OPPOSITION No B 3 058 894

Viña Cono Sur S.A., Av. Nueva Tajamar 481, Torre Sur, Piso 16, Oficina 1602, Las Condes, Santiago, Chile (opponent), represented by Marks & Clerk LLP, 15 Fetter Lane, London EC4A 1BW, United Kingdom (professional representative)

a g a i n s t

Bodegas Nodus S.L., Finca El Renegado s/n, 46315 Caudete de Las Fuentes (Valencia), Spain (applicant), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative).

On 19/12/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 058 894 is upheld for all the contested goods.

2. European Union trade mark application No 17 855 016 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 855 016 (figurative), namely against all the goods in Class 33. The opposition is based on, inter alia, European Union trade mark registration No 10 706 349 (figurative), in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

The opposition is also based on five United Kingdom non-registered trade marks as regards various figurative signs, in relation to which the opponent invoked Article 8(4) EUTMR.

1. ASSESSMENT OF THE SUBMITTED EVIDENCE (PROOF OF USE, ENHANCED DISTINCTIVENESS/REPUTATION)

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 706 349 (figurative), since it is considered more similar to the contested sign.

The outcome of the opposition depends to a great extent on the conclusions in relation to the evidence submitted by the opponent in order to prove the genuine use, the enhanced distinctiveness and/or the reputation of the earlier mark. Therefore, in this section the Opposition Division will first examine the submitted evidence in its entirety and will determine whether the earlier mark was put to genuine use and whether it acquired enhanced distinctiveness and/or reputation.

On 21/02/2019, within the extended time limit for filing further facts, documents and evidence, the opponent submitted evidence to support its claim for enhanced distinctiveness and reputation of the earlier mark. The evidence is well structured and accompanied by a detailed description (‘Index of materials filed’, containing Exhibits 1-8) of all the submitted items. On 25/02/2019, the applicant received a full copy of these documents. Therefore, the Opposition Division will refrain from a detailed listing of all the documents but will later on in the decision, when necessary, refer to any particular documents by the document numbering assigned by the opponent. In this section the Opposition Division will, following the opponent’s index, introduce only the pieces of evidence which are considered to be of material importance:

Poland

Items no. 1 and 2 (corresponding Exhibits 1a and 1b): Documents referring to sales and marketing activities in Poland. They show detailed sales figures and volumes of products of the opponent’s ‘CONO SUR’ range of wines, including the ‘CONO SUR BICICLETA’ range, sold in various retail outlets (e.g., Auchan, Alma Market, Carrefour, BP) during the years 2015, 2016 and 2017. The exhibits also show the opponent’s marketing activity in Poland (in particular, the promotional campaigns in connection with the Tour de France) in 2015 and 2016. The sign appears on bottles of red, rosé and white wine in the following forms: , . The volumes sold in Poland with the earlier EUTM amount to more than 500 000 bottles. The documents contain information also about a promotional campaign called ‘The great ride with Cono Sur’ where the prize for the winners is a bicycle (7 in total).

Item no. 3 (corresponding Exhibit 1c): contains promotional materials and articles produced in Poland relating to the opponent’s partnership with the Tour de France between 2017 and 2018 (official wine of Tour de France). The opponent organised a promotional campaign, giving away twenty bicycles. The mark appears on the bottles in the following form:

, . The exhibit contains also a printout from the website https://velonews.pl dated 13/06/2107 informing that the Chilean brand Cono Sur Bicicleta is the official wine of Tour de France 2017.

Item no. 6 (corresponding Exhibit 1f): contains images of shelf displays for ‘CONO SUR BICICLETA’ wines in supermarket stores in Poland. Close ups of the shelves’ labels show that some of the ‘CONO SUR BICICLETA’ wines were on special offer in 2017. The trade mark appears on the bottles as follows:

, .

Denmark

Item no. 7 (corresponding Exhibit 2a): is a copy of the opponent’s promotional campaign overview for the years 2014/2015 for the ‘CONO SUR’ range of wines in Denmark. The document details the various promotional campaigns run in specific supermarkets (SuperBest, Euro Spar, Min Kobmand, KIWI) with an indication of the product’s full price and discount applied during the promotional campaign.

Item no. 9 (corresponding Exhibit 2c): contains copies of promotional materials produced by Hans Just, Cono Sur’s wine distributor in Denmark, and Vinbladet, wine specialist magazine, providing information and reviews pertaining to the qualities and history of the ‘CONO SUR BICICLETA’ wine.

Latvia

Item no. 10 (corresponding Exhibit 3a): contains a copy of an invoice dated 18/06/2014 and issued by A/S Interbaltija AG to Viña Cono Sur S.A. for the marketing services rendered by A/S/ Interbaltija to promote the ‘CONO SUR BICICLETA’ wine in Latvia (in connection with the Distribution Agreement 2014).

Finland

Item no. 13 (corresponding Exhibit 4a): contains screenshots taken from the website of Viinikassi, a wine specialist website in Finland, providing recommendations and reviews of ‘CONO SUR BICICLETA’ wine.

Item no. 14 (corresponding Exhibit 4b): contains articles published by WineState (a wine importer and marketing specialist of high quality wines) in 2013, providing information of and advertising ‘CONO SUR BICICLETA’ wines in Finland and images of ‘CONO SUR BICICLETA’ wine taken from the 2012 Vini Expo Helsinki “wine of the year” awards. The sign appears on a bottle of wine as follows: ,

Netherlands

Item no. 17 (corresponding Exhibit 5c): contains articles published on the Dutch Cono Sur website, providing information relating to ‘CONO SUR BICICLETA’ wine.

Item no. 18 (corresponding Exhibit 5d): contains newspaper extracts from the Netherlands leading newspaper, NRC Handelsblad (issue of 22/08/2012), advertising and providing information relating to ‘CONO SUR BICICLETA’ wine.

Ireland

Item no. 21 (corresponding Exhibit 6b): contains images of ‘CONO SUR BICICLETA’ promotional displays in Ireland relating to Viña Cono Sur S.A.’s partnership with the Tour de France. Real bicycles are also displayed on the promotional stands.

Item no. 22 (corresponding Exhibit 6c): contains press clippings from Ireland relating to ‘CONO SUR BICICLETA’s partnership with the Tour de France in 2016. The materials provide information about numerous promotional campaigns, including bicycle giveaways and a competition for tickets (VIP trips) for the Tour de France 2016.

United Kingdom

Item no. 23 (corresponding Exhibit 7a): contains images of promotional posters taken from the London Underground advertising ‘CONO SUR BICICLETA’ wine’s partnership with the Tour de France.

Item no. 24 (corresponding Exhibit 7b): contains images of ‘CONO SUR BICICLETA’ product displays in leading supermarkets, such as Morrisons and Tesco. The sign appears as follows: .

Item no. 25 (corresponding Exhibit 7c): contains articles published on the British thedrinksbusiness.com website, providing information relating to ‘CONO SUR BICICLETA’ partnership with the Tour de France, 2014.

Item no. 26 (corresponding Exhibit 7d): contains extracts from amazon.com and winemarket.co.uk, which highlight ‘CONO SUR BICICLETA’ wine as the UK’s no. 1 Pinot Noir.

Following the request of the applicant to submit proof of use of the trade marks on which the opposition is based, on 15/07/2019, the opponent re-submitted the evidence submitted already on 21/02/2019 (Exhibits 1-8) and filed, in addition, the following evidence (Exhibits 9-11):

Exhibit 9: an article published on www.telegraph.co.uk, dated 10/04/2017, providing a list of the top 10 wines to buy for Easter weekend, selected by Victoria Moore displaying the ‘Cono Sur Bicicleta Viognier 2016’ in position No 9. An article published on http://thetaste.ie reporting about the launch of a ‘Cono Sur Bicicleta’ limited edition labels to celebrate the 2017 Tour de France. The article refers to the ‘Cono Sur Bicicleta’ labels as ‘iconic’ and speaks about the launch of the limited edition 2017 Tour de France labels in Ireland.

Exhibit 10: Google search results for the terms ‘CONO SUR BICICLETA UK’ showing significant number of hits and demonstrating that the ‘CONO SUR BICICLETA’ wines are offered for sale in the UK through many distributors and on distributors’ websites, for instance: TESCO, ASDA, Uvinum, www.mysupermarket.co.uk, etc. The image results show, among others, the following labels: , , , etc.

Exhibit 11: An undated article published on www.thebikecomesfirst.com regarding a bicycle and bottle of ‘Cono Sur Bicicleta’ wine giveaway to celebrate the support of RaboDirect Tour de Picnic in Ireland.

1. 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 marks on which the opposition is based, including European Union trade mark No 10 706 349 .

The date of filing of the contested application is 23/02/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based and on which the examination is focused was put to genuine use in the European Union from 23/02/2013 to 22/02/2018 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 33: Wines.

According to Article 10(3) EUTMDR, 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.

In order to prove the genuine use of the earlier mark the opponent relies on the evidence identified as Exhibits 1-11, the most material part of which has been listed above.

Place of use

The promotional materials, the websites printouts and the articles published in various media show that the place of use is the European Union. This can be inferred from the languages of the documents (Polish, Dutch, Danish, Latvian, English, Finnish), the currencies mentioned (‘Euro’, ‘Pound sterling’) and references to the Member States (Poland, Finland, the Netherlands, Denmark, the United Kingdom, Ireland, Latvia). Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant period or refers to events that took place within the relevant period, such as the Tour de France 2017.

Extent of use

The documents filed, namely the data on turnovers showing significant sales (even if it comes from the opponent, it was not disputed by the applicant), the promotional materials, articles informing about sponsorship campaigns and collaboration with major sports, culinary and other events, website printouts (including Google search results) showing the availability of ‘Cono Sur Bicicleta’ wines in a EU wide distribution network, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. Indeed, the trade mark was used through the entire relevant period in a major part of the European Union and was a subject of numerous promotional campaigns and generated significant turnovers.

Nature of use and use in relation to the registered goods

In the context of Article 10(3) EUTMDR, 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.

According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the EUTM has been used in various forms (as demonstrated above in the description of the evidence) which, in most of the cases, retain the material characteristics of the trade mark as registered, namely the representation of a bicycle and the verbal elements ‘Cono Sur Bicicleta’ represented in a particular typescript. Possible additions indicate the type of grapes from which the wine was produced (for instance, Pinot Noir) and the year of production, which is a purely descriptive indication that does not alter the distinctive character of the mark as registered. Other additions seem to be temporary, reflecting particular promotional campaigns. All in all, there is sufficient evidence showing the use of the EUTM as registered or in a form that does not alter its distinctive character.

Furthermore, the evidence shows that the mark has been used in accordance with its function for the goods for which it is registered, namely: wines.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 18(1), second subparagraph, point (a), EUTMR.

Conclusion

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, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory for the goods in Class 33: wines.

It is to be noted that on 16/07/2019, the Office gave the applicant a time limit until 26/09/2019 to submit observations regarding the submitted proof of use. The applicant did not avail itself of this opportunity and did not dispute the evidence proving the genuine use of the earlier mark.

2. Enhanced distinctiveness/reputation

According to the opponent, the earlier trade mark enjoys a high degree of distinctiveness because of its intensive use in the European Union in relation to wines and acquired also reputation due to the high level of recognition that the mark achieved among the relevant consumers.

The claim of the opponent must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (see judgment of 11/11/1997, C-251/95, ‘Sabel’), and, therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see judgment of 29/09/1998, C-39/97, ‘Canon’).

Enhanced distinctiveness and reputation are knowledge threshold requirements that must be principally assessed on the basis of quantitative criteria. While enhanced distinctiveness is anything above inherent distinctiveness, a finding of reputation requires that a higher threshold be met. That is to say that, whether a trade mark enjoys enhanced distinctiveness and reputation or enhanced distinctiveness only, is determined on a gradual scale based on the evidence provided, assessed principally in terms of quantitative criteria.

In making that assessment, account should be taken, in particular of the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.

Before proceeding to the examination of the evidence submitted to prove the enhanced distinctiveness of the earlier mark, it is necessary to establish first the degree of inherent distinctiveness of the earlier mark. Bearing in mind that none of the verbal elements composing the earlier mark has any meaning in relation to the relevant goods at least for part of the relevant public (See also section II, c) below) and that the representation of a bicycle in relation to wine is also distinctive, it is considered that the inherent distinctiveness of the earlier mark as a whole is normal.

The information contained in the submitted documents reveals an extensive use of the earlier trade mark during the entire relevant period, which can be inferred from the reviews and publications in various media sources. It is also clear that the wines labelled with the EUTM gained a certain level of recognition among the relevant public as a result of numerous promotional campaigns, as can be inferred from the inclusion of these wines in various ‘best wines’ listings (see, for instance, Item no. 26 (corresponding Exhibit 7d)). It can also reasonably be assumed (as the opponent itself suggests) that the continuous collaboration of a non-French and even non-European wine producer with a major sport event in Europe, such as the Tour de France, must have had a strong echo among competitors in the wine sector and sports fans-wine consumers in the European Union, thus inevitably leading to a level of recognition which, in any case, reaches the threshold necessary to accept that the earlier mark indeed enjoys enhanced distinctiveness. Bearing in mind the above considerations, the Opposition Division concludes that the earlier trade mark has acquired a high degree of distinctiveness through its intensive use and major promotional and advertisement campaigns on the market in the European Union. It is also worth mentioning that a major part of the promotional campaigns are focused on bicycles, such as bicycle events, bicycle giveaways, etc.

Whether the threshold of recognition among the relevant public is high enough to acknowledge that the earlier trade mark is also reputed is a question that can remain open at this stage of the examination.

2. 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 33: Wines.

The contested goods are the following:

Class 33: Wine.

Wine is identically contained in both lists of goods (albeit in plural in the earlier mark).

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 the public at large. The degree of attention is average.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The 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 Opposition Division finds it appropriate to limit the assessment to the part of the public in the European Union for which the verbal elements in both marks have no meaning, such as the Polish‑speaking part of the public, since for this part of the public such verbal elements will not establish any conceptual difference between the signs.

The earlier mark is a figurative mark consisting of the verbal elements ‘Cono Sur’ in bold black title case letters and in a handwriting-style font. The verbal element ‘BICICLETA’, in smaller, thinner near-standard upper case letters, appears underneath in gold. A figurative element consisting of a sizeable depiction of a red bicycle within a pale‑grey rectangular frame appears below. The bicycle is shown from the left-hand side. The most characteristic features of the bicycle are the straight frame and quite large wheels with radial spokes. All these elements appear within a white rectangular background in the form of a common and purely decorative label.

The verbal element ‘BICICLETA’ has less visual impact in the earlier mark than the other elements because of its smaller size and lighter colour. The verbal elements ‘Cono Sur’ and the bicycle device are the co‑dominant elements (the most visually eye-catching elements) and, at the same time, they are of average distinctive character.

The contested sign is also a figurative mark consisting of certain verbal elements and a figurative element representing a sizeable depiction of a white bicycle on a black background in the form of a common and purely decorative label. The bicycle is shown from the right-hand side. The most characteristic features of the bicycle are the straight frame and quite large wheels with radial spokes. Part of the verbal elements of the contested sign, namely the ones right beneath the bicycle and above the verbal element ‘CHAVAL’ are negligible, barely perceptible and difficult, if not impossible, to decipher. Bearing in mind also that these are placed in the middle of a rather complex sign, these elements are likely to be disregarded by the relevant public and will not be taken into consideration further in the comparison of the signs.

The verbal elements ‘BY BODEGAS NODUS’ cannot be defined as negligible. Yet, they are significantly smaller than the representation of the bicycle and the verbal element ‘CHAVAL’, which co‑dominate the composition of the contested sign.

The importance of the impact of the figurative elements versus the impact of the verbal elements has to be measured first of all in their ability to attract the consumer’s attention in terms of their dominance and distinctiveness. In this regard, in no way are the figurative elements representing bicycles in both marks less dominant than the verbal elements.

Furthermore, as far as the distinctiveness of the verbal elements and of the graphic elements representing bicycles is concerned, in relation to the relevant goods they are of average distinctiveness since they either have no meaning (verbal elements) or the meaning is in no way related to the goods concerned (representations of the bicycles).

Therefore, the widely accepted practice that, in principle, the verbal elements of a composite mark usually have a stronger impact on the relevant consumers than their figurative elements does not hold true in the case at hand. The figurative elements representing a bicycle in both marks are at least of the same importance in terms of perception, recognition and recall as the verbal elements, if not even of a greater importance since they are the only ones that will be associated with a concept and therefore easily referred to by consumers.

Visually, both signs coincide to the extent that they contain a depiction of a bicycle. It is true that the depictions of the bicycles in both signs differ in their orientation (left-hand versus right-hand) and colours. It is also true (as the applicant states) that a careful closer inspection of the two devices may reveal some additional differences between the representations of the bicycles, for instance the handlebars. However, the average consumer showing an average level of attention is not prone to closer inspection of the composition of the signs and/or the signs’ elements. The average consumer is not intentionally and carefully seeking out details in the signs’ figurative elements when confronted with a trade mark. Assuming the contrary does not reflect the market reality and the cognitive process of perception and does not tally with the principles developed by the Courts regarding the objective evaluation of similarity between signs from the perspective of the average consumer, who normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

Bearing in mind the above considerations, it is to be concluded that the bicycle representations in both signs are defined by their main characteristics, namely the straight frame and quite large wheels with radial spokes, which in the both representations are largely the same. Therefore, and despite the differences between the signs arising from their respective verbal elements, an average degree of visual similarity between the signs as a whole has to be acknowledged.

Aurally, as the signs do not coincide in any element which will be pronounced, it is concluded that the signs are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Bearing in mind that the only meaningful concept conveyed by the two marks is the concept of a bicycle and therefore both marks will be associated with this same meaning, the signs are conceptually similar to a high degree from the perspective of the relevant public.

It remains necessary to address the applicant’s argument that the signs are dissimilar supported by a reference to a decision of the General Court of 20/10/2016 in case T-407/15, HotoGo self-heating can technology (fig.) / M (fig.), § 45. It suffices to state that the case cited by the applicant concerns completely different signs which do not bear any resemblance to the signs in the current case. It has been established that, in the present case, the signs have relevant similarities on the visual and conceptual levels, so they are, obviously, not dissimilar.

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.

It has already been established in Section I., 2. Enhanced distinctiveness that the earlier mark per se has a normal inherent distinctive character. In addition, it has acquired a higher degree of distinctiveness as a result of extensive use on the market. Reference is made to this section and the reasoning provided therein.

5. Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case. The appreciation of the likelihood of confusion depends on numerous elements and, in particular, on the recognition of the trade mark on the market, on the association that the public might make between the two marks and on the degree of similarity between the signs and the goods (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

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

Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18). Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion.

The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

Account is also 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).

Furthermore, it is not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive character (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 24).

In the present case, the goods are identical. The signs are visually similar to an average degree, aurally not similar and conceptually similar to a high degree. The earlier mark enjoys enhanced distinctiveness and the level of attention of the relevant consumer is average.

Bearing in mind all the above and by applying the principles developed by the Court of Justice of the European Union in the above cited case law, the Opposition Division finds that a conclusion on the existence of likelihood of confusion is inevitable in the present case. Indeed, considering the enhanced distinctive character of the earlier mark, as well as the average degree of visual similarity and the high conceptual similarity between the signs on account of the image of a bicycle, the relevant consumer may associate the contested sign with the earlier mark and erroneously think that the identical goods come from the same or economically linked undertakings, thus attribute to the goods the same commercial origin.

It follows from the above, that there is a likelihood of confusion on the part of the public that will not understand the meaning of the verbal elements in both signs, such as the Polish‑speaking 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 earlier European Union trade mark registration No 10 706 349. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 10 706 349 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent under this ground (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

Furthermore, 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 grounds of the opposition, namely Articles 8(4) and 8(5) EUTMR.

3. 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, 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

Marta GARCÍA COLLADO

Eva Inés PEREZ SANTONJA

Helen Louise MOSBACK

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.