and curated videos, programs, photographs, meta, images, text and other data accessible via download or streaming methods over the Internet; development and production of television programming and applications for on-line distribution, transmission and broadcast through computer networks, social networking services, computers, mobile phones, handheld devices, PDAs, Set-Top-Boxes (STB), telephones and the Internet; and distribution and sale of audio and video television programming and the provision of such programming to cable and satellite retailers of pay or on demand television and entertainment services and applications for eventual viewing by individual cable and satellite subscribers and other members of the public; none of the aforesaid relating to digital agency services, or information, advisory and consultancy services relating to digital advertising and digital marketing.

Class 42: Design and development of software executed on computers, televisions, Set-Top-Boxes (STB), mobile and handheld electronic devices, for the streaming or download delivery of aggregated and curated content in all media; providing online, non-downloadable software application to permit consumers to use Set-Top-Boxes (STB), mobile phones and personal communication devices, for uploading, downloading, publishing, streaming, sequential viewing, viewing, previewing, and manipulating videos, programmes, photographs, images, text, electronic programme guides and audio content originating from multiple types of recording, playing, and storage apparatus on local, wide-area and global communications networks; development and production of applications for transmission, distribution and broadcast via the media of television, satellite, computer networks, social networking services, computers, Set-Top-Boxes (STB), mobile and handheld electronic devices, PDAs, telephones, the Internet and e-mail; none of the aforesaid relating to digital agency services, or information, advisory and consultancy services relating to digital advertising and digital marketing.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

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

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.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

Contested services in Class 38

The contested internet services namely, the operation of an Internet website relating to the development, production, distribution, transmission and broadcast of information and entertainment content, namely television programming and applications; delivery of audio and visual content in the field of entertainment, namely, films, television programs, streaming programs and musical performances via televisions, Set-Top-Boxes (STB), telephones, mobile phones, PDAs and computers; providing a viewer with internet links and online access, via televisions, Set-Top-Boxes (STB), telephones, mobile phones, PDAs, computers, computer networks and the internet to access information and content in the field of entertainment; none of the aforesaid relating to digital agency services, or information, advisory and consultancy services relating to digital advertising and digital marketing are included in the broad categories of, or overlap with, the opponent’s communications and telecommunications. Therefore, they are identical.

Contested services in Class 41

The contested entertainment services, namely the development and production of television programming for transmission and broadcast via the media of television, satellite, computer networks, social networking services, computers, Set-Top-Boxes (STB), mobile and handheld electronic devices, PDAs, telephones, the Internet and e-mail; entertainment services namely, the provision of an ongoing television series and television programs through the mediums of television, Set-Top-Boxes (STB), computers, computer networks, mobile and handheld electronic devices, and the Internet; the provision of entertainment content, namely films, television programs, streaming programs and musical performances via television, Set-Top-Boxes (STB), computers, computer networks, telephones, mobile phones, handheld electronic devices, PDAs and the Internet; development, production and distribution of television programming and of specialty and premium television programming for television channels, networks and applications and for companies distributing television programs; development and production of television programming for on-line distribution, transmission and broadcast through computer networks, social networking services, computers, mobile phones, handheld devices, PDAs, Set-Top-Boxes (STB), telephones and the Internet; and distribution and sale of audio and video television programming and the provision of such programming to cable and satellite retailers of pay or on demand television and entertainment services and applications for eventual viewing by individual cable and satellite subscribers and other members of the public; none of the aforesaid relating to digital agency services, or information, advisory and consultancy services relating to digital advertising and digital marketing are all audio, video and multimedia production services that are included in the broad category of, or overlap with, the opponent’s television entertainment services. Therefore, they are identical.

The contested development and production of aggregated and curated videos, programs, photographs, meta, images, text and other data accessible via download or streaming methods over the Internet are at least similar to the opponent’s preparation, development, creation, production and editing of audiovisual content, multimedia content, television programmes, television shows, sporting broadcasts, sporting shows, live broadcasts of sporting events, recorded sporting events, documentaries, sporting commentaries, podcasts, webcasts, video, video files, motion picture films, audio-visual recordings, still and moving images, graphics, voice, music, text, messages, news, information, data and television productions for all media. The services are provided by the same undertakings, target the same relevant public, can have the same distribution channels and are in competition.

The contested development and production of applications for on-line distribution, transmission and broadcast through computer networks, social networking services, computers, mobile phones, handheld devices, PDAs, Set-Top-Boxes (STB), telephones and the Internet are at least similar to the opponent’s software consultancy, design, analysis and development in Class 42. The service have the same purpose, development of applications, are provided by the same companies, can target the same relevant public and have the same distribution channels.

Contested services in Class 42

The contested design and development of software executed on computers, televisions, Set-Top-Boxes (STB), mobile and handheld electronic devices, for the streaming or download delivery of aggregated and curated content in all media; providing online, non-downloadable software application to permit consumers to use Set-Top-Boxes (STB), mobile phones and personal communication devices, for uploading, downloading, publishing, streaming, sequential viewing, viewing, previewing, and manipulating videos, programmes, photographs, images, text, electronic programme guides and audio content originating from multiple types of recording, playing, and storage apparatus on local, wide-area and global communications networks; development and production of applications for transmission, distribution and broadcast via the media of television, satellite, computer networks, social networking services, computers, Set-Top-Boxes (STB), mobile and handheld electronic devices, PDAs, telephones, the Internet and e-mail; none of the aforesaid relating to digital agency services, or information, advisory and consultancy services relating to digital advertising and digital marketing are included in the broad category of the opponent’s software consultancy, design, analysis and development services. Therefore, they are 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 services 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 nature, or terms and conditions of the services purchased.

3. The signs

DA ZONE	ZoneTV
Earlier trade mark	Contested sign

The relevant territory is the United Kingdom.

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).

Both marks are word marks. Since the protection conferred by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic features which that mark might possess (22/05/2008, T-254/06, RadioCom, EU:T:2008:165, § 43), it is irrelevant whether a word mark is depicted in lower or upper case letters, or in a combination thereof.

The earlier mark is the word mark ‘DA ZONE’. For part of the public in the relevant territory, the word ‘DA’ is meaningless. However, as argued by the applicant, it can also be perceived by another part of the public as a non-standard spelling of ‘the’. In any case it is distinctive to an average degree as it has no meaning in relation to the services in question.

The word ‘Zone’ will be understood by part of the relevant public as ‘an area or stretch of land having a particular characteristic, purpose, or use, or subject to particular restrictions’ (information extracted from Oxford Dictionaries online on 20/04/2018 at www.oxforddictionaries.com). Contrary to the applicant’s argument, since it does not describe or allude to any characteristics of the relevant services, it is considered distinctive to an average degree.

As argued by the applicant, for those consumers that will understand the word ‘DA’ as a non-standard spelling of ‘the’, the earlier mark can be perceived as ‘the zone’, ‘(especially in sport) a state of such concentration that one is able to perform at the peak of one's physical or mental capabilities’ (information extracted from Oxford Dictionaries online on 20/04/2018 at www.oxforddictionaries.com). The applicant also argues that additionally, the term ‘Zone’ can be understood in sport as ‘a specific area of the rink, filed or court; spec., one to be defended by a particular player’. However, in view of the Opposition Division, the majority of the public will not perceive such meanings.

Therefore, the Opposition Division finds it appropriate to focus on the part of the public that will not perceive such meanings, but will understand the word ‘Zone’ as explained above: ‘an area or stretch of land having a particular characteristic, purpose, or use, or subject to particular restrictions’.

The contested sign as a whole has no meaning for the relevant public. However, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). Moreover, in this case, the use of uppercase letters for the word ‘TV’, introduces a visual separation between the words.

Therefore, the relevant public will perceive the words ‘Zone’ and ‘TV’ in the sign.

The element ‘TV’ will be understood by the relevant public as an abbreviation for the word ‘television’. Bearing in mind the relevant services, namely telecommunications in Class 38, entertainment in Class 41 and software design, analysis and development in Class 42 it is considered weak as it indicates that the services are related to television media, services broadcasted through television channels or related to the design and development of applications for the broadcasting of content in television media.

The word ‘Zone’ will be understood with the further above explained meaning and is considered distinctive to an average degree for the contested services, as it is not descriptive, allusive or otherwise weak/non-distinctive.

Contrary to the opponent’s argument, the marks have no dominant elements as they are word marks.

Visually and aurally, the signs coincide in the word ‘Zone’ and are composed by a total of six letters. However, they differ in the initial word ‘DA’ of the earlier mark, and the weak word ‘TV’ at the end of the contested sign.

In the applicant’s view, the signs at issue are short signs. It is true that the length of signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements and, therefore, in short words small differences may frequently lead to a different overall impression whereas the public is less aware of differences between longer signs. However, in the present case, contrary to the applicant’s view, it should be noted that, whilst not particularly long, the signs at issue are not short either as they both contain six letters.

Taking into account the weights of the different elements as explained above, it is considered that the signs are visually and aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier mark will be perceived as a reference to a generic area, due to the presence of the word ‘Zone’. The contested sign will be perceived as a particular area to provide television services. Considering that the common concept is distinctive to an average degree and the differing element ‘TV’ in the contested sign is weak, the signs are conceptually similar at least to an average degree.

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

4. Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 services 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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

As it has been concluded in the previous sections of this decision, the contested services are identical or at least similar to the opponent’s services. The earlier mark has a normal degree of distinctiveness. The relevant public is the public at large and business customers whose level of attention may vary from average to higher than average.

It has also been concluded that the signs are visually and aurally similar to an average degree and conceptually similar at least to an average degree on account of the coinciding distinctive element ‘ZONE’. The impact of the additional word ‘DA’ in the earlier mark and the word ‘TV’ added at the end of the contested sign, is limited in the overall impression of the signs.

Moreover, consumers only rarely have the chance to make a direct comparison between the different marks but must place their trust in the imperfect picture of them that they have kept in their mind (judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323). 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, the Opposition Division considers that the differences between the signs are not sufficient to enable the consumers to safely distinguish between the marks at issue and thus they are likely to believe that the services originate from the same undertaking or from economically related undertakings.

Therefore, the relevant of the public may believe that these services come from the same undertaking or, at least, economically-linked undertakings. Given that a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application, there is no need to analyse the remaining part of the public.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that many trade marks include the terms ‘ZONE’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of register data only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘ZONE’. Under these circumstances, the applicant’s claims must be set aside.

It follows from the above that the contested trade mark must be rejected for all the contested services.

As the earlier right UK trade mark registration No 3 149 512 leads to the success of the opposition and to the rejection of the contested trade mark for all the services against which the opposition was directed, there is no need to examine the other earlier right 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

Alexandra APOSTOLAKIS

Jorge ZARAGOZA GOMEZ

Martin EBERL

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

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