OPPOSITION No B 2 884 263

Dopat S.A., València Parc Tecnologic, C/ Charles Robert Darwin, 34-36, 46980 Paterna (Valencia), Spain (opponent), represented by Elisa Peris Despacho Profesional, S.L., C/ Profesor Beltran Baguena, Nº 4, Of. 116 (Edificio Trade Center), 46009 Valencia, Spain (professional representative)

a g a i n s t

Colway International S.A., ul. Grzybowska 61a/2101, 00-844 Warsaw, Poland (applicant), represented by Agnieszka Elżbieta Przyborska-Bojanowska, ul. Dębowa 35, 80-297 Banino, Poland (professional representative).

On 13/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 884 263 is partially upheld, namely for the following contested services:

Class 35: Direct ordering of goods and services via computer or telephone, for others; Demonstration/presentation of all the aforesaid goods via electronic media, including via teleshopping and homeshopping; Arranging and conducting of exhibitions for commercial purposes, presentations of goods and services, by traditional and electronic means.

2. European Union trade mark application No 16 044 505 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 044 505 for the figurative mark , namely against all the goods and services in Classes 3, 5 and 35. The opposition is based on European Union trade mark registration No 10 374 882 for the figurative mark and on European Union trade mark registration No 9 010 323 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 European Union trade mark registration No 9 010 323. The applicant worded its request as follows: ‘We hereby request the applicant to provide proof of use of the EUTM Nr 009010323 especially for cosmetics (class 3), and pharmaceutical preparations/ products and preparations for medical purposes (class 5) and retailing&selling cosmetics (class 35).’ As there is no reason to consider the word ‘especially’ as introducing an exhaustive list of goods and services for which proof of use is requested, this request qualifies as a request for proof of use for all the goods and services on which the opposition has been based.

The date of filing of the contested application is 29/12/2016. The opponent was therefore required to prove that the abovementioned trade mark was put to genuine use in the European Union from 29/12/2011 to 28/12/2016 inclusive.

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

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely for various goods and services in Classes 1, 2, 3, 4, 5, 6, 7, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41, 42, 43, 44 and 45. The full list of the goods and services on which the opposition is based (which is not reproduced here due to its length) is reproduced on a separate sheet annexed to this decision.

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 27/09/2019, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office initially gave the opponent until 01/12/2019 to submit evidence of use of the abovementioned trade mark. On 28/01/2020, within the time limit which had been extended until 01/02/2020 upon the opponent’s request, the opponent submitted the following evidence of use.

 ITEM 1: Sales figures for 2013 and 2014 for almost 30 countries, including more than 15 EU Member States.

The figures are given in Excel-sheets, and provide one amount for each country, either in EUR, GBP or USD.

 ITEM 2: 28 undated pages of what the opponent calls a ‘Dossier COOLWAY trademark. (Story about the mark, evolution through time, products, etc.)’

In this dossier, which seems to be a compilation of artwork related to the earlier mark (e.g. a depiction (drawing) of the earlier mark, brief descriptions of what the earlier mark stands for, mood photos), it is mentioned that the opponent has become ‘one of European´s Footwear Leading for Young People’ (sic) and ‘also offers accessories such as handbags, scarves, jewelry, sunglasses or perfumes’. There is also a reference to ‘11 years of history’.

The earlier mark itself is not shown on any goods or services.

 ITEMS 3 and 4: a decision dated 13/04/2015 by ‘INAPI’, which is the Chilean national institute for intellectual property dated 13/04/2015, in an opposition brought against by the opponent against a trademark application ‘COOLWAY’ where the notoriety of the mark ‘COOLWAY’ is recognized, and its translation into English.

In the decision it is explained, as per the translation submitted by the opponent, that the opponent had submitted before INAPI copies of registrations for ‘FOOTWEAR COOL WAY’ in the trade mark registers of Bolivia, the United Arab Emirates and WIPO, and for ‘COOL WAY’ in the trade mark registers of the Cayman Islands, EUIPO and Paraguay, as well as advertising images and catalogs corresponding to the 2010 clothing season of the trademark ‘COOL WAY’ and images obtained from the website www.coolway.com in which ‘COOL WAY’ products are exhibited from 2008 to 2014.

It is considered in the decision, again as per the translation submitted by the opponent:

‘In view of the extent of protection accredited abroad, and in accordance with the standards contained in the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, adopted by the Assembly of the Paris Union and by the General Assembly of WIPO in September 1999, it is possible to have the reputation of the applicant's trade mark proven to be true, all of which prevent a favorable ruling on the mark applied for’.

 ITEM 5: a selection of 4 invoices of sales of products in different EU countries, namely invoices of 07/12/2010, 13/01/2012, 27/07/2012 and 30/08/2013 to customers in Austria, Finland, France and Germany respectively.

All invoices have been issued by Vanyor S.A., with an address in Valencia, Spain. The earlier mark is depicted, albeit without its circle on top of all the invoices, as follows , and it appears placed to the right hand side of another sign .

The invoiced amounts are 297,00 EUR, 386,10 EUR, 678,00 EUR and 1.916,41 EUR. The quantity of invoiced goods varies from 12 to 72.

All invoices include a description of the items (e.g. ‘POMES’, ‘MELROSE’, ‘NEOMOTO’), a product code and an indication of colour.

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, and 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.

As regards the nature of use, it is underlined that as a trade mark, inter alia, has the function of operating as a link between the goods and services and the person responsible for their marketing, the proof of use must establish a clear link between the use of the mark and the relevant goods and services. As clearly indicated in Article 10(4) EUTMDR, it is not necessary for the mark to be affixed to the goods themselves (12/12/2014, T-105/13 TrinkFix, EU:T:2014:1070, § 28-38). A representation of the mark on packaging, catalogues, advertising material or invoices relating to the goods and services in question constitutes direct evidence that the mark has been put to genuine use.

The documents filed do not provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Moreover, the decision of the Chilean ‘INAPI’, does not have a binding effect on the Office since, even apart from the fact that it derives from a non-EU-country, the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Moreover, the evidence submitted before the Chilean ‘INAPI’, as listed above, has no or little relevance in the case at hand, as the abovementioned copies of trade mark registrations do not prove any use, and it is unclear whether the abovementioned advertising images and catalogs and images obtained from the website www.coolway.com related to the relevant territory. All the other evidence derives from the opponent. The sales figures for 2013 and 2014 are presented on plain Excel sheets printed with the letterhead of the opponent´s representative, without any other accompanying details or information, except that these are ‘Sales estadistics years 2013 - 2015’ (sic). It includes information from internal documents that is not corroborated by other independent documents, or confirmed by third parties. However, statements and information coming from the sphere of the owner of the earlier mark are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by personal interests in the matter (11/01/2011, R 490/2010-4, BOTODERM / BOTOX, § 34; 27/10/2009, B 1 086 240 and 31/08/2010, B 1 568 610). In general, further material is necessary for establishing evidence of use, since such statements and information have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources. Therefore, the probative strength of the further material submitted is very important. Therefore, in the absence of any such further material, the probative value of the submitted documents is unsatisfactory.

As regards the nature, none of the documents submitted show use of the sign on the goods or their packaging. Although it is admittedly true that it is sufficient, if there is a proper connection between the mark and the goods, for the mark to be used ‘in relation to’ the goods or services, such as on brochures, flyers, stickers, signs inside places of sale, etc.. However, the opponent has not shown any such use in relation to the goods. Apart from the very low number of invoices (four invoices only) submitted as Item 5, it remains totally unclear what kind of goods were sold in the invoices. The ´Dossier` submitted as Item 2 does not include depictions of the earlier mark as used on or in relation to goods or services. It merely suggests that the earlier mark would be used in relation to ‘Spanish footwear Trendsetters’, that the opponent has become ‘one of European´s Footwear Leading for Young People’ (sic), and ‘also offers accessories such as handbags, scarves, jewelry, sunglasses or perfumes’. However, no concrete link between these goods and the earlier mark is demonstrated or proven. Moreover, the opponent only submitted four invoices in total and for low amounts of sales, namely, 297,00 EUR, 386,10 EUR, 678,00 EUR and 1.916,41 EUR. The first invoice is dated outside of the relevant time limit and the only three invoices that are correctly dated are dated at the start of the time period and are billed for very low amounts.

Therefore, the Opposition Division considers that the opponent has not provided sufficient indications concerning the extent of use of the aforementioned earlier mark or the nature of use in relation to any of the registered goods and services.

Therefore, the opposition must be rejected pursuant to Article 47(2) EUTMR and Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017) insofar as it is based on European Union trade mark registration No 9 010 323.

However, as the opposition is also based on European Union trade mark registration No 10 374 882, the Opposition Division will further examine the opposition in relation to this registration below.

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

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

a) The goods and services

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

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; Animal skins, hides; Trunks and travelling bags; Umbrellas; Rucksacks; Portfolio bags; Haversacks; Handbags and travel bags; Parasols and walking sticks; Whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

Class 35: Advertising; Business management; Business administration; Office functions, wholesaling and retailing in shops and via global computer networks of all kinds of footwear, clothing, headgear, animal skins, hides, trunks and travelling bags, umbrellas, backpacks, wallets, haversacks, handbags and bags for travel, parasols and walking sticks, whips, harness and saddlery.

Class 39: Storage, transport, supply and distribution of all kinds of footwear, clothing, headgear, animal skins, hides, trunks and travelling bags, umbrellas, backpacks, wallets, haversacks, handbags and bags for travel, parasols and walking sticks, whips, harness and saddlery.

The contested goods and services are the following:

Class 3: Cosmetics; Body and beauty care cosmetics; Preparations and substances for the care of the skin of the face and body and for improving the appearance thereof; Preparations and substances for the care of facial and body skin and for improving the appearance thereof, for individuals with special care requirements, namely for allergy sufferers, the elderly, and individuals sensitive to specific ingredients; Care preparations for the eyes and lips; Face cream, eye cream, hand cream; Baby creams; Body lotions; Body serums, eye serums; Cosmetics in the form of scrubs; Enzyme scrubs; Micellar fluids; Care sticks; Facial and body cleansing gels for adults and children; Creams, Hair-fixing gel; Shampoos, hair conditioners.

Class 5: Cosmetics with medical properties; Medicinal dermocosmetics; Pharmaceutical preparations; Pharmaceutical products; Hygienic products; integrators; Preparations and cosmetics with medical properties containing vitamin C and vitamin and mineral complexes.

Class 35: Sale of cosmetics on the basis of e-commerce/mail order sale/sale by means of consultants; Direct ordering of goods and services via computer or telephone, for others; Sale of care and/or cleansing cosmetics for the body, hands, feet, eye area and mouth in the form of creams, gels, foams, conditioners, serums, micellar fluids, lip protectors, enzyme scrubs and scrubs for children and adults, and cosmetics for individuals with special care requirements, namely for allergy sufferers, newborn babies, babies, children and the elderly; Sale of cosmetics with medical properties, dermocosmetics, pharmaceuticals, sanitary preparations, supplements, preparations and cosmetics containing vitamin C and vitamin and mineral complexes; Sale of hair styling / hair care creams/gels, shampoos, hair care preparations and conditioners; Demonstration/presentation of all the aforesaid goods via electronic media, including via teleshopping and homeshopping; Arranging and conducting of exhibitions for commercial purposes, presentations of goods and services, by traditional and electronic means.

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

Contested goods in Classes 3 and 5

All the contested goods in Classes 3 and 5 are dissimilar to the opponent´s goods and services in Classes 18, 25, 35 and 39:

The nature and main purpose of the contested goods in Classes 3 and 5 and of the opponent´s goods in Classes 18 and 25 are different. The main purpose of goods in Class 3 is to improve physical appearance, to clean, improve or care for the skin or hair etc, whereas that of the goods in Class 5 traditionally is to treat or prevent medical conditions. In contrast, the main purpose of goods in Class 25, is to dress or protect the human body, whereas the main purpose of goods in Class 18 is for carrying things or for use in the confection of goods made of these materials, to protect from the rain or elements, or goods that are used in connection with animals. These goods in Classes 3 and 5 on the one hand and in Classes 18 and 25 on the other hand do not have the same distribution channels and neither are they in competition or complementary.

The opponent´s advertising services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised. The opponent´s business management; business administration; office functions are even further removed from the contested goods in Classes 3 and 5, as these services are also fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. Business management services for instance are usually rendered by specialist companies such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand market share. The services include activities such as business research and assessments, cost and price analyses, organisational consultancy and any consultancy, advisory and assistance activity that may be useful in the management of a business, such as advice on how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, market products, research consumer trends, launch new products, create a corporate identity, etc.

The opponent´s wholesaling and retailing in shops and via global computer networks of all kinds of footwear, clothing, headgear, animal skins, hides, trunks and travelling bags, umbrellas, backpacks, wallets, haversacks, handbags and bags for travel, parasols and walking sticks, whips, harness and saddlery and the contested goods in Classes 3 and 5 are also not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Wholesaling and retailing consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Similarity between wholesaling and retailing of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the wholesaling and retailing services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. Here, for analogous reasons as mentioned above, these conditions are not fulfilled, since the goods sold at wholesale or retail are dissimilar to the other goods.

Finally, these contested goods are also dissimilar to the opponent´s services in Class 39, since they do not have any relevant points of contact that could justify finding a level of similarity between them. These goods have a different nature and purpose, and are distributed through different channels. They differ in their methods of use; they are not complementary or in competition.

Contested services in Class 35

The contested demonstration/presentation of all the aforesaid goods via electronic media, including via teleshopping and homeshopping; presentations of goods and services, by traditional and electronic means are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested direct ordering of goods and services via computer or telephone, for others and arranging and conducting of exhibitions for commercial purposes are similar to the opponent´s business administration and advertising respectively, as these services have the same purpose, and usually coincide in producer and relevant public.

However, the contested sale of cosmetics on the basis of e-commerce/mail order sale/sale by means of consultants; sale of care and/or cleansing cosmetics for the body, hands, feet, eye area and mouth in the form of creams, gels, foams, conditioners, serums, micellar fluids, lip protectors, enzyme scrubs and scrubs for children and adults, and cosmetics for individuals with special care requirements, namely for allergy sufferers, newborn babies, babies, children and the elderly; sale of cosmetics with medical properties, dermocosmetics, pharmaceuticals, sanitary preparations, supplements, preparations and cosmetics containing vitamin c and vitamin and mineral complexes; sale of hair styling / hair care creams/gels, shampoos, hair care preparations and conditioners are dissimilar to all of the opponent´s goods and services.

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods on the one hand and retail of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors. Here the retail services are dissimilar, as the goods involved in the retail services under comparison are not commonly brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, and they target different publics.

For the reasons set out above in the comparison of the contested goods in Classes 3 and 5, these services are mutatis mutandis dissimilar to the opponent´s goods in Classes 18 and 25.

Finally, these contested services are also dissimilar to the opponent´s services in Class 39. Retail companies do not normally provide transportation services independently, but exclusively for the goods purchased at their premises. Transport of goods remains purely ancillary to their core activity of selling. A retailer cannot be asked to satisfy one's own private transportation needs. Vice versa, transport companies do not sell goods at retail.

b) 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 similar are specialised services directed at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

c) 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 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.

Both marks are figurative marks. The earlier mark consists of the verbal element ‘COOLWAY’ written in black letters in a stylised typeface, which is preceded by a black circle that includes a distinctive figurative element depicting a person with its two arms in the air. The contested sign consists of the verbal element ‘COLWAY’ written in black standard capital letters, which is preceded by a black circle which is a simple geometric shape and is of a purely decorative nature. Neither mark has a visually dominant element.

The relevant consumers, when perceiving a verbal element, may 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). The English-speaking part of the public may perceive the marks as composed of meaningful elements. However, this will not be the case for the non-English-speaking part of the public. Therefore, taking into account that when understood as meaningful, the verbal element ‘COOLWAY of the earlier mark may allude to characteristics of some of the goods and/or services in question, the Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public who will perceive the verbal elements ‘COOLWAY’ of the earlier mark and ‘COLWAY’ of the contested sign as meaningless and, therefore, having an average degree of distinctiveness.

Visually, the signs at issue coincide in the sequence of all of the letters constituting the contested sign, namely in the sequence of the letters ‘CO’ in the beginning of the signs and in the sequence of the letters ‘LWAY’ in their ends. The signs´ verbal elements only differ by the additional letter ‘O’ placed towards the middle of the earlier mark. They also coincide in the presence of a black circle preceding their respective verbal elements.

Furthermore, the fact that the aforementioned terms differ in the letter ‘O’ does not impact much on their visual similarity, considering that this difference lies towards the middle of the earlier mark, whereas the beginnings and endings of the earlier mark and the contested sign are the same.

The signs differ in their stylisation, and in the fact that the earlier mark´s black circle includes a depiction of a person with their arms in the air. These factors must be taken into account in the present comparison, as well as the fact 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)..

Therefore, the signs are visually similar at least to an average degree.

Aurally, the pronunciation of the signs is highly similar, as their pronunciation will only differ in the earlier mark´s additional letter ‘O’ -sound being pronounced, which will result in the sound being a little longer in the earlier mark.

Therefore, the signs are aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public under examination 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.

d) 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.

In its submissions accompanying the proof of use, the opponent seems to imply that the earlier mark would enjoy enhanced distinctiveness by referring to ‘the notoriety of the mark’. As this notoriety was mentioned for the first time when the opponent submitted its evidence of use, it has not been invoked within the substantiation time limit established in Article 7(1) EUTMDR, and therefore is late.

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.

e) Global assessment, other arguments and conclusion

The contested goods and services were found to be partly identical, partly similar and partly dissimilar to the opponent’s goods and services. The services found to be identical and similar target business customers with specific professional knowledge or expertise. The degree of attention varies from average to high. The signs are visually similar at least to an average degree, aurally highly similar and conceptually neutral. Furthermore, the earlier mark has a normal degree of distinctiveness.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54). All the letters of the contested sign are fully incorporated in the same order in the earlier mark, causing the signs to have identical beginnings and endings, and the signs visually coincide in that both incorporate a black circle although the earlier mark contains an additional image of a person superimposed on that circle. It is however noted 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). As the only difference between the verbal element of both signs lies in the addition of an extra letter situated in the middle of the earlier mark, this can be easily overlooked. Therefore, the similarities between the signs outweigh the differences.

Considering all the above, there is a likelihood of confusion for the non-English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 10 374 882.

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

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

COSTS

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

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

The Opposition Division

Nicole CLARKE

Christophe DU JARDIN

Ferenc GAZDA

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.

ANNEX

- Annex 1: the full list of the goods and services on which the opposition is based in relation to European Union trade mark registration No 9 010 323 for the figurative mark .

ANNEX 1

In relation to European Union trade mark registration No 9 010 323, the goods and services on which the opposition is based are the following:

1 Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

2 Paints, varnishes, lacquers; preservatives against rusts and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

3 Bleaching preparations and other substances for laundry use; Cleaning-, polishing, scouring- and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.

5 Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

6 Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; badges of metal.

7 Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; protective helmets; Helmets (Protective -) for sports; sunglasses; sports glasses; Spectacles (optics); spectacle frames; instruments containing eyepieces.

10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.

11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

12 Vehicles; vehicles for locomotion by air, land or water.

13 Firearms; ammunition and projectiles; explosives; fireworks.

14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.

15 Musical instruments.

16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers' type; printing blocks; publications; catalogues; posters; passport holders.

17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; school bags, school satchels,; wallets; briefcases; bags; sling bags for carrying infants; pouches of leather, for packaging; chain mesh purses, not of precious metal; beach bags; wheeled shopping bags; shopping bags; handbags; travelling bags.

19 Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

20 Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics.

22 Ropes, string nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

23 Yarns and threads, for textile use.

24 Textiles and textile goods, not included in other classes; bed and table covers.

25 Clothing, footwear, headgear; belts (clothing).

26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.

27 Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).

28 Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

29 Meat, fish, poultry and game; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.

30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking - powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

31 Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.

32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

33 Alcoholic beverages (except beers).

34 Tobacco; smokers' articles; matches.

35 Advertising; business management; business administration; office functions; wholesaling and retailing and selling via global computer networks of footwear, ready-made clothing, clothing accessories, cosmetics, chemicals, paints, cleaning preparations, industrial oils and greases, pharmaceutical preparations, disinfectants, goods of common metal, doors, windows, machinery, hand tools, cutlery, weighing and measuring, checking, supervision apparatus, hearing and sound apparatus, spectacles, goggles for sports, headsets, helmets for sports, medical apparatus and articles, apparatus for lighting, purification, bath tubs, vehicles, bicycles, pyrotechnic products, jewellery, horological instuments, musical instruments, school supplies, posters, periodicals, books, catalogues, plastic materials, flexible pipes, goods of leather, handbags, building materials, tiles for building, doors and windows of wood, furniture, mattresses, porcelain, earthenware, household or kitchen utensils, brushes, ropes, string, spun thread and yarn, household and bed linen, textiles, lace trimmings, brooches, floor coverings (textile), carpets, fitted carpets, playthings and sporting articles, foodstuffs, beverages, coffee, flour, preparations made from cereals, spices, unprocessed fruit and vegetables, smokers' articles, ashtrays.

36 Insurance; financial affairs; monetary affairs; real estate affairs.

37 Building construction; repair; installation services.

38 Telecommunications; broadcasting of television programmes; radio programme broadcasting.

39 Transport; packaging and storage of goods; travel arrangement.

40 Treatment of materials.

41 Education; providing of training; entertainment; sporting and cultural activities.

42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

43 Restaurant services (food); temporary accommodation.

44 Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.

45 Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.