OPPOSITION No B 3 035 899

Rocket Trademarks Pty Ltd, 1 Billabong Place, 4220 Burleigh Heads, Australia (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Guangzhou Shang Tai Fang International Co. Ltd., 401 self-code 90th, Zhong Wei Road Zhong Cun Street, Panyu District, Guangzhou China (applicant), represented by Arcade & Asociados, C/ Isabel Colbrand, 6-5ª planta, 28050 Madrid, Spain (professional representative).

On 29/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 035 899 is upheld for all the contested goods and services, namely:

Class 18: Game bags [hunting accessories]; tool bags, empty; rucksacks; pocket wallets; bags for campers; travelling bags; bags for sports; straps for soldiers’ equipment; leather laces; leather leashes; leather leads; collars for animals; covers for animals; clothing for pets; mountaineering sticks; casings, of leather, for springs; trunks [luggage]; school bags; imitation leather; saddle trees.

Class 25: Waistcoats; clothing; wind coats; sports vests; sports jerseys; sports jackets; hats; headbands for clothing; girdles; mittens; turbans; suspenders; suspender belts; gloves as clothing; leather belts [clothing].

Class 35: Radio advertising; television advertising; bill-posting; direct mail advertising; publication of publicity texts; advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; commercial or industrial management assistance; organization of exhibitions for commercial or advertising purposes; business information; import-export agency services; sales promotion for others; procurement services for others [purchasing goods and services for other businesses]; marketing; administrative processing of purchase orders; book-keeping; drawing up of statements of accounts; invoicing.

2. European Union trade mark application No 17 254 004 is rejected for all the contested goods and services. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 254 004, element airsoft (word mark), namely against all the goods in Classes 18 and 25 and all the services in Class 35. The opposition is based on European Union trade mark registrations No 4 497 343, ELEMENT(word mark), European Union trade mark registration No 9 660 044, ELEMENT(word mark), and European Union trade mark registration No 4 945 507 for the figurative mark . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 4 497 343 and No 9 660 044.

1. The goods and services

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

European Union trade mark registration No 4 497 343

Class 35: Retailing of, optical apparatus and eyewear, including spectacles, sunglasses, eyeshades; anti-glare visors and glasses, goggles including goggles for swimming, skiing and snowboarding, glasses, eyewear cases, eyewear accessories including straps, chains and cords; retailing of, protective clothing including diving suits; retailing of, storage media and apparatus for recording, storage, transmitting, reproducing or processing data, sound and/or images including magnetic data carriers, tapes, cassettes and discs, audio tapes, pre-recorded films including video films; retailing of, telecommunications equipment, apparatus, instruments and devices including mobile telephones, videophones, and other handheld communications apparatus, messaging devices parts, fittings and accessories for all of the aforegoing goods including mobile telephone housings; retailing of, MP3 players; retailing of, jewellery and costume jewellery, charms; retailing of, ornaments of precious metals, including ornamental pendants and pins; retailing of, cufflinks; retailing of, precious gemstones and semiprecious gemstones; retailing of, watches and clocks, and parts of the aforegoing goods; retailing of, watch accessories, including watch bands, watch chains, watch straps and watch cases; retailing of, jewellery cases and jewellery boxes of precious metal, precious metal alloys or coated or coated therewith; retailing of, medallions and badges of precious metal, precious metal alloys or coated therewith; retailing of, key rings, key cases, key tags and key fobs all of precious metals, precious metal alloys or coated therewith; retailing of, chamois leather (other than for cleaning purposes), bags, barrel bags, tote bags, carry-all bags, shopping bags of leather, textile or mesh, leather bags for merchandise packaging, shoulder bags, hand bags, clutch bags, waist packs, rucksacks, knapsacks, backpacks, school bags, book bags, satchels, cosmetic bags sold empty, shaving bags sold empty; retailing of, travels bags, trunks, luggage, carry-on bags, garment bags for travel, and other travel goods; retailing of, cases including travel cases, overnight cases, briefcases, documents cases, credit card cases, business card cases, cosmetic and toiletry cases sold empty, vanity cases; retailing of, jewelry bags for travel; retailing of, pouches; retailing of; retailing of, wallets; retailing of, purses, key cases; retailing of, key chains, key fobs, key tags, all being of leather, animal hides and imitations thereof; retailing of, umbrellas; retailing of, clothing, footwear, headgear, including shirts, T‑shirts, singlets, blouses and tops, sweaters, jackets, pullovers, coats, dresses, skirts, sarongs, trousers, pants, jeans, shorts, board shorts, surf wear, swimwear, sportswear, underwear, sleepwear, belts, scarves, gloves, hosiery, socks, shoes, boots, sandals, slides, thongs and slippers, hats, caps, beanies, peaks and visors; retailing of, wetsuits, wetsuit vests, boots, gloves and hoods, wetsuit shorts and tops; retailing of, sporting goods, parts, fittings and accessories for the aforesaid goods, including surfboards, sailboards, kiteboards, body boards, wake boards, waterskies, sporting goods for other water sports, scooters (toys), skateboards, inline-skates, roller skates, parts, fittings and accessories for all the aforegoing goods, bags and covers for sporting goods, surfing traction systems, grips, leg ropes and tethers for sporting goods, waxes for surfboards, skateboards, skis, other sporting goods and related sporting accessories; loyalty programs; loyalty card programs; discount card schemes; incentive schemes, advertising and promotional services in this class namely consumer loyalty programs; loyalty programs; promoting the goods and services of others by means of offering discounts: schemes which offer discounts on hotels, motels, inns, resort accommodation, restaurants, car rentals, tours, cruises, air fares, tour packages; business management and business and office administration services; providing information regarding discount shopping services for shoppers, travelers and businesses; organization, operation and supervision of sales and promotional incentive schemes; marketing of entertainment, sporting and cultural events; franchising business services; registration and notification services relating to cards used in financial transactions; publication and dissemination of publicity material: information services relating to all of the aforegoing.

European Union trade mark registration No 9 660 044

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks, parasols and walking sticks; whips, harness and saddlery; bags, including, beach bags, all-purpose sport bags, all-purpose athletic bags, barrel bags, tote bags, carry-all bags, shopping bags of leather, textile or mesh, leather bags for merchandise packaging, shoulder bags, handbags, clutch bags, waist packs, rucksacks, knapsacks, backpacks, school bags, book bags, satchels, cosmetic bags sold empty, shaving bags sold empty, travelling bags, trunks, luggage, carry-on bags, garment bags for travel, other travel goods in this class, namely, luggage tags and straps, cases, including travel cases, overnight cases, briefcases, document cases, credit card cases, business card cases, cosmetic and toiletry cases sold empty, and vanity cases sold empty, jewellery bags for travel, pouches, including, jewellery pouches and leather pouches for packaging, wallets, purses, key cases, animal hides and imitations thereof, umbrellas; animal skins/ pelts; attaché cases; bags [envelopes, pouches] of leather, for packaging / envelopes, of leather, for packaging / pouches, of leather, for packaging;, bags for climbers; bags for sports; bands of leather; beach bags; bits for animals [harness]; blinkers [harness] / blinders [harness]; boxes of leather or leather board; boxes of vulcanised fibre; bridles [harness]; briefcases; butts [parts of hides]; canes /walking sticks; card cases [notecases]; cases, of leather or leatherboard; casings, of leather, for springs / casings, of leather, for plate springs; cat o’ nine tails; cattle skins; chain mesh purses; chamois leather, other than for cleaning purposes / skins of chamois, other than for cleaning purposes; chin straps, of leather; collars for animals; coverings of skins [furs]; covers for animals / clothing for pets; covers for horse-saddles / saddle cloths for horses; curried skins; dog collars; fastenings for saddles; frames for umbrellas or parasols; fur / fur-skins; furniture coverings of leather; game bags [hunting accessories]; garment bags for travel; gold beaters’ skin / gold beaters’ skin; gut for making sausages; halters / head-stalls; handbag frames; handbags; harness fittings; harness for animals; harness straps / harness traces; hat boxes of leather; haversacks; horse blankets; horse collars; horseshoes; imitation leather; key cases [leatherware]; kid; knee-pads for horses; leather leashes; leather leashes / leather leads / leather laces; leather straps / leather thongs; leather twist / leather thread; leather, unworked or semi-worked; leatherboard; moleskin [imitation of leather]; mountaineering sticks / alpenstocks; music cases; muzzles; net bags for shopping; nose bags [feed bags]; pads for horse saddles; parasols; parts of rubber for stirrups; pocket wallets; purses; reins; riding saddles; rucksacks / backpacks; saddle trees; saddlery; school bags / school satchels; shopping bags; shoulder belts [straps] of leather / bandoliers / leather shoulder straps /leather shoulder belts; sling bags for carrying infants; slings for carrying infants; stirrup leathers; stirrups; straps for skates; straps for soldiers’ equipment; straps of leather [saddlery]; suitcase handles; suitcases; tool bags of leather, empty; traces [harness]; travelling bags; travelling sets [leatherware]; travelling trunks; trimmings of leather for furniture / leather trimmings for furniture; trunks [luggage]; umbrella covers; umbrella handles; umbrella or parasol ribs; umbrella rings; umbrella sticks; umbrellas; valises; valves of leather; vanity cases, not fitted; walking stick handles / walking cane handles; walking stick seats; wheeled shopping bags; whips; none of the afore-mentioned goods including bridoons.

Class 25: Clothing, including, T‑shirts, sweatshirts, shirts, blouses, vests, tank tops, singlets and other tops, cardigans, sweaters, jackets, coats, parkas, pants, trousers, jeans, shorts, board shorts, overalls, tracksuits, tracksuit tops and tracksuit trousers, hooded fleece tops, dresses, skirts, underwear, sleepwear, belts (clothing), scarves, gloves, mittens, swimwear, skatewear, skiwear, headgear, including, hats, caps, beanies, visors, footwear, including, socks, shoes, boots, sandals, thongs; aprons [clothing]; ascots; babies’ diapers of textile / babies’ napkins of textile; babies’ pants; bandanas [neckerchiefs]; bath robes; bath sandals; bath slippers; bathing caps; bathing suits / swimsuits; bathing trunks / bathing drawers; beach clothes; beach shoes; belts [clothing]; berets; bibs, not of paper; boas [necklets]; bodices [lingerie]; boot uppers; boots for sports; boots; brassieres; breeches for wear; camisoles; cap peaks / sun visors / visors [hatmaking]; caps [headwear]; chasubles; clothing for gymnastics; clothing of imitations of leather; clothing of leather; clothing; coats; collar protectors; collars [clothing] / shoulder wraps; combinations [clothing]; corselets; corsets [underclothing]; cuffs / wristbands [clothing]; cyclists’ clothing; detachable collars; dress shields; dressing gowns; ear muffs [clothing]; esparto shoes or sandals; fishing vests; fittings of metal for shoes and boots / iron fittings for boots /iron fittings for shoes; football shoes/ football boots; footmuffs, not electrically heated; footwear uppers; footwear; frocks; fur stoles; furs [clothing]; gabardines [clothing]; galoshes / goloshes; garters; gloves [clothing]; gymnastic shoes; half-boots; hat frames [skeletons]; hats; headbands [clothing]; headgear for wear; heelpieces for boots and shoes / heelpieces for boots / heelpieces for shoes; heelpieces for stockings / heel pieces for stockings; heels; hoods [clothing]; hosiery; inner soles; jackets [clothing]; jerseys [clothing]; jumpers [shirt fronts] / chemisettes [shirt fronts]; knitwear [clothing]; lace boots; layettes [clothing]; leggings; liveries; maniples; mantillas; masquerade costumes; mitres [hats] / miters [hats]; mittens; money belts [clothing]; motorists’ clothing; muffs [clothing]; neckties; non-slipping devices for boots and shoes / non- slipping devices for boots / non-slipping devices for shoes; outerclothing; overalls / smocks; overcoats / top coats / topcoats; pants / drawers [clothing]; paper clothing; paper hats [clothing]; parkas; pelerines; pelisses; petticoats; pocket squares; pockets for clothing; pullovers; pyjamas / pajamas (Am); ready-made clothing; ready-made linings [parts of clothing]; sandals; saris; sashes for wear; scarves / scarfs; shawls; shirt fronts; shirt yokes; shirts; shoes; shower caps; singlets / sports jerseys; ski boots; skirts; skull caps; sleep masks; slippers; slips [undergarments]; sock suspenders; socks; soles for footwear; spats / gaiters; sports shoes; stocking suspenders; stockings; studs for football boots [shoes]; stuff jackets [clothing]; suits; suspenders / braces for clothing [suspenders]; sweat-absorbent stockings; sweat-absorbent underclothing [underwear] / anti- sweat underwear / anti-sweat underclothing; sweaters; teddies [undergarments]; tee-shirts; tights; tips for footwear; togas; top hats; trouser straps / gaiter straps; trousers; turbans; underpants; underwear / body linen [garments] / underclothing; uniforms; veils [clothing]; waistcoats / vests; waterproof clothing; welts for boots and shoes / welts for boots / welts for shoes; wet suits for water-skiing; wimples; wooden shoes; none of the afore-mentioned goods including girdles.

On 28/11/2018 the Opposition Division rendered a decision, B 3 036 483, that resulted in the partial rejection of European Union trade mark application No 17 254 004, namely for goods in Class 25. The decision has become final.

By letter of 11/03/2019, the Office informed the opponent of the outcome of the proceedings and invited the opponent to inform the Office whether or not it maintained its opposition in light of the partial rejection of the contested European Union trade mark application. The opponent maintained the opposition.

The contested goods and services, following the rejection of a part of the goods, as mentioned above, are the following:

Class 18: Game bags [hunting accessories]; tool bags, empty; rucksacks; pocket wallets; bags for campers; travelling bags; bags for sports; straps for soldiers’ equipment; leather laces; leather leashes; leather leads; collars for animals; covers for animals; clothing for pets; mountaineering sticks; casings, of leather, for springs; trunks [luggage]; school bags; imitation leather; saddle trees.

Class 25: Waistcoats; clothing; wind coats; sports vests; sports jerseys; sports jackets; hats; headbands for clothing; girdles; mittens; turbans; suspenders; suspender belts; gloves as clothing; leather belts [clothing].

Class 35: Radio advertising; television advertising; bill-posting; direct mail advertising; publication of publicity texts; advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; commercial or industrial management assistance; organization of exhibitions for commercial or advertising purposes; business information; import-export agency services; sales promotion for others; procurement services for others [purchasing goods and services for other businesses]; marketing; administrative processing of purchase orders; book-keeping; drawing up of statements of accounts; invoicing.

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 ‘including’, used in the opponent’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

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

Contested goods in Class 18

Game bags [hunting accessories]; rucksacks; pocket wallets; bags for campers; travelling bags; bags for sports; straps for soldiers’ equipment; leather laces; leather leashes; leather leads; collars for animals; covers for animals; clothing for pets; mountaineering sticks; casings, of leather, for springs; trunks [luggage]; saddle trees are identically contained in both lists of goods.

The contested tool bags, empty includes, as a broader category the opponent’s tool bags of leather. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested school bags; imitation leather are included in the broad category of the opponent’s school bags. Therefore, they are identical.

Contested goods in Class 25

Waistcoats; clothing; sports jerseys; hats; headbands for clothing; girdles; mittens; turbans; suspenders; suspender belts; gloves as clothing; leather belts [clothing] are identically contained in both lists of goods.

The contested wind coats; sports vests; sports jackets are included in the broad category of the opponent’s clothing. Therefore, they are identical.

Contested services in Class 35

The contested radio advertising; television advertising; direct mail advertising; publication of publicity texts; advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; organization of exhibitions for commercial or advertising purposes; bill-posting overlap with the opponent’s advertising and promotional services in this class namely consumer loyalty programs; loyalty programs; promoting the goods and services of others by means of offering discounts: schemes which offer discounts on hotels, motels, inns, resort accommodation, restaurants, car rentals, tours, cruises, air fares, tour packages. Therefore, they are identical.

The contested sales promotion for others overlap with the opponent’s organization, operation and supervision of sales and promotional incentive schemes. Therefore, they are identical.

The contested marketing includes the opponent’s marketing of entertainment, sporting and cultural events. Therefore, they are identical.

The contested commercial or industrial management assistance; business information are included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested import-export agency services; procurement services for others [purchasing goods and services for other businesses]; administrative processing of purchase orders; book-keeping; drawing up of statements of accounts; invoicing are similar to the opponent’s business management and business and office administration services. They coincide in their purpose, target the same relevant public and are provided by the same firms.

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 or similar are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention will vary depending on the specialisation of the goods and services from average (e.g. clothing) to high (e.g. commercial or industrial management assistance).

3. The signs

European Union trade mark registration No 9 660 044 ELEMENT European Union trade mark registration No 4 497 343 ELEMENT	element airsoft
Earlier trade marks	Contested sign

The relevant territory is the European Union.

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

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

The element ‘airsoft’ has no meaning in certain territories, for example in those countries where English is not understood. The Opposition Division finds it appropriate to focus the comparison of the signs on the non-English-speaking part of the public.

The earlier marks are word marks, ‘ELEMENT’, which will be understood by part of the public (e.g. the German-speaking part of the public) as ‘an essential or characteristic part of something abstract’, and also by the majority of the relevant public because the equivalent word is very similar in several languages in the relevant territory (e.g. ‘elemento’ in Italian and Spanish; ‘élément’ in French). The signs are not descriptive, allusive or otherwise weak/non-distinctive in relation to the relevant goods and, therefore, have an average degree of distinctiveness.

The contested sign is also a word mark, composed of the words ‘element’ and ‘airsoft’. The word ‘airsoft’ is meaningless for the relevant public. The sign has no meaning in relation to the relevant goods and services and has an average degree of distinctiveness. There is no element that is more dominant or distinctive than the other element in the contested sign.

Visually, the signs coincide in the word ‘element’, which is the earlier marks’ sole word. However, they differ in the word ‘airsoft’ of the contested sign.

Therefore, the signs are visually similar to 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 of the letters ‛element’, present identically in both signs. The pronunciation differs in the sound of the letters ‛airsoft’ of the contested sign, which have no counterparts in the earlier signs.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the opposing signs coincide in the meaning of ‘element’, they are to this extent similar.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks 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, and 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).

The goods are identical and the services are partly similar and partly identical.

The signs are visually and aurally similar to an average degree, and conceptually similar. The earlier signs are entirely included in the contested sign as an independent distinctive element. It is common for undertakings active on the market to use sub-brands, that is to say signs that derive from a principal mark and that have an element in common, in order to distinguish the scope of one product from that of another. It is, therefore, conceivable that the target public, even if it does not directly confuse the signs, may still regard the identical goods and the identical and similar services designated by the conflicting signs as different product and services lines that come from the same undertaking or from economically linked undertakings. The relevant public may assume that the contested sign, ‘element airsoft’, is a sub-brand of the earlier mark, ‘ELEMENT’.

In word signs or in signs containing a verbal element, the first part is generally the one that primarily catches the consumer’s attention and, therefore, 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/TriBion Harmonis (fig.), EU:T:2009:507, § 40; 25/03/2009, T‑109/07, Spa Therapy, EU:T:2009:81, § 30). Therefore, in this case, the identical beginning of the opposing signs has an important visual impact.

Bearing in mind the identity between the goods and the identity and similarity between the services, it is considered that the difference between the signs is not sufficient to outweigh their average degree of visual and aural similarity and conceptual similarity, resulting from the commonality in the element ‘element’, which is an independent distinctive element in the contested sign and constitutes the entire earlier marks.

Considering all the above, there is a likelihood of confusion on the part of the non-English-speaking part of the public, even in the cases of services with a heightened degree of attention by the relevant 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 registrations No 4 497 343 and No 9 660 044. It follows that the contested trade mark must be rejected for all the contested goods and services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

As the earlier rights European Union trade mark registrations No 4 497 343 and No 9 660 044 lead 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 right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

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

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

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

The Opposition Division

Dorothée SCHLIEPHAKE

Patricia LÓPEZ FERNÁNDEZ DE CORRES

Volker MENSING

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.