OPPOSITION No B 2 918 665

Novartis AG, 4002 Basel, Switzerland (opponent), represented by Milojevic, Sekulic & Associates, S.L., C/ Clara Campoamor, Num. 5 Bw-107, 03540 Alicante, Spain (professional representative)

a g a i n s t

Aristo Pharma Iberia S.L., Solana 26, 28850 Torrejón de Ardoz (Madrid), Spain (applicant), represented by Einsel & Kollegen, Jasperallee 1a, D-38102 Braunschweig, Germany (professional representative).

On 28/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 918 665 is upheld for all the contested goods, namely:

Class 5: Pharmaceutical preparations.

2. European Union trade mark application No 16 512 808 is rejected for all the contested goods. It may proceed for the remaining goods.

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

REASONS

The opponent filed an opposition against some of the goods of European Union trade mark application No 16 512 808 for the word mark ‘FEMARIST’, namely against some of the goods in Class 5. The opposition is based on European Union trade registration No 838 417 for the word mark ‘FEMARA’. 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 the trade mark on which the opposition is based, namely European Union trade mark registration No 838 417 ‘FEMARA’.

The date of filing of the contested application is 28/03/2017. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 28/03/2012 to 27/03/2017 inclusive.

The request was submitted in due time and is admissible given that the earlier 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 on which the opposition is based, namely the following:

Class 5: Pharmaceutical preparations.

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 17/01/2018, in accordance with Article 10(2) EUTMDR (former Rule 22(2) EUTMIR, in force before 01/10/2017), the Office gave the opponent until 22/03/2018 to submit evidence of use of the earlier trade mark. On 21/03/2018, within the time limit, the opponent submitted evidence of use.

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

The evidence to be taken into account is, in particular, the following:

• Exhibits 1-4: 30 invoices issued by the opponent’s subsidiaries in Germany, Spain, France, and the United Kingdom to different customers in these territories. Of these invoices, 23 fall within the relevant period, having been issued between 13/01/2015 and 20/01/2017. Those that fall outside the relevant period were all issued in 2017, that is, the same year as the end date of the relevant period. All of the invoices refer to the product ‘FEMARA 2.5 mg’. The quantities in the invoices vary, while the prices have been redacted. The currency mentioned is euros and the invoices are in English, French, German and Spanish.

• Exhibit 5: brochures about ‘FEMARA 2.5 mg’ products, in German, Italian and English.

Although the documents in German and Italian were not translated into the language of the proceedings, it can be easily inferred, at least from the documents in Italian (submitted more than once), that they relate to or at least make reference to ‘Femara’ medicines. This is because these documents contain an image of a package of tablets bearing the sign ‘FEMARA’. The documents in Italian contain either the year 2016 on the left-hand side of the pages or the date November 2014; both of these dates are within the relevant period.

The documents in English, entitled ‘Highlights of Prescribing Information’ and ‘Full Prescribing Information’, refer to ‘FEMARA’ products; the first document contains information such as ‘indications and usage’, ‘dosage and administration’ and ‘contraindications’ and the second document includes detailed medical information about ‘FEMARA’ products, including results of tests conducted in patients with breast cancer. The first document includes the date of revision ‘11/2017’, namely outside the relevant period. As regards dates, the second document includes only the indication ‘T2017-106’. The contents of both documents indicate that they refer to the US market.

• Exhibit 9: a review in English, published by the European Medicines Agency (EMA), entitled ‘Questions and answers on Femara and associated names (letrozole, 2.5 mg tablets) — Outcome of a procedure under Article 30 of Directive 2001/83/EC’. It is dated 22/05/2012, that is, within the relevant period. The document describes ‘FEMARA’ as ‘a medicine that contains the active substance letrozole. It is used as hormonal treatment in postmenopausal women with breast cancer.’ It further states that ‘Femara is marketed in all EU Member States and is also available under other trade names: Femar, Fémara, and Loxifan’. According to the article, the drugs under these trade names are all marketed by Novartis.

• Exhibit 11: a sworn declaration, dated 21/03/2018, by Wojciech Kreft, acting in his capacity as Novartis Pharma AG’s Trade Mark Attorney and the opponent’s Authorised Signatory. In his declaration, Mr Kreft states that the opponent has been using the trade mark ‘FEMARA’ for a pharmaceutical preparation for the treatment of breast cancer continuously since 1996, and particularly in the period between 2012 and 2017, and that the preparation is sold throughout the EU. He also gives total sales figures for the period between 2015 and 2017 for Germany, Spain, France and the United Kingdom, as well as total sales figures for the period between 2013 and 2017 for the EU.

The applicant argues that the opponent did not submit translations of some of the evidence of use. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). Although the invoices, except those issued to customers in the United Kingdom, were not submitted in the language of the proceedings, invoices are generally considered by the Office to be self-explanatory documents, and consequently no translation is required (15/12/2010, T‑132/09, Epcos, EU:T:2010:518, § 51 et seq.). Furthermore, as noted above, the relevant information in the Italian documents, at least, can also be easily grasped. In the light of those considerations, the Opposition Division considers that there is no need to request a translation.

As far as the sworn declaration (Exhibit 11) is concerned, Article 10(4) EUTMDR (former Rule 22(4) EUTMIR, in force before 01/10/2017) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees 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 its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

Place of use

The invoices (Exhibits 1-4), some of the brochures (Exhibit 5) and the EMA’s review (Exhibit 9) show that the place of use is the European Union. This can be inferred from the language of the documents (English, French, German, Italian and Spanish), the currency mentioned (euros) and the addresses in Spain, France, Germany and the United Kingdom. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the seven invoices that are dated outside the relevant period were issued in the same year as the end date of the relevant period (2017). Therefore, they indicate that the mark has been continuously used, in particular during a few months after the end of the relevant period.

Therefore, the evidence submitted sufficiently indicates the time of use.

Extent of use

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.

The documents filed, in particular the invoices, some of the brochures (i.e. those aimed at the Italian market) and the EMA’s review, in combination with the sworn declaration, provide the Opposition Division with sufficient information concerning the territorial scope, the duration and the frequency of use. They can be considered sufficient evidence of the trade mark having been used publicly and outwardly with a view to creating a commercial market. It is not necessary for use during the entire relevant period to be proven. The invoices submitted were issued in 2015, 2016 and 2017. Taking this into account, it is reasonable to presume that these documents were submitted to illustrate continuous sales during the relevant period and not as an indication of the actual sales volumes achieved; this was expressly stated by the opponent.

As for the commercial volume of use, the use of the mark need not be quantitatively significant for it to be deemed genuine. Furthermore, it is settled case-law that the purpose of the provision regarding proof of use is not to assess commercial success or to review the economic strategy of an undertaking, or to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks (08/07/2004, T‑203/02, VITAFRUIT, EU:T:2004:225, § 38).

The figures provided in the sworn declaration by Mr Kreft are not explicitly supported by other items of evidence. In addition, the quantities of products mentioned in the invoices submitted are not particularly high. However, taking into account that the invoices show that the goods have been sold to different clients (wholesalers, suppliers, hospitals, clinics and pharmacies) during a continuous period of time, and that the goods in question are not goods for mass consumption and therefore huge volumes of sales may not be expected, the Opposition Division considers that the evidence submitted regarding the commercial volume, the territorial scope, the duration and the frequency of use of the mark is sufficient.

Nature of use

In the context of Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

In view of the evidence submitted, the Opposition Division considers that the mark has been used in accordance with its function and as registered.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, although the relevant evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

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

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for pharmaceutical preparations for the treatment of breast cancer. These goods can be considered to form an objective subcategory of pharmaceutical preparations, namely pharmaceutical preparations for the treatment of cancer. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for pharmaceutical preparations for the treatment of cancer.

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.

1. The goods

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

Class 5: Pharmaceutical preparations for the treatment of cancer.

The contested goods are the following:

Class 5: Pharmaceutical preparations.

The contested pharmaceutical preparations include, as a broader category, the opponent’s pharmaceutical preparations for the treatment of cancer. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

2. Relevant public — degree of attention

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

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

According to case-law, the general public cannot be excluded from the relevant public in the case of pharmaceuticals that require a doctor’s prescription (which seems to be the case for the opponent’s goods) prior to their sale in pharmacies. Therefore, the relevant public comprises both the general public and health professionals, such as doctors and pharmacists. Consequently, even though the choice of those products is influenced or determined by intermediaries, a likelihood of confusion can also exist for the general public, since this public is likely to be faced with those products, even if that takes place during separate purchasing transactions for each of those individual products, at various times (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 42-45; 26/04/2007, C‑412/05 P, Travatan, EU:C:2007:252, § 56-63).

Therefore, the relevant goods target not only qualified professionals but also the general public without any particular medical or pharmaceutical knowledge. Both of these publics are relevant consumers of the kind of goods at issue.

That said, it is also apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

Therefore, the degree of attention is considered to be high.

3. The signs

FEMARA	FEMARIST
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).

Both signs are word marks consisting of a single element, namely ‘FEMARA’ (the earlier mark) and ‘FEMARIST’ (the contested sign).

In its observations, the applicant argues that the coinciding sequence ‘FEMA’ is ‘recognised by European people as referred to “female” ’, as the element ‘FEM’ is ‘a medical prefix’ used to indicate that women are the intended end users; therefore, the applicant argues, this element is devoid of distinctive character.

It is noted that, even if the coinciding sequence of letters ‘FEM’ were associated with ‘female’ or ‘feminine’, English words that have similar equivalents in a number of languages in the relevant territory, such as German, French, Italian and Spanish, there is no evidence that, in the field of pharmaceuticals, these letters would be understood as designating female patients and thus being descriptive of the characteristics/purpose of the relevant goods.

The applicant also argues that the sequence of letters ‘-ARIST’ of the contested sign is a reference to the applicant’s name (i.e. Aristo). However, even if this were the case, the Opposition Division finds that the relevant public would not associate the sign with the applicant’s name in any way, since it does not seem reasonable to assume that the relevant public will be familiar with all of the existing pharmaceutical companies and because consumers normally perceive a mark as a whole and do not proceed to analyse its various details (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25).

It is therefore considered that both signs are composed of a single, invented word. Neither the element ‘FEMARA’ in the earlier mark nor the element ‘FEMARIST’ in the contested sign has a meaning in the relevant territory and both are, therefore, distinctive as a whole.

Visually and aurally, the signs coincide in their first five letters, ‘FEMAR’ (and their respective sounds), out of six letters in the earlier mark (thus constituting almost the entire earlier mark) and out of eight letters in the contested sign. The signs thus differ in their endings (and respective sounds), namely ‘A’ in the earlier mark and ‘IST’ in the contested sign.

It should be noted that, in relation to word marks, 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, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, this part will be remembered more clearly than the rest of the sign. This means that, in general, the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T‑412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30).

Furthermore, the different endings of the signs (i.e. ‘A’ in the earlier mark and ‘IST’ in the contested sign) are common suffixes in many languages of the relevant territory (e.g. ‘a’ indicates the singular feminine form in Italian and Spanish, whereas ‘ist’ is used in English and German, for example, to form nouns and adjectives). Consequently, the relevant public will not pay much attention to these endings, which reinforces the conclusion that the coinciding first letters, ‘FEMAR’, which constitute almost the entire earlier mark, carry the most weight in both signs.

Therefore, the signs are visually and aurally similar to an above average degree.

Conceptually, neither of the signs has a meaning as a whole for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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

5. Global assessment, other arguments and conclusion

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).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods are identical. The earlier mark has a normal degree of distinctiveness and the degree of attention paid by the relevant public during the purchase of the relevant goods is high. However, account is taken of the fact that 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).

On account of the commonality in the signs’ first five letters (‘FEMAR’), out of six in the earlier mark and eight in the contested sign, and taking into account the fact that the signs’ differing endings are common suffixes, the signs are visually and aurally similar to an above average degree, whereas, conceptually, no comparison is possible and thus this aspect has no impact on the assessment of the likelihood of confusion.

For the sake of completeness, it must be noted that, even if, as argued by the applicant, the coinciding sequence ‘FEM/A’ did have a low degree of distinctiveness (because it referred to the intended end users, namely women), which the Opposition Division does not find to be the case, the outcome would not be any different. It must be borne in mind that, as established by the case-law, a finding that the earlier mark has a low degree of distinctiveness does not prevent a finding that there is a likelihood of confusion with the contested mark. Although the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion, it is only one factor among others involved in that assessment. Thus, even in a case involving an earlier mark of weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 61). Even if both signs were based on a weak concept, the differing suffixes would have less impact on the consumer’s perception of the signs than the identical beginnings, ‘FEMAR’. This would still result in an above average degree of visual and aural similarity between the signs (moreover, if a concept were perceived in the signs, this would lead also to a conceptual similarity), which, together with the identity between the goods, would inevitably lead to a likelihood of confusion.

In its observations, the applicant also argues that it owns EUTM No 15 420 441 ‘FEMAGOLD’, registered for goods in Class 5, and that this mark coexists (as well as other third parties’ marks that contain the same sequence of letters (i.e. ‘FEMA’) at the beginning) with the opponent’s earlier mark.

According to case-law, the possibility cannot be ruled out that the coexistence of two marks on a particular market might, together with other elements, contribute to diminishing the likelihood of confusion between those marks on the part of the relevant public (03/09/2009, C-498/07P, La Española, EU:C:2013:302, § 82). In certain cases, the coexistence of earlier marks in the market could reduce the likelihood of confusion that the Office finds between two conflicting marks (11/05/2005, T-31/03, Grupo Sada, EU:T:2005:169, § 86). However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds for refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard it should be noted that formal coexistence in national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) at national/Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis, and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Finally, the applicant refers to several European Union trade mark registrations in support of its arguments.

The Opposition Division recalls 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, as mentioned above. 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 (which also includes references to applications that have been withdrawn) does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘FEMA’ as a prefix. In this regard it should also be noted that evidence submitted in relation to a single mark (i.e. ‘FEMARELLE’) is not considered sufficient to show widespread use. Under these circumstances, the applicant’s claim must be set aside.

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

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

Teodora TSENOVA-PETROVA

Alicia BLAYA ALGARRA

Inés GARCÍA LLEDÓ

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.