OPPOSITION No B 2 819 079

O2 Worldwide Limited, 20 Air Street, W1B 5AN London, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, CB25 9PD Cambridge, United Kingdom (professional representative)

a g a i n s t

Aero 2 SP. Z O.O., Aleja Stanów Zjednoczonych 61ª, 04-028 Warszawa, Poland (applicant), represented by Karolina Nowak-Rozycka, Zajęcza 15, 00-352 Warszawa, Poland (professional representative).

On 01/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 819 079 is upheld for all the contested goods and services.

2. European Union trade mark application No 15 798 911 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 and services of European Union trade mark application No 15 798 911 for the figurative mark . The opposition is based on inter alia, European Union trade mark registration No 13 963 137, for the figurative mark , in relation to which the opponent invoked Article 8(1)(b) EUTMR. The opponent also invoked Articles 8(5) and/or 8(1)(b) EUTMR in conjunction with other earlier rights.

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

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

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 European Union trade mark registration No 13 963 137 for the figurative mark , since it is the closest to the contested sign in terms of comparison of signs (as analysed below in paragraph b), whilst covering a sufficiently broad scope of goods and services.

1. The goods and services

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

Class 9: […]; computer software; […]; batteries, electric; […]; battery chargers; […]; downloadable image files; […]; downloadable ring tones for mobile phones; […]; encoded magnetic cards; […]; hands free kits for phones; […]; headphones; […]; integrated circuit cards [smart cards]; […]; modems; […]; telephone apparatus; […]; transmitters [telecommunication]; transmitting sets [telecommunication]; […]; telecommunications apparatus; mobile telecommunication apparatus; […]; digital communication apparatus and instruments; […]; computer hardware; […]; computer game software; […]; telecommunications network apparatus; […]; mobile telephone cases; […]; mobile phone application software; […].

Class 35: Advertising; business management; business administration; office functions; […]; arranging subscriptions to telecommunication services for others; […]; business consultancy (professional -); business information; […]; business research; […]; commercial or industrial management assistance; compilation of information into computer databases; […]; cost price analysis; data search in computer files for others; […]; file management (computerized -); […]; opinion polling; […]; rental of advertising space; rental of advertising time on communication media; […]; sales promotion for others; […]; systemization of information into computer databases; […]; organisation, operation and supervision of loyalty and incentive schemes; […].

Class 38: Telecommunications; […]; information about telecommunication; […]; providing telecommunications connections to a global computer network; […]; rental of modems; rental of telecommunication equipment; […]; television broadcasting; […]; telecommunications services; […].

Class 41: Education; providing of training; entertainment; […]; Arranging and conducting of conferences; Arranging and conducting of congresses; […]; Arranging and conducting of symposiums; […]; Education information; […]; Entertainment information; […]; Film production, other than advertising films; […]; Game services provided on-line from a computer network; […]; Health club services [health and fitness training]; Holiday camp services [entertainment]; […]; Organization of competitions [education or entertainment]; Organization of exhibitions for cultural or educational purposes; […]; Production of music; Production of radio and television programmes; […]; Providing on-line electronic publications, not downloadable; […]; Publication of books; […]; Radio entertainment; […]; Recreation information; […]; Rental of radio and television sets; […]; Rental of sound recordings; […]; Sport camp services; […]; Videotape editing; Videotape film production; […]; ticket information services for entertainment, sporting and cultural events; […]; publishing services; […]; arranging, organising and conducting of competitions, games and quizzes; […]; conducting of phone-in competitions; […]; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network.

The contested goods and services are the following:

Class 9: Telephone apparatus; Smartphones; Mobile data receivers; SIM cards; Telecommunication apparatus; Transmitting sets [telecommunication]; Telecommunications networks; Transmitters [telecommunication]; Portable telecommunications apparatus; Digital telecommunications apparatus; Telecommunications apparatus for use with mobile networks; Modems; Network routers; Wireless routers; Network servers; Radiotelephones; Fixed location telephones; Internet phones; Telephone credit cards; Telecommunications switchboards; Digital cellular phones; Cases for telephones; Computer telephony software; Local mobile telephone systems; Chargers for mobile phones; Batteries for mobile phones; Telephone headsets; Car telephone installations; Devices for hands-free use of mobile phones; Prepaid telephone calling cards, magnetically encoded; Downloadable graphics for mobile phones; Downloadable ring tones for mobile phones; Digital telephone platforms and software; Computer application software for mobile telephones; Computer game software for use on mobile and cellular phones; Cell phones having large keys and numbers that assist users having impaired vision or dexterity; Computer hardware; Software.

Class 35: Sales promotion; Advertising; Advertising by mail order; Advertisement via mobile phone networks; On-line advertising on a computer network; Rental of advertising time on communication media; Dissemination of advertising matter; Publication of publicity materials; Rental of advertisement billboards; Rental of advertisement space and advertising material; Collection of information relating to advertising; Opinion polling; Business consulting; Advertising and marketing consultancy; Professional business consultation relating to the operation of businesses; Business data analysis services; Data processing; Computerised data processing; Collection and systematisation of information into computer databases; Data search in computer files for others; Collection and systematization of business data; Computerized file management; Organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; Prize draws (Organising of -) for promotional purposes; Organisation and management of customer loyalty programs; Organisation, operation and supervision of customer loyalty schemes; News clipping services; Mediation of agreements regarding the sale and purchase of goods; Arranging subscriptions to telecommunication services for others; Negotiation and conclusion of commercial transactions for third parties via telecommunication systems; Arranging of contracts for the purchase and sale of goods and services, for others; Arranging of buying and selling contracts for third parties; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes.

Class 38: Telecommunication services; Fixed and mobile telephone services; Telephone and telecommunication services; Digital network telecommunications services; Operation of wide-band telecommunications networks; Remote transmission of data by means of telecommunications; Rental of telecommunication facilities; Telecommunications consultancy; Providing telecommunications connections to the Internet; Provision of telecommunication access and links to computer databases and to the internet; Telephone telecommunications services provided via prepaid telephone calling cards; Providing telecommunications connections to a global computer network or databases; Providing telecommunications connections to a global communication network or databases; Provision of telephone directory information to assist in telecommunications; Radio telecommunications; Information about telecommunication; Interactive telecommunications services; Operation of a telecommunications network; Rental of telecommunication equipment; Leasing of communications apparatus; Rental of modems; Rental of cellular telephones; Rental of communication apparatus and implements; Provision of telecommunication facilities; Rental of telecommunications lines; Providing telecommunications connections to a global computer network; Electronic transmission of computer programs via the internet; Radio/telephone paging services; Wire agency [communication] services; Television broadcasting; Teleconferencing and video conferencing services; Internet telephony services.

Class 41: Game services provided on-line from a computer network; Providing a computer game that may be accessed network-wide by network users; Publication of printed directories; Publication of books; Multimedia publishing of books; Providing electronic publications; Organising of competitions [entertainment] by telephone; Arranging of competitions via the Internet; Arranging of contests; Organisation of competitions [education or entertainment]; Arranging of conferences; Services for the production of radio programmes; Rental of radio receiving sets; Rental of radio and television sets; Video editing; Production of video recordings; Rental of sound recordings; Production of sound and image recordings on sound and image carriers; Recreational camps; Sport camp services; Preparation of texts for publication; Services for the publication of newsletters; Services for the publication of maps; Providing on-line electronic publications, not downloadable; Publishing services for periodical and non-periodical publications, other than publicity texts; Arranging and conducting of conferences, congresses and symposiums; Organisation of parties; Conducting of exhibitions for entertainment purposes; Organization of exhibitions for cultural or educational purposes; Organization of competitions; Recreation information; Entertainment information; Ticket information services for entertainment events; Health club services [health and fitness training]; Training; Education and training in the field of electronic data processing; Provision of education on-line from a computer database or via the internet or extranets; Education information; Information relating to education, provided on-line from a computer database or the internet.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services. The term ‘namely’, used in the applicant’s list of services in Class 35 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.

As a preliminary remark, the Opposition Division points out that the applicant did not file any arguments regarding the comparison of goods and services. Therefore, the Opposition Division cannot take into account any arguments in this regard.

Contested goods in Class 9

Telephone apparatus; telecommunication apparatus; transmitting sets [telecommunication]; telecommunications networks; Transmitters [telecommunication]; portable telecommunications apparatus; digital telecommunications apparatus; telecommunications apparatus for use with mobile networks; modems; cases for telephones; computer telephony software; devices for hands-free use of mobile phones; downloadable ring tones for mobile phones; digital telephone platforms and software; computer application software for mobile telephones; computer hardware; software are contained in both lists of goods in Class 9 despite the slightly different wording in some cases. They are, therefore, identical.

The contested smartphones; mobile data receivers; radiotelephones; fixed location telephones; internet phones; digital cellular phones; cell phones having large keys and numbers that assist users having impaired vision or dexterity are included in the broad category of, or overlap with, the opponent’s telephone apparatus. Therefore, they are identical.

The contested SIM cards are integrated circuits that are intended to securely store the international mobile subscriber identity (IMSI) number and its related key, which are used to identify and authenticate subscribers on mobile telephony devices (such as mobile phones and computers). They are, consequently, included in the broad category of the opponent’s integrated circuit cards [smart cards]. Therefore, they are identical.

The contested network routers; wireless routers; network servers; telecommunications switchboards; local mobile telephone systems; car telephone installations are included in the broad category of the opponent’s telecommunications apparatus. The contested chargers for mobile phones are included in the broad category of the opponent’s battery chargers. The contested batteries for mobile phones are included in the broad category of the opponent’s batteries, electric. The contested telephone headsets are included in the broad category of the opponent’s headphones. The contested downloadable graphics for mobile phones are included in the broad category of the opponent’s downloadable image files. The contested computer game software for use on mobile and cellular phones are included in the broad category of the opponent’s computer game software. Therefore, all these goods are identical.

The contested telephone credit cards; prepaid telephone calling cards, magnetically encoded are included in the broad category of, or overlap with, the opponent’s encoded magnetic cards. Therefore, they are identical.

Contested services in Class 35

Sales promotion; advertising; rental of advertising time on communication media; rental of advertisement space; opinion polling; business consulting; professional business consultation relating to the operation of businesses; collection and systematisation of information into computer databases; data search in computer files for others; computerized file management; organisation and management of customer loyalty programs; organisation, operation and supervision of customer loyalty schemes; arranging subscriptions to telecommunication services for others are contained in both lists of services in Class 35 despite the slightly different wording in some cases. Therefore, they are identical.

The contested advertising by mail order; advertisement via mobile phone networks; on-line advertising on a computer network; dissemination of advertising matter; publication of publicity materials; rental of advertisement billboards; rental of advertising material; collection of information relating to advertising; advertising and marketing consultancy; organization of events, exhibitions, fairs and shows for commercial, promotional and advertising purposes; prize draws (organising of -) for promotional purposes; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes are included in, or overlap with, the broad category of the opponent’s advertising. Therefore, they are identical.

The contested business data analysis services includes, as a broader category the opponent’s cost price analysis. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested data processing; computerised data processing are included in the broad category of the opponent’s office functions. The contested collection and systematization of business data are included in the broad category of the opponent’s business research. The contested news clipping services are included in the broad category of the opponent’s business information. The contested mediation of agreements regarding the sale and purchase of goods; negotiation and conclusion of commercial transactions for third parties via telecommunication systems; arranging of contracts for the purchase and sale of goods and services, for others; arranging of buying and selling contracts for third parties overlap with the opponent’s commercial or industrial management assistance, since commercial management consists in the identification and development of business opportunities and the profitable management of projects and contracts, from inception to completion. Therefore, all these services are identical.

Contested services in Class 38

Telecommunication services (listed twice in the contested list), information about telecommunication, rental of telecommunication equipment, rental of modems, providing telecommunications connections to a global computer network and television broadcasting are equally designated by both marks, and all the remaining contested services, as previously reproduced, fall under the opponent’s broader telecommunications. Therefore, they are identical.

Contested services in Class 41

Game services provided on-line from a computer network; providing a computer game that may be accessed network-wide by network users; publication of books; organising of competitions [entertainment] by telephone; arranging of contests; organisation of competitions [education or entertainment]; arranging of conferences; services for the production of radio programmes; rental of radio receiving sets; rental of radio and television sets; video editing; production of video recordings; rental of sound recordings; recreational camps; sport camp services; providing on-line electronic publications, not downloadable; arranging and conducting of conferences, congresses and symposiums; organization of exhibitions for cultural or educational purposes; organization of competitions; recreation information; entertainment information; ticket information services for entertainment events; health club services [health and fitness training]; training; education information; information relating to education, provided on-line from a computer database or the internet are contained in both lists of services in Class 41 despite the slightly different wording in some cases. Therefore, they are identical.

The contested publication of printed directories; multimedia publishing of books; providing electronic publications; preparation of texts for publication; services for the publication of newsletters; services for the publication of maps; publishing services for periodical and non-periodical publications, other than publicity texts are included in the broad category of the opponent’s publishing services. The contested arranging of competitions via the Internet overlap with the opponent’s organization of competitions [education or entertainment] since both may consist of educational or entertainment online competitions. The contested production of sound and image recordings on sound and image carriers overlap with the opponent’s production of music; film production, other than advertising films since both may consist of music or film produced on sound and image carriers. The contested organisation of parties; conducting of exhibitions for entertainment purposes are included in the broad category of the opponent’s entertainment. The contested education and training in the field of electronic data processing; provision of education on-line from a computer database or via the internet or extranets are included in the broad category of the opponent’s education. Therefore, all these services 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 goods and services found to be identical are partly directed at the public at large and partly at business customers with specific professional knowledge or expertise, as in the case of advertising, opinion polling, or business data analysis services.

The public’s degree of attentiveness may vary from average to high, depending on the price and sophistication of the goods purchased (e.g., regarding goods such as smartphones, which may be scrutinised thoroughly before buying), or the economic consequences that some of the services may imply for their users (e.g., as regards advertising, opinion polling, or business data analysis services).

3. The signs

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 element ‘O²’ of the earlier mark has no meaning as such for the relevant public. However, it cannot be ruled out that, at least part of the relevant public, perceives the superscript 2 as the mathematical concept of quadratic or squaring (raising to the power of 2, i.e. the result of multiplying a number by itself) and associates the sign with ‘O to the power of 2’. In any case, since it either has no meaning or the meaning grasped has no bearing to the relevant goods and services, it is, therefore, distinctive.

In its observations, the applicant claims that ‘relevant customers are well used to seeing trade marks of various entrepreneurs that use a one or two-letter element accompanied by the word mobile’ with regard to the relevant services. In support of its argument the applicant lists six trade mark registrations in the EUIPO. In this respect, 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 on 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 one or two-letter element accompanied by the word ‘mobile’. Under these circumstances, the applicant’s claims must be set aside.

As regards the contested sign, even though the applicant claims that it consists of the element ‘a2’ which stands for the short form of its name ‘Aero 2’, as rightly stated by the opponent, due to the presentation of the letter ‘a’, this could be easily misconstrued by a significant part of the relevant public as a lower case letter ‘o’ with a small ‘tail’ since it does not fully resemble a letter ‘a’ in its traditional form. Furthermore, as also argued by the opponent, it is the perception of consumers that is relevant for the present proceedings and the Opposition Division points out that the intention behind the creation of a trade mark has no impact on the perception of the relevant public. Therefore, this argument put forward by the applicant is irrelevant. Consequently, the Opposition Division will focus the comparison of the signs on the substantial part of the relevant public that perceives a lower case letter ‘o’ in the contested sign, since it constitutes the best-case scenario for likelihood of confusion to occur. In addition, the number ‘2’ that follows the letter ‘o’, in spite of its size, seems to be slightly superscript. Therefore, the element ‘o2’ may be associated with the above-mentioned mathematical concept and perceived as ‘o to the power of 2’. Since it has no meaning related to the relevant goods and services, it is distinctive.

On the other hand, most of the relevant public will associate the English word, ‘mobile’ with ‘mobile phone’, since it is identical or very close to the equivalent words in some official languages in the relevant territory (e.g. ‘mobile’ in French, ‘móvil’ in Spanish, ‘mobil’ in Czech, ‘mobilni’ in Croatian, ‘mobiel’ in Dutch, ‘mobilus’ in Lithuanian, ‘mobilais’ in Latvian, ‘mobiilne’ in Estonian, etc.) or is commonly used in the relevant territory in the field of telecommunications. Bearing in mind that part of the relevant goods and services are phones or other goods and services related to telecommunications, this element is weak or even non-distinctive for part of these goods and services as, for example, telephone apparatus in Class 9, advertisement via mobile phone networks in Class 35, telecommunication services in Class 38 or providing a computer game that may be accessed network-wide by network users Class 41. The applicant confirms in its observations that this element ‘refers to the type of services offered by it’. This element is normally distinctive for the remaining goods and services not related to telecommunications.

The applicant claims that ‘the contested sign possesses a high distinctive character which is due to the fancy combination of its elements and a creative font’. However, at least according to the relevant legal framework, a trade mark cannot have per se an inherently high distinctive character since the latter can only be acquired by use on the market. Furthermore, the lettering of the contested mark is not particularly striking and, therefore, the applicant’s argument should be dismissed.

The earlier mark has no element that could be considered clearly more dominant than other elements.

The element ‘o2’ in the contested sign is the dominant element as it is the most eye-catching as regards the element ‘mobile’, which is written in a smaller lettering at the bottom of the sign.

As to the slightly figurative nature of the contested sign, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, the stylisation of the signs must be considered not that elaborate or sophisticated that it will lead consumer’s attention away from the verbal elements it embellishes.

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right (and from top to bottom), which makes the part placed at the left (or upper part) of the sign the initial part, and therefore the one that first catches the attention of the reader.

Visually, despite the figurative rendition in the signs, they coincide in the letter ‘O/o’ with superscript 2, which constitutes the only element of the earlier mark and the first and most dominant element of the contested sign, and also its most distinctive element regarding part of the relevant goods and services.

The signs differ in the secondary verbal element ‘mobile’ of the contested sign, as well as in the fairly standard typeface of both signs, which will have less of an impact on the consumer. The signs also differ in the size of the respective letter ‘O/o’ and number ‘2’.

Therefore, and bearing in mind the impact of the various elements of the signs, they are visually similar to at least an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound ‘O2’, ‘O superscript 2’ or ‘O to the power of 2’, or equivalents in the respective languages. Given that ‘mobile’ will be understood as referring to part of the relevant goods and services, combined with its less eye-catching representation and positioning, it is not probable that it will be referred to aurally.

Therefore, considering the above-mentioned and also the impact of the various elements of the signs, these are aurally at least highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the distinctive issues rendering the marks similar to at least 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.

Even though the Opponent in general argued that its ‘O2/O_2’’ marks enjoy a high reputation, it did not explicitly claim that the mark examined in the present decision, namely a letter ‘O’ with superscript 2 (figurative), is particularly distinctive by virtue of intensive use or reputation. In any case, for reasons of procedural economy, the evidence filed by the opponent to prove the above-mentioned 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 and 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

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

It has been established in the previous sections of this decision that the contested goods and services are identical to the goods and services on which the opposition is based. They are directed at the public at large and at professional customers with specific knowledge or expertise and a degree of attention that will vary from average to high. The distinctiveness of the earlier mark is normal.

It has also been concluded that the signs are visually and conceptually similar at least to an average degree and aurally at least highly similar, the earlier mark ‘O²’ being fully reproduced in the contested sign as the first independent element with the addition of a secondary element, as explained before, and with some minor visual differences. The Opposition Division agrees with the opponent’s contention regarding the importance of the degree of aural similarity taking into account that an important part of the relevant goods and services are commonly ordered over the phone (e.g. telecommunication services).

Furthermore, account should be taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with 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).

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards identical goods and services. Therefore, on account of the principle of imperfect recollection, the relevant public, despite paying a higher than average degree of attention in connection with part of the goods and services, may believe that these goods and services come from the same undertaking or, at least, economically-linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 13 963 137. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier right No 13 963 137, on the basis of the ground of Article 8(1)(b) EUTMR, leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent and their proof of use related issues (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268), the other ground of the opposition, namely Article 8(5) EUTMR, or the opponent’s claim regarding the existence of reputation and a family of marks.

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

Vanessa PAGE

Eva Inés PEREZ SANTONJA

Carlos MATEO PÉREZ

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.