AL ALEXANDER LAIBLE | Decision 2322603 - S.C. BELLES MARKS CONSULTING S.R.L. v. Alexander Laible
Date Published: Sep 24, 2017
OPPOSITION No B 2 322 603
S.C. Belles Marks Consulting S.R.L., Comuna Bucov, sat Pleasa, 107113 Jud. Prahova, Romania (opponent), represented by Agentia De Propritate Industriala - Apia S.R.L., Str. Romancierilor nr. 5, Bl. C14. Sc. B, Ap.41, Sector 6, OP 23 CP 11, Bucarest, Romania (professional representative)
a g a i n s t
Alexander Laible, Unterweiler 48, 77770 Durbach, Germany (applicant), represented by Vossius & Partner Patentanwälte Rechtsanwälte mbB, Siebertstr. 3, 81675 München, Germany (professional representative).
On 21/09/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 322 603 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 348 363 ´AL ALEXANDER LAIBLE´. The opposition is based on:
- international trade mark registration No 815 882 designating the Czech Republic, Portugal, Austria, Latvia, Slovakia, Poland, Italy, Hungary, Benelux, Germany, France and Slovenia (earlier mark 1)
- Romanian trade mark registration No 123 307 ´ALEXANDER THE NEW TSAR´ (earlier mark 2)
- Romanian trade mark registration No 53 297 ´ALEXANDER THE GREAT´ (earlier mark 3)
- Romanian trade mark registration No 54 941 ´ALEXANDER EXOTIC´ (earlier mark 4)
- Romanian trade mark registration No 54 950 ´ALEXANDER FORCE´ (earlier mark 5)
- Romanian trade mark registration No 54 945 ´ALEXANDER FUN CLUB´ (earlier mark 6)
- Romanian trade mark registration No 54 946 ´ALEXANDER ON ICE´ (earlier mark 7)
- Romanian trade mark registration No 46 989 ´MEGA ALEXANDER´ (earlier mark 8)
- Romanian trade mark registration and No 123 308 (earlier mark 9).
The opponent invoked Article 8(1)(b) EUTMR.
On 15/06/2016 the Opposition Division rendered a decision which resulted in the opposition being upheld for all the contested goods and services on the basis of the earlier Romanian trade mark registrations No 123 307 ´ALEXANDER THE NEW TSAR´. The goods in comparison were found to be identical and the services were found to be partly identical and partly similar to a low degree. The Opposition Division found the signs in comparison to be visually and aurally similar to an average degree and conceptually similar to a high degree. Consequently, it was concluded that there is a likelihood of confusion on the part of the public.
The decision was appealed and the Board of Appeal decided in case R 1345/2016-2 on 09/01/2017 (hereinafter referred to as ‘the Board’s decision´). The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that, even though there is identity and similarity between the goods and services covered by the earlier mark 2 and the contested sign, the visual, aural and conceptual differences between the signs constitute sufficient grounds for holding that there is no likelihood of confusion in the mind of the targeted public.
The Board of Appeal concluded that the opposition has to be examined, as well, in relation to the remaining earlier rights, invoked by the opponent.
SUBSTANTIATION- earlier international trade mark registration No 815 882 designating the Czech Republic, Portugal, Austria, Latvia, Slovakia, Poland, Italy, Hungary, Benelux, Germany, France and Slovenia (earlier mark 1)
According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.
In the present case the notice of opposition was not accompanied by any evidence as regards earlier mark 1 on which the opposition is based.
On 28/04/2014 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. The time limit was initially due to expire on 10/09/2014. After an extension of the cooling-off period and further opting out of one of the parties, the time limit given to the opponent to submit the abovementioned material finally expired on 21/06/2015.
The opponent did not submit any evidence concerning the substantiation of the earlier mark 1.
According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.
The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.
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 goods and services
The goods and services on which the opposition is based are the following:
Earlier mark 2:
Class 33: Alcoholic beverages (except for beer) and liquors.
Class 43: Services for providing food and drink; temporary accommodation.
Earlier mark 3:
Class 33: Wines, alcoholic beverages and liquors.
Class 41: Education; providing of training; entertainment; sporting and cultural activities.
Class 43: Public food services; temporary accommodation services.
Earlier mark 4:
Class 33: Wines, alcoholic beverages and liquors.
Earlier mark 5:
Class 33: Wines, alcoholic beverages and liquors.
Earlier mark 6:
Class 33: Wines, alcoholic beverages and liquors.
Earlier mark 7:
Class 33: Wines, alcoholic beverages and liquors.
Earlier mark 8:
Class 33: Wines, alcoholic beverages and liquors.
Earlier mark 9:
Class 33: Alcoholic beverages (except for beer) and liquors.
Class 43: Services for providing food and drink; temporary accommodation.
The contested goods and services are the following:
Class 33: Wine; sparkling wine; sparkling wines.
Class 41: Arranging and conducting of wine and winemaking seminars.
Class 43: Services for providing food and drink, temporary accommodation.
Contested goods in Class 33
The contested wine is the singular form of the opponent´s wines, covered by the earlier marks 3, 4, 5, 6, 7 and 8. These are, therefore, considered identical.
Sparkling wine; sparkling wines are included in the broad category of the opponent’s wines (covered by the earlier marks 3, 4, 5, 6, 7 and 8). Therefore, they are identical.
Contested services in Class 41
The contested arranging and conducting of wine and winemaking seminars overlap with the opponent’s education (covered by earlier mark 3), as far as they are related to arranging and conducting of wine and winemaking seminars for educational purposes. It follows that these are identical.
Contested services in Class 43
Services for providing food and drink are identically contained in the lists of the contested services and the opponent’s services, covered by the earlier marks 2 and 9.
Temporary accommodation is identically contained in the lists of the contested services and the opponent’s services, covered by the earlier marks 2, 3 and 9 (including synonyms).
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical are directed at the public at large, but also at wine specialists. The degree of attention is considered to be average.
- The signs
Earlier mark 2:
ALEXANDER THE NEW TSAR
Earlier mark 3:
ALEXANDER THE GREAT
Earlier mark 4:
ALEXANDER EXOTIC
Earlier mark 5:
ALEXANDER FORCE
Earlier mark 6:
ALEXANDER FUN CLUB
Earlier mark 7:
ALEXANDER ON ICE
Earlier mark 8:
MEGA ALEXANDER AL ALEXANDER LAIBLE
Earlier mark 9:
Earlier trade marks | Contested sign |
The relevant territory is Romania.
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).
Earlier marks from 2 until 8 are word marks and the earlier mark 9 is a figurative mark. All of the earlier rights contain the verbal element ‘ALEXANDER’, which will be perceived by the relevant public as a male given name, as it is very close to the Romanian name ‘Alexandru’. Furthermore, it is a popular male name used as it is (or in some versions thereof) largely within the European Union, including in the relevant territory. As far as all the earlier rights are concerned, the element ‘ALEXANDER’ on its own is not descriptive, allusive or otherwise weak for the relevant goods and services, and it is therefore distinctive.
Earlier mark 2 consists of the elements ‘ALEXANDER THE NEW TSAR’. The element ‘TSAR’ is likely to be understood by the relevant public as the title traditionally given to a Russian monarch, as the word ‘Tsar’ is also very close to the respective Romanian word ‘ȚAR’, where the pronunciation of both words in the Romanian language is similar to a high degree if not identical. It is also likely that the relevant public will understood the elements ‘the’ and ‘new’, being fairly basic English words and respectively the earlier mark 2 as a whole would be perceived in the meaning of ‘the new tsar named Alexander’. The Opposition Division does not find a reason to depart from the conclusion in the Board’s decision, where it is considered that the earlier mark 2 will be understood as a reference to ‘either Tsar Alexander I or Tsar Alexander II, both celebrated rulers of Russia in the 19th Century’ (§ 36) and that the earlier mark identifies ‘Tsar Alexander of Russia, the “new Tsar’’’ (§ 37). Taken as a whole the phrase ‘ALEXANDER THE NEW TSAR’ is not descriptive, allusive or otherwise weak for the relevant goods and services, and it is therefore distinctive.
Earlier mark 3 consists of the elements ‘ALEXANDER THE GREAT’. Part of the relevant public, familiar with the significance of the English word ‘great’ (as in large in extent; big) would associate the phrase with ‘Alexander the Great’, namely ‘king of Macedon, who conquered Greece (336), Egypt (331), and the Persian Empire (328), and founded Alexandria’ (see http://dictionary.reverso.net/english-definition/alexander%20the%20great). It is also not excluded that the earlier sign is understood as a reference to the Russian monarchs, pointed above. Part of the relevant public would only perceive a meaning in the element ‘Alexander’. Taken as a whole the phrase ‘ALEXANDER THE GREAT’, irrespective of whether it is understood partially or as a whole is not descriptive, allusive or otherwise weak for the relevant goods and services, and it is therefore distinctive.
Earlier mark 4 consists of the elements ‘ALEXANDER EXOTIC’. The element ‘EXOTIC’ will be perceived by the relevant public with the meaning of the English word ‘exotic’ (as in ‘originating in a foreign country, having a strange or bizarre allure, beauty, or quality’, information extracted from http://dictionary.reverso.net/english-definition/exotic) due to the existence of the same word in the Romanian language. Bearing in mind that the relevant goods are wines, this element is considered weak for these goods, as it refers to their foreign origin or nature.
Earlier mark 5 consists of the elements ‘ALEXANDER FORCE’. The element ‘FORCE’ will be perceived by part of the relevant public as in ‘strength, power’ due to the similarity between the English word ‘force’ and the corresponding Romanian word ‘forță’. For part of the relevant public, the element ‘FORCE’ will have no meaning. As the element is not descriptive, allusive or otherwise weak for the relevant goods, it is considered distinctive.
Earlier mark 6 consists of the elements ‘ALEXANDER FUN CLUB’. The elements ‘FUN CLUB’ are likely to be understood by significant part of the relevant public as a reference to ‘a club for having fun/club for entertainment’ due to the existence of the word ‘club’ per se in the Romanian language and the large expansion of the use of the English word ‘fun’ within the European Union, including in the relevant territory. Taken as a whole the phrase ‘FUN CLUB’ is not descriptive, allusive or otherwise weak for the relevant goods, and it is therefore distinctive.
Earlier mark 7 consists of the elements ‘ALEXANDER ON ICE’. The elements ‘ON ICE’ in relation to the relevant goods are likely to be perceived by part of the relevant public, familiar with the English language, as a reference to drinks being served with ice or chilled. For this part of the public, the elements ‘ON ICE’ in their combination are considered to be weak as they refer to the way the relevant goods are consumed. For the rest of the relevant public, for which the elements ‘ON ICE’ have no meaning, the combination of these elements is distinctive.
Earlier mark 8 consists of the elements ‘MEGA ALEXANDER’. The element ‘MEGA’ will be perceived by the relevant public in the meaning of ‘very big, huge’. The word ‘mega’ is not used per se in the relevant territory in relation to the relevant goods (wines), however it is likely to be perceived as a reference to the quantity (the size) of the goods (or their container). Therefore, the distinctiveness of the element ‘MEGA’ is considered to be lower than average in regard to the relevant goods.
Earlier mark 9 consists of a depiction of a rather standard bottle shape in which bottom part is placed in title case letters the element ‘ALEXANDER’; in the upper part of the bottle shape is depicted a profile of a male human head with a beard, surrounded by two circular shapes; additional lines (horizontal, vertical, curved and straight) are placed in the upper and lower parts of the bottle device. The human head is a feature that is often depicted on alcohol bottles, and the shape of the bottle itself refers to the container of the relevant goods. Bearing in mind that the relevant goods and services are alcohol related goods and services or in relation to which alcohol could be provided, these elements are considered to be weak for the relevant goods and services. The remaining circular elements and lines have a rather decorative nature. It is, therefore, considered that the distinctiveness of these elements of the earlier mark is rather low.
The earlier mark 9 has no elements that could be considered clearly more dominant than other elements.
The contested sign is a word mark consisting of the elements ‘AL ALEXANDER LAIBLE’. The word ‘ALEXANDER’ will be perceived as a male given name, as already explained above. The element ‘LAIBLE’ in the given sequence, namely placed after the element ‘ALEXANDER’, is likely to be perceived as a foreign (unusual) surname. Respectively, the element ‘AL’ of the sign is likely to be perceived as the initials of the name ‘ALEXANDER LAIBLE’. The contested mark as a whole denotes a concrete individual called Alexander Laible, which name is preceded by its initials.
Furthermore, as noted in the Board’s decision (§ 33):
The Court of Justice has held that as a general rule a surname has a more distinctive character than a first name, but that it is nonetheless appropriate to take account of factors specific to the case and, in particular, the fact that the surname concerned is unusual or, on the contrary, very common, which is likely to have an effect on that distinctive character (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 44).
Following from the above, it is considered that due to the common use of the name ‘Alexander’ (even though it undergoes a certain change in Romanian, but nevertheless is known as a common forename) and due to the unusual for the relevant public surname ‘LAIBLE’, the element ‘LAIBLE’ is considered to have a more distinctive character than the element ‘ALEXANDER’. Consequently, the element ‘LAIBLE’ is considered to have more distinctive character than the element ‘AL’, as the latter only denotes the initials of the first name and the last name within the contested sign.
Visually, the signs coincide in the element ‘ALEXANDER’, present in all signs. However, they differ in all of the remaining verbal and figurative elements of the signs in comparison, namely the elements ‘THE NEW TSAR’ (earlier mark 2), ‘THE GREAT’ (earlier mark 3), ‘EXOTIC’ (earlier mark 4), ‘FORCE’ (earlier mark 5), ‘FUN CLUB’ (earlier mark 6), ‘ON ICE’ (earlier mark 7), ‘MEGA’ (earlier mark 8), the depiction of the bottle, human profile, the circles and the lines (earlier mark 9) and the elements ‘AL’ and ‘LAIBLE’ of the contested sign. Furthermore, they differ in the length of the signs and/or the position of the common element within the sign, namely in the contested sign it is placed between two other elements; while in the earlier marks it appears before or after the rest of the elements or depicted within a figurative device.
Reference is made to the conclusions made above concerning the distinctiveness of the elements of the signs.
It follows that even though all the signs in question coincide in the element ‘ALEXANDER’, they differ in the remaining elements, as well as the way the elements are structured and the common element is positioned within the signs. Even though some of the additional elements of the earlier marks are of a limited distinctiveness, account is taken of the conclusion made above for the element ‘LAIBLE’ being the most distinctive element of the contested sign and the one likely to attract the attention of the relevant consumer.
Following from the above, it is considered that the signs in comparison are visually similar only to a low degree.
Aurally, the pronunciation of the signs coincides in the sound of the syllables that make up the name ‘AL-EX-AN-DER’. However, in the contested sign the sequence of identical syllables does not have the same position as in the earlier signs. The identical string is preceded by the sound of the letters ‘A-L’ and followed by ‘LA-IB-LE’ in the contested sign, while in the earlier mark 2, it comes first and is followed by ‘THE-NEW-TSAR’. Furthermore, the remaining earlier rights differ from the contested sign in the sound of the elements ‘THE GREAT’ (earlier mark 3), ‘EXOTIC’ (earlier mark 4), ‘FORCE’ (earlier mark 5), ‘FUN CLUB’ (earlier mark 6), ‘ON ICE’ (earlier mark 7), ‘MEGA’ (earlier mark 8), which elements are placed before or after the common element ‘ALEXANDER’. It follows that the earlier marks from 2 until 8 and the contested sign follow different phonetic structure due to the different position of the common syllables and the presence of additional sounds placed before and/or after the common syllables. Therefore, these earlier marks and the contested sign have different rhythms and intonations. Even when it comes to the earlier mark 9, where only the element ‘ALEXANDER’ is pronounced, the difference originating from the sound of the additional elements of the contested sign, namely ‘AL’ and ‘LAIBLE’ renders the signs different rhythms and intonations.
Reference is made to the conclusions made above concerning the distinctiveness of the elements of the signs and the importance given to the element ‘LAIBLE’ of the contested sign.
Following from the above, it is concluded that the signs in comparison are aurally similar only to a very low degree.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks and the elements thereof. It was concluded that the earlier marks 2 and 3 (for a part of the relevant public) refer to a historical figure. As far as the remaining earlier rights (earlier marks from 4 until 9) are concerned, as well as for part of the relevant public earlier mark 3, these signs are either perceived as the name ‘Alexander’ per se, or the name in combination with another concept (even though in some of the signs with a limited distinctiveness). The contested sign, on the other hand, produces a logical whole, namely the initials and the name of a concrete person (even though unknown) where the attention is likely to be focused on the element representing the surname, being unusual for the relevant public.
As the signs will be associated with different concepts, the signs are not conceptually similar.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier marks
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 marks are particularly distinctive by virtue of intensive use or reputation.
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, despite the presence of some elements with a limited distinctiveness in some of the mark as stated above in section c) of this decision.
- Global assessment, other arguments and conclusion
The contested goods and services were found to be identical to the opponent’s goods and services. The level of attention will be average when choosing the relevant goods and services.
The signs under comparison are visually and aurally similar only to a low degree and they are not conceptually similar. Although all the signs in comparison visually and aurally coincide in the element ‘ALEXANDER’, this is not enough to create confusion between the marks at issue.
As analysed above, the signs in comparison convey different concepts. Even though they all contain the male name ‘Alexander’, which will be recognised as such, this not enough for creating confusion in the relevant public. As referred by the Court the consumers are used to trade marks which contain common names and they will not assume that every time a particular common name occurs in a trade mark in conjunction with other verbal or figurative elements that the goods in question all emanate from the same source (see by analogy 09/07/2003,T-156/01, Giorgio Aire, EU:T:2003:198, § 81).
While the contested sign appears as an entity of a name and a surname (where the latter is likely to draw the attention of the consumer as being unusual) and initials thereof, the earlier marks as specified above would be either perceived as referring to a historical figure, to the name ‘Alexander’ per se, or to the name ‘Alexander’ along with additional concept conveyed by the additional verbal or figurative elements. The differing concepts, as well as the differing elements of the signs, different structure (and position of the element ‘ALEXANDER’) will be clearly noticeable to the relevant public.
The abovementioned differing concepts and the aural and visual differences are enough to outweigh the similarities between the signs originating from the shared element ‘ALEXANDER’. Following from the above, the Opposition Division does not find it plausible to conclude that the relevant consumer, who, for the purposes of the assessment, is considered to be reasonably well informed and reasonably observant and circumspect, might believe that the goods and services, found to be identical, come from the same undertaking or economically linked undertakings.
It remains necessary to consider the opponent’s argument that the earlier trade marks, all characterised by the presence of the same word element ‘ALEXANDER’ constitute a ‘family of marks’ or ‘marks in a series’. In its view, such a circumstance (the existence of a family of marks) is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark which contains the same word element as the earlier marks, will be led to believe that the goods and services identified by that mark may also come from the opponent.
In fact, the concept of the family of marks was exhaustively analysed by the General Court in its judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65.
When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. However, the likelihood of association described above may be invoked only if two conditions are cumulatively satisfied.
Firstly, the proprietor of a series of earlier registrations must furnish proof of use of all the marks belonging to the series or, at the very least, of a number of marks capable of constituting a ‘series’.
Secondly, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series. This could not be the case where, for example, the element common to the earlier series of marks is used in the contested trade mark, either in a different position from that in which it usually appears in the marks belonging to the series, or with a different semantic content.
As specified above, pursuant to Rule 19 EUTMIR within the period given by the Office (the substantiation period), the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.
It follows that the argument that there is a ‘family of marks’ must be claimed before the expiry of the time limit set for substantiating the opposition which in the case at issue was 21/06/2015. The opponent must prove within the same time limit that it has used the marks forming the alleged family in the marketplace to such an extent that the relevant public has become familiar with this family of marks as designating the goods and services of a particular undertaking. The opponent claimed that the earlier marks form ‘family of marks’ with its observations, submitted on 16/06/2015 (within the substantiation period). The evidence to proof use of the earlier rights was submitted on 21/10/2015 (as a response to a request of the applicant for proof of use). However, that submission was made only after the expiry of the substantiation period (21/06/2015). Therefore, the opponent has failed to prove, within the given by the Office period, that it has used the earlier marks.
For the sake of completeness, the Opposition Division will examine the claim for a ‘family of marks’ as if the opponent has proven the use of its marks within the substantiation period, which is the best case scenario for the opponent and it is not prejudicial to the rights of the applicant, as it will be seen further below.
In the case at issue, the element ‘ALEXANDER’, common for the signs for which family of marks is claimed and present in the contested sign, is related to different concepts in the signs, as already specified above. The earlier marks are perceived as a reference to a historical figure, or the name ‘Alexander’ per se, or the name along with another concept, conveyed by the additional elements of the signs. However, in the contested sign the combination of a given name ‘Alexander’ and unusual surname, along with initials, convey the concept of a concrete person, even though unknown. It follows that the semantic content of the contested sign differs from the semantic contents of the earlier marks, even though they have the element ‘ALEXANDER’ in common. It is, therefore, unlikely that the relevant Romanian consumer when confronted with the contested mark, will be led to believe that the goods and services identified by that mark may also come from the opponent. It follows that the opponent’s claim for family of marks has to be set aside.
Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Given that the opposition is not well founded under Article 8(1) EUTMR it is unnecessary to examine the evidence of use filed by the opponent, as even if the evidence is examined and the use of the earlier signs is proven, this would not affect the outcome of the present proceedings.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
André Gerd Günther BOSSE | Irina SOTIROVA | Erkki MÜNTER |
According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.