ANT GALIO | Decision 1366873 - Galileo International Technology, LLC v. ANT Software Ltd

Date Published: Sep 28, 2017

OPPOSITION No B 1 366 873

Galileo International Technology, LLC, Braemar Court #2, Deighton Road, St. Michael  BB14017, Barbados (opponent), represented by Boult Wade Tennant, Verulam Gardens, 70 Gray's Inn Road, London WC1X 8BT, United Kingdom (professional representative)

a g a i n s t

ANT Software Ltd, Cambridge Business Park Cowley Road, Cambridge CB4 0WZ, United Kingdom (applicant), represented by Olswang LLP, 90 High Holborn, London  WC1V 6XX, United Kingdom (professional representative).

On 12/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 1 366 873 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 6 270 276. The opposition is based on, inter alia, European Union trade mark registration No 170 167, in relation to which the opponent invoked Article 8(1)(b) and 8(5) EUTMR, earlier well-known mark for ‘GALILEO INTERNATIONAL’, in relation to which the opponent invoked Article 8(2)(c) in connection with Article 8(1)(b) EUTMR, and on the earlier signs used in the course of trade for ‘GALILEO INTERNATIONAL’, in relation to which the opponent invoked Article 8(4) 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 registration No 170 167.

1. The goods and services

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

Class 9:         Electrical and electronic apparatus and instruments; computers, word processors; data processing apparatus; electrical and optical data processing apparatus; apparatus and instruments, all for the retrieval, storage, input, processing and display of data; semiconductor memory apparatus; micro processors; computing apparatus; keyboard apparatus for use with computers; printers for use with computers; computer programmes and computer software; punched (encoded) cards and punched (encoded) tapes, magnetic tapes and discs; disc drives; modems; electrical and electronic communication apparatus; computer communication apparatus; parts and fittings for all the aforesaid goods; all included in Class 9.

Class 39:         Travel services; booking and reservation services for transportation and travel.

Class 41:         Booking and reservation services for entertainment.

Class 42:         Hotel, accommodation and restaurant services; booking and reservation services for hotels, accommodation and restaurants; but expressly excluding the aforesaid services related to accommodation and booking of university residences and for other lodging accommodation to be used by all types of students of all ages for the purpose of attending university.

The contested goods and services are the following:

Class 9:         Software, encoded programmes and firmware for use in electrical, electronic and control apparatus and instruments; software, encoded programmes and firmware for use in apparatus and instruments, all for the transmission, reception and reproduction of sound and/or images, televisions, radios, cellular, technology devices, video and mini-disc recorders, CD and DVD players, personal media players, portable media players, digital music players, digital audio players, set-top boxes, decoders for satellite - and/or terrestrial digital broadcast signals; operating systems (electronic); software, encoded programmes and firmware for use in apparatus and instruments, all for the receiving, transmitting, storage and/or processing of signals and/or data, computer peripheral devices, computer interface devices, microprocessors, web browsers, user interface devices, Internet, intranet and extranet devices; voice-activated devices, voice recognition devices; electrical and electronic household appliances as far as included in class 9; software, encoded programmes and firmware for use in consumer electrical and electronic goods as far as included in class 9; software, encoded programmes and firmware for use in game consoles, office equipment as far as included in class 9; software, encoded programmes and firmware for use in photocopiers, fax machines, scanners, printers, electronic personal organisers; software, encoded programmes and firmware for use in communications apparatus and instruments; vending machines; coin- and counter-freed machines; point-of-sale apparatus and instruments; automotive software, software for engine management systems; computer networking hardware, firmware and software; software, firmware, encoded programmes, downloadable software, data carriers; software, encoded programmes, firmware and downloadable software, all relating to the access and browsing of the Internet, intranets and extranets; software, encoded programmes, firmware and downloadable software, all relating to the sending, receiving and management of emails.

Class 41:         Electronic publishing and distribution services; publishing and distributing audio, video and multimedia content via local and global computer networks.

Class 42:         Design, creation, development, maintenance and up-dating of software, encoded programmes, firmware and downloadable software; programming services; consultancy and advisory services relating to the foregoing; research, design and consultancy services in the multimedia field.

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 9

The contested software, encoded programmes and firmware for use in electrical, electronic and control apparatus and instruments; software, encoded programmes and firmware for use in apparatus and instruments, all for the transmission, reception and reproduction of sound and/or images, televisions, radios, cellular, technology devices, video and mini-disc recorders, CD and DVD players, personal media players, portable media players, digital music players, digital audio players, set-top boxes, decoders for satellite - and/or terrestrial digital broadcast signals; software, encoded programmes and firmware for use in apparatus and instruments, all for the receiving, transmitting, storage and/or processing of signals and/or data, computer peripheral devices, computer interface devices, microprocessors, web browsers, user interface devices, Internet, intranet and extranet devices; software, encoded programmes and firmware for use in consumer electrical and electronic goods as far as included in class 9; software, encoded programmes and firmware for use in game consoles, office equipment as far as included in class 9; software, encoded programmes and firmware for use in photocopiers, fax machines, scanners, printers, electronic personal organisers; software, encoded programmes and firmware for use in communications apparatus and instruments; automotive software, software for engine management systems; computer networking firmware and software; software, firmware, encoded programmes, downloadable software, data carriers; software, encoded programmes, firmware and downloadable software, all relating to the access and browsing of the Internet, intranets and extranets; software, encoded programmes, firmware and downloadable software, all relating to the sending, receiving and management of emails are included in the broad category of the opponent’s computer software in Class 9. These goods are identical.

The contested electrical and electronic household appliances as far as included in class 9; operating systems (electronic); vending machines; coin- and counter-freed machines; point-of-sale apparatus and instruments are included in the broad category of the opponent’s electrical and electronic apparatus and instruments in Class 9. These goods are identical.

The contested voice-activated devices, voice recognition devices; computer networking hardware are included in the broad category of the opponent’s computers in Class 9. Therefore, they are identical.

Contested services in Class 41

The contested electronic publishing and distribution services; publishing and distributing audio, video and multimedia content via local and global computer networks are similar to the opponent’s computer software in Class 9. These goods and services have the same purpose, they target the same public and they could be provided or manufactured by the same kinds of undertakings.

Contested services in Class 42

The contested design, creation, development, maintenance and up-dating of software, encoded programmes, firmware and downloadable software; programming services; consultancy and advisory services relating to the foregoing; research, design and consultancy services in the multimedia field are similar to the opponent’s computer software in Class 9. These goods and services have the same distribution channels, target the same public and are normally provided or manufactured by the same kinds of undertakings.

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 partly directed at the public at large and partly at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to above average, depending on the price, (specialised) nature and conditions of the purchased goods and services. Bearing in mind that some of the goods and services are infrequent purchases of which the price could be quite high, the level of attention of the relevant public is considered to be above average for these goods and services for example electrical and electronic household appliances as far as included in class 9 and electronic publishing and distribution services in Class 41.

3. The signs

GALILEO	ANT GALIO
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 earlier mark ‘GALILEO’ will be perceived by a part of the relevant public as referring to ‘Galileo Galilei. 1564–1642, Italian mathematician, astronomer, and physicist’ (see Collins English Dictionary online). However, for another part of the public, the earlier mark is meaningless. In any case, this word is not descriptive, allusive or otherwise weak with respect to the relevant goods and services. The contested sign is meaningless. Consequently, the verbal elements of both marks are distinctive.

Visually, the signs coincide in the sequence of letters ‘G-A-L-I-*-*-O’ of the earlier mark, which are contained in the second word of the contested sign. However, they differ in the first word of the contested sign ‘ANT’ and in the fifth and sixth letters of the earlier mark ‘L-E’, which are not shared (by the second word) of the contested sign.

Furthermore, the first parts of the conflicting marks do not coincide, ‘GALI-‘ versus ‘ANT’. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually similar to a low 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 /G-A-L-I-*-*-O/, present identically in both signs. Even though the earlier mark is pronounced in four syllables /GA-LI-LE-O/ and the contested sign also /ANT/ /GA-LI-O/, the third syllable of the earlier mark /LE/ and the first syllable of the contested sign /ANT/ are not shared and the marks have different beginnings, where the consumer focuses normally its first attention. The marks also have a different intonation and rhythm. The marks are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the relevant public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the relevant public. For another part of the public, the earlier mark will be perceived as having the meaning as explained above, while the contested sign is meaningless. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

As the signs have been found similar (to a low degree) 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 trade mark is reputed and enjoys a high degree of distinctiveness as result of its long standing and intensive use in all the Member States of the European Union in connection with all the goods and services for which it is registered. This claim 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, 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

The opponent claims that it has used the trade mark ‘GALILEO’, which has now been in use since 1987, in relation to a wide range of goods and services dealing with all aspects of travel and technology. The nature of the goods and services has continually expanded technically-wise. The Galileo Group is one of the four major providers of travel information, services, IT systems and solutions for the travel industry and has developed a global information infrastructure regarding the goods and services. The Galileo group enjoys a substantial percentage of the business in the European Union. It operates in all phases/areas of the provision of information and services to travel and to travellers through all means of communication and IT technology. It operates in 145 countries and holds the number 2 market position in both the US and EMEA and is the number one in both the UK and Italy and the Middle East and South Africa. Over 63.000 travel agencies use the Galileo System and this includes 450 airlines, 83.000 hotel properties, 265 hotel chains and 400+ cruise liners and tour operators. Transactions made via GALILEO software total over 1.1 billion dollars a day and the system takes around 410 million transactions annually and is available in 35 languages. There are over 2.300 experts who use GALILEO technology in over 30 countries and the system is operated in 120 countries worldwide.

The opponent filed, before the deadline of 28/02/2009 to file facts, evidence and arguments, the following evidence:

• A print out containing information concerning the global turnover outside North America and the Caribbean during the years 2001 and 2003. The 2001 figures were produced by Deloitte and Touch. Furthermore, the opponent also includes the 1999-2003 UK revenue figures.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.

Despite mentioning the turnover figures and the UK revenue figures, there is no information at all about the degree of recognition of the mark ‘GALILEO’ and its general position in the market. The opponent has not provided any material with an indication of figures such as the economic growth in the form of for example official annual reports for the trade mark ‘GALILEO’, nor is there any objective indication concerning the volume of sales, the market share of the trade mark or the extent to which the mark has been promoted. The opponent has mentioned that the trade mark had the first position in the market in the UK and Italy, but this has never been attested by any evidence at all, let alone any objective evidence. As a result the evidence does not show the degree of recognition of the trade mark ‘GALILEO’ among the relevant public; nor does it show that the trade mark is known by a significant part of the relevant public. Under these circumstances, the Opposition Division concludes that the opponent has failed to prove that its trade mark has a higher degree of distinctiveness through its use.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning in relation to any of the goods and services at hand 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

A likelihood of confusion (including a likelihood of association) 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.

All the contested goods and services are identical or similar to those of the earlier mark and the degree of attention of the public varies from average to above average.

The signs have been found to be visually and aurally similar to a low degree; conceptually, the marks are not similar or the conceptual aspect does not influence the assessment of the similarity of the signs. The earlier mark has a normal degree of distinctiveness, since the opponent did not prove that the earlier mark enjoyed an enhanced distinctiveness due to extensive use/reputation.

In the present case, the Opposition Division is of the opinion that the low visual and phonetic similarity between the signs is not enough to lead, in any case, to a likelihood of confusion. Although both signs coincide in the sequence of letters ‘G-A-L-I-*-*-O’, the marks still contain significant visual and aural differences.

The marks, taken as a whole, show overall more differences than similarities, in particular at their beginnings, which is an important position, and the minor visual and phonetic similarities are not strong enough to induce the public to believe that the goods and services that are sold or offered under the signs come from the same or from economically-linked companies, even for that part of the public that pays an average degree of attention and is more vulnerable to confusion.

Considering all of the above, the Opposition Division finds that there is no likelihood of confusion on the part of the public, including a likelihood of association. Therefore, the opposition must be rejected as far as based on Article 8(1)(b) EUTMR.

The opponent has also based its opposition on the following earlier trade mark:

• European Union trade mark registration No 2 157 501 for the word mark ‘GALILEO’ for services in Classes 39 and 42.

Since this mark is identical to the one which has been compared, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

SUBSTANTIATION – EARLIER WELL-KNOWN MARK – ARTICLE 8(2)(c) EUTMR in connection with Article 8(1)(b) EUTMR

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 well-known mark within the meaning of Article 8(2)(c) EUTMR the opposing party must provide evidence showing that this mark is well-known in the relevant territory — according to Rule 19(2)(b) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the earlier trade mark on which the opposition is based.

On 27/10/2008 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 28/02/2009.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark. The evidence that was submitted and mentioned above in the section: LIKELIHOOD OF CONFUSION, paragraph d), makes reference to the trade mark ‘GALILEO’ and not to ‘GALILEO INTERNATIONAL’.

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.

As the opposition is rejected as far as it is based on Article 8(1)(b) EUTMR, the Opposition Division will now examine the opposition on the basis of the other ground invoked, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

The opponent claims reputation for European Union trade mark registrations No 170 167 for goods and services in Classes 9, 41 and 42 and No 2 157 501 for services in Classes 39 and 42.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist/Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

1. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. As can be seen from the above, the Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

As the opposition is rejected as far as it is based on Article 8(5) EUTMR, the Opposition Division will now examine the opposition on the basis of the other ground invoked, namely Article 8(4) EUTMR.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

The opponent claimed Article 8(4) EUTMR in respect of the earlier signs used in the course of trade for ‘GALILEO INTERNATIONAL’ in Denmark, Germany, Greece, Spain, France, Ireland, Italy, Austria, Portugal, Finland, Sweden and the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

1. The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted 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.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

However, as the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

On 27/10/2008, the opponent was given two months, commencing after the ending of the cooling-off period, to substantiate its opposition. This time limit expired on 28/02/2009.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked by the opponent. The opponent did not submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in each of the Member States mentioned by the opponent. It is not sufficient to make a general reference to the national legislation, which is listed merely for information purposes in the ‘Table on National Rights that constitute “earlier rights” in the sense of Article 8(4) EUTMR’ of the Office’s Guidelines Concerning Opposition under Article 8(4) EUTMR.

Therefore, the opposition is not well founded under Article 8(4) EUTMR.

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

Saida CRABBE

Chantal VAN RIEL

Inés GARCÍA LLEDÓ

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.