cashMAX | Decision 2786161
Date Published: Sep 22, 2017
OPPOSITION No B 2 786 161
Provident Financial plc, No. 1 Godwin Street, Bradford BD1 2SU, United Kingdom (opponent), represented by Walker Morris LLP, Kings Court 12 King Street, Leeds, West Yorkshire LS1 2HL, United Kingdom (professional representative)
a g a i n s t
South Automation Int. GmbH, Waldecker Str. 6, 64546 Mörfelden Walldorf, Germany (applicant), represented by Jan-Alexander Fortmeyer, Zeppelinallee 21 c/o Landgraf & Schneider, 60325 Frankfurt am Main, Germany (professional representative).
On 05/09/2017, the Opposition Division takes the following
DECISION:
1. The applicant’s request for restitutio in integrum is rejected.
2. Opposition No B 2 786 161 is partially upheld, namely for the following contested goods and services:
Class 9: Coin counting or sorting machines; automated bank note sorting machines; apparatus for checking the authenticity of banknotes; automated teller machines [ATM]; money sorting apparatus; money counting and sorting machines; money counting apparatus; computer programmes relating to financial matters; currency authentication apparatus and equipment.
Class 36: Automated telling machine services; rental of money counting and sorting machines; money exchange and transfer; provision of funds; rental of cash dispensers or automated-teller machines; provision of cash dispenser facilities for money deposit; provision of cash dispenser facilities for money withdrawal; numismatic appraisal.
3. European Union trade mark application No 15 056 419 is rejected for all the above goods and services. It may proceed for the remaining goods in Class 9 and the non-contested goods and services in Classes 7 and 42.
4. Each party bears its own costs.
REASONS:
The opponent filed an opposition against some of the goods and services of European Union trade mark application No 15 056 419 for the figurative sign , namely against all the goods and services in Classes 9 and 36. The opposition is based on European Union trade mark registration No 10 219 624 for the word mark ‘CASHMAX’. The opponent invoked Article 8(1)(b) EUTMR.
RESTITUTIO IN INTEGRUM
On 28/02/2017, the Opposition Division forwarded the opponent’s further facts, evidence and arguments in support of the opposition to the applicant and invited it to file its observations in reply on or before 05/05/2017. However, the applicant did not submit any observations in reply on or before this deadline.
On 23/05/2017, the Opposition Division informed both parties that, as the applicant did not file any observations in reply, the Office will rule on the opposition on the basis of the evidence before it, and that no observations could be submitted anymore.
On 24/05/2017, the applicant submitted a letter with an attachment, consisting of a 10-page-document. According to the applicant this attachment, in the form of some observations and mentioning the date of 18/04/2017, was sent on 18/04/2017 to EUIPO and was not taken into account. The applicant also indicated that the letter could have not reached EUIPO, possibly because it was lost by post.
On 02/06/2017, the Opposition Division informed the applicant again that the Office did not receive any observations from it before the expiration of the time limit of 05/05/2017.
On 19/06/2017, the applicant filed a request for restitutio in integrum in relation to the time limit for submitting its observations in reply and asked that the Office take into consideration the documents forwarded on 18/04/2017, that were sent again with another letter on 24/05/2017, as set out before.
The applicant explains that the attached/enclosed letter, dated 18/04/2017, was sent via ordinary mail/post on that same day, together with a printout of the applicant’s brochure/catalogue. This request was accompanied by an attachment from which can only be inferred that there exists a letter containing the date of 18/04/2017, but not that this letter was actually submitted to the post office for its further distribution, since it does not contain any stamp or signature of the respective post office.
According to Article 81(1) EUTMR, any party to proceedings before the Office who, in spite of all due care required by the circumstances having been taken, was unable to comply with a time limit vis-à-vis the Office shall, upon application, have its rights re-established if the non-observance in question has the direct consequence of causing the loss of any right or means of redress.
According to Article 81(2) EUTMR, the application must be filed in writing within two months of the removal of the cause of non-compliance with the time limit. The omitted act must be completed within this period. The application shall only be admissible within the year immediately following the expiry of the unobserved time limit.
According to Article 81(3) EUTMR, the application must state the grounds on which it is based and must set out the facts on which it relies. It shall not be deemed to be filed until the fee for re-establishment of rights has been paid.
a) On payment of the fee for the application for restitutio in integrum
In accordance with Article 81(3) EUTMR, the application for restitutio in integrum is deemed to be filed once the fee for re-establishment of rights has been paid.
The fee must be paid within two months of the removal of the cause of non-compliance and not later than one year after expiry of the unobserved time limit.
The application for restitutio in integrum was received on 19/06/2017. In the same application, the applicant mentions that the fee has been transferred to EUIPO. This fee reached the Office on 20/06/2017. The application for restitutio in integrum is, therefore, deemed to have been filed on 20/06/2017.
b) The admissibility of the request for restitutio in integrum
Article 81(2) EUTMR requires that a request for restitutio in integrum be submitted within two months from the removal of the cause of non-compliance with the time limit and within the year immediately following the expiry of the unobserved time limit, which in the present case corresponds to the applicant’s time limit to submit its observations, which ended on 05/05/2017.
In the present case, the cause of non-compliance has to be considered as removed on 23/05/2017, when the Office officially informed the applicant that no observations were filed within the prescribed time limit. Consequently, the two-month time limit to file a request for restitutio in integrum expires on 23/07/2017.
The applicant filed a request for restitutio in integrum on 19/06/2017, but since the fee reached the Office on 20/06/2017, the application for restitutio in integrum is deemed to be filed on 20/06/2017. That is less than two months after the removal of the cause of non-compliance with the time limit and within the year following the expiry of the original deadline which is due to expire on 05/05/2018.
Finally, as required by Article 81(2) EUTMR, the omitted act, i.e. submitting observations in reply by the applicant within the prescribed period, is deemed to have been completed within the two-month period beginning on 23/05/2017, as the letter, including the applicant’s observations, was received by the Office on 24/05/2017.
The application does not refer to a time limit excluded from restitutio in integrum pursuant to Article 81(5) EUTMR.
Consequently, the application for restitutio in integrum is deemed admissible.
c) On the substance of the request for restitutio in integrum
Under the terms of Article 81(1) EUTMR, for an application for restitutio in integrum to be granted, the following requirements must be met:
i. the person requesting the restitutio in integrum has been unable to comply with a time limit vis-à-vis the Office;
ii. the non-observance of the time limit has the direct consequence, by virtue of the provisions of the Regulation, of causing the loss of any right or means of redress; and
iii. the time limit has not been observed, in spite of all due care required by the circumstances having been taken.
i. Non-observance of a time limit
One of the basic requirements for a request for restitutio in integrum to be granted is that the party to the proceedings “...was unable to observe a time limit vis-à-vis the Office...”.
The applicant was given until 05/05/2017 to submit its observations in reply. The applicant filed documents, comprised of a 10-page document in the form of observations, only reaching the Office on 24/05/2017, that is after the expiry of the applicant’s time limit.
It follows from the above that the applicant was not able to observe a time-limit vis-à-vis the Office.
ii. Loss of right
Another basic requirement for an application for restitutio in integrum to be granted is that the non-observance of a time limit has caused a loss of right.
In these proceedings, due to not complying with the time limit given by the Office, the applicant has lost the right to file its observations in reply to the opposition and so to be heard in the course of the opposition proceedings. In practice, this means that the applicant’s observations will not be taken into account in the present proceedings and that the applicant has not been able to defend itself properly.
iii. Due care
In order for the restitutio to be granted, the party must have taken all due care required by the circumstances to observe the time limit.
Restitutio implies a duty of diligence for the parties, which extends to the duly authorized professional representatives. The standard of due care required of a representative to avoid the loss of rights due to a missed deadline will generally be higher than for a party to the proceedings before the Office. The representative must maintain a system of internal control and monitoring of time limits that generally excludes the involuntary non-observance of time limits. It follows that restitutio in integrum may be granted only in the case of exceptional events, which cannot be predicted from experience (13/05/20009, T-136/08, Aurelia, EU:T:2009:155, § 26).
Therefore, the Opposition Division has to ascertain whether the applicant’s representative took “all due care required by the circumstances” in order to avoid a loss of rights.
In its request for restitutio in integrum, the applicant’s representative only mentions the following: “The also attached / enclosed letter dated 18.04.2017 was sent on that same day via normal Mail together with a printout of the applicant’s brochure / catalog. The dispatch of the letter has clearly been noted here. There is no reason to see why the writing should not have reached the EUIPO.” On the attached letter the date of 18/04/2017 can be seen and the name of the city FRANKFURT (in which it was probably written).
Having examined the applicant’s request and explanation, the Opposition Division finds that the reasons set forth are not sufficient under the terms of Article 81(1) EUTMR and it is concluded that all due care has not been taken to comply with the deadline.
On 28/02/2017, the applicant was given a deadline of 05/05/2017 to submit its observations in reply. Therefore, the applicant and its representative were granted sufficient time to prepare and file the documents well before the expiration of the set deadline.
In opposition proceedings, it is up to the party to decide how to send its observations to the Office. This includes sending the observations as a letter. When sending a letter, the party or its representative must, however, take certain measures for the purposes of due care to ensure that its letter arrives on time. Postal delivery companies, for instance, offer particular services which give the sender a high degree of control over the timely arrival of its letter or even assuring that its letter reaches its destination, for example by using delivery tracking services. In the present case, the applicant’s representative chose to send the written submission as a regular letter. In this regard, the Opposition Division points out that none of the observations, as sent in the attachment with the letter of 24/05/2017, reached the Office. Anyway, the parties involved are, of course, also free to use this type of delivery service. They must simply consider the risks involved in posting submissions as regular letters, in particular the fact that the sender often cannot guarantee that the letter will arrive on time, unless the party involved checks with the Office in good time, or even the fact that a letter reaches its destination without any tracking system or any other guarantee, such as sending the letter by certified mail. In any case, the representative should at least have knowledge of and comply with the specific postal times and (tracking) systems before sending an item by regular post. Furthermore, postal times do, in Europe, in fact, differ and can depend on various factors, in particular, for example, on the delivery company and the nature of the item of post.
Nevertheless, in the case at hand the applicant or, to be more precise, its representative, did not provide any evidence corroborating its claim that the observations were sent on time and did also not take all due care in the opinion of the Opposition Division. According to the applicant’s representative, the observations were sent via ordinary mail, but it only filed an attachment consisting of a letter that was dated. The Opposition Division can only see that a letter was written on that date, but it is not evident if it was also posted. Furthermore, the applicant’s representative could at least have checked with the Office before the expiration of the time limit whether the letter with observations was received as to properly ensure that a loss of right, due to the non-observance of a time limit, was excluded.
In view of this, the Opposition Division considers that the applicant’s representative did not show all due care in ensuring the transmission or delivery of the observations in reply to the opponent’s submissions within the set time limit. Likewise, it has not been proven that there were exceptional circumstances and unforeseeable events which were beyond the control of the applicant’s representative, since the latter should and could have put in place a system capable of detecting and correcting any foreseeable error in the transmission of the documents.
d) Conclusion
Taking into account the evidence and explanation given by the applicant’s representative, the Opposition Division concludes that the applicant’s representative did not show that there were exceptional circumstances which were beyond its control and that it had taken “all due care” required by the circumstances in order to avoid a loss of right. Therefore, the Opposition Division rejects the request for restitutio in integrum and will not take into account the documents filed on 24/05/2017.
The purpose of Article 81 EUTMR is to provide applicants and EUTM proprietors with the possibility to remedy an omission due to exceptional and unforeseeable circumstances, but not to remedy simple negligence or errors on the part of the applicant or its representative. This is an exceptional institution and the conditions for its application have to be construed strictly.
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:
Class 9: Magnetic encoded cards; credit cards with a magnetic strip; cards for use in relation to transfer of funds; encoded and/or magnetic debit cards; security access control systems for accessing on-line banking services; electronic apparatus for processing bank card transactions.
Class 16: Printed matter; books; periodical publications; account books, accounting sheets, printed forms; binders (stationery), document files; paper articles and cardboard articles; and articles of stationery.
Class 36: Financial services; banking services; loan and credit services; hire purchase and lease purchase finance; charge card and credit card services; debit card services; cash card services; debt collection and debt factoring services; instalment loan financing, electronic funds transfer and cash dispensing services; issuing statements of accounts; savings and insurance services; debt management services; bill payment services; information and advisory services relating to all the aforesaid.
The contested goods and services are the following:
Class 9: Coin counting or sorting machines; automated bank note sorting machines; apparatus for checking the authenticity of banknotes; automated teller machines [ATM]; money sorting apparatus; money counting and sorting machines; money counting apparatus; coin-operated mechanisms; computer programmes relating to financial matters; currency authentication apparatus and equipment; mechanisms for counter-operated apparatus.
Class 36: Automated telling machine services; rental of money counting and sorting machines; money exchange and transfer; provision of funds; rental of cash dispensers or automated-teller machines; provision of cash dispenser facilities for money deposit; provision of cash dispenser facilities for money withdrawal; numismatic appraisal.
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 computer programmes relating to financial matters include, as a broader category, the opponent’s security access control systems for accessing on-line banking services in Class 9, the latter being essentially a software-based solution. The Opposition Division cannot ex officio dissect the applicant’s broad category and, also because these goods overlap with each other, these are considered identical.
The contested coin counting or sorting machines; automated bank note sorting machines; apparatus for checking the authenticity of banknotes; automated teller machines [ATM]; money sorting apparatus; money counting and sorting machines; money counting apparatus; currency authentication apparatus and equipment are similar to, for example, the opponent’s electronic apparatus for processing bank card transactions in Class 9. These goods have a similar purpose, target the same public, are offered through the same distribution channels and could be manufactured by the same kinds of undertakings.
When comparing the contested coin-operated mechanisms; mechanisms for counter-operated apparatus with the opponent’s goods and services in Classes 9, 16 and 36, the Opposition Division finds them dissimilar. In this regard it disagrees with the opponent, in its observations, where it mentions that all the goods and services are identical or similar to those of the earlier mark, without providing any further arguments or evidence in this regard. When comparing, the contested goods, which are basically vending machines (a machine from which you can get things such as cigarettes, chocolate, or coffee by putting in money and pressing a button (see Collins English Dictionary online)) and their mechanisms, with the opponent’s goods in Class 9, which are mainly encoded magnetic cards (used in the field of banking) and other systems in that specific field, in Class 16, which are mainly printed matter, paper and cardboard articles and articles of stationery, and the opponent’s services in Class 36, mainly services in the financial and banking fields, these have no relevant points of contact. They have a different nature and purpose. These goods and services are not complementary nor in competition. Furthermore, they target another public, have different distribution channels and are normally not produced or provided by the same kinds of undertakings.
Contested services in Class 36
The contested automated telling machine services; rental of money counting and sorting machines; rental of cash dispensers or automated-teller machines; provision of cash dispenser facilities for money deposit; provision of cash dispenser facilities for money withdrawal are included in the broad category of the opponent’s cash dispensing services in Class 36. Therefore, they are identical.
The contested money exchange and transfer; provision of funds; numismatic appraisal are included in the broad category of the opponent’s financial services in Class 36. Therefore, they are identical.
- 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 services found to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise, for example in the banking and financial sector, while the goods found to be identical or similar are rather directed at a professional public. Bearing in mind that the goods are very specific ones that are infrequently obtained for a very specific purpose, and that the services may be offered for a relatively high price and they may have important financial consequences for their users, the level of attention of the relevant public is considered to be rather high.
- The signs
CASHMAX | |
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 is a word mark consisting of the word ‘CASHMAX’. This means not only that it does not claim any particular figurative element or appearance, but also that differences in the use of lower or upper case letters are immaterial, even if lower case and upper case letters alternate.
The contested sign is a figurative mark consisting of the word ‘cashMAX’, written in a slightly fancy typeface, of which the final letters ‘MAX’ appear in a bolder upper case typeface with the letter ‘X’ partially in red and the initial letters ‘cash’ are written in lower case. On the left side appears a figurative element in the form of a red square with round corners and some white curved and straight lines inside of it.
The contested sign has no element which could be considered clearly more dominant (visually eye-catching). It is considered that all the elements have more or less a comparable visual impact and that neither of the elements can be held clearly more dominant than the others.
Regarding the earlier mark and the contested sign, the Court has held that, although the average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57). With respect to the contested sign, the element ‘cash’ is visually separated from the remaining element, because of the thinner typeface when compared to the element that is following. Furthermore, in the case of the earlier mark, even though the element ‘CASH’ is not visually separated from the remaining element, consumers naturally look for a meaning when reading a word. Consequently, the relevant public will perceive both signs as combinations of two meaningful words, ‘CASH’ and ‘MAX’.
The word ‘CASH’ refers to ‘money in the form of notes and coins rather than cheques; money, especially money which is immediately available (see Collins English Dictionary online). The element ‘MAX’, contained in both marks, is a commonly used abbreviation for ‘maximum’ denoting a particular positive or appealing quality or function and means ‘the most significant, highest, furthest, or greatest thing’ (see Collins English Dictionary online).
For the sake of completeness, the Opposition Division points out that, for the targeted consumers who consist not only of a rather specific professional public, but also of the general public whose level of understanding of English is assumed not to be so high, the elements ‘CASH’ and ‘MAX’ are fairly commonplace and understandable terms, even for non-English speakers, particularly for financial-related goods in Class 9 and financial services in Class 36. Consequently, all the elements ‘CASH’ and ‘MAX’, as explained above, and their combinations ‘CASHMAX’/’cashMAX’ will be understood throughout the whole European Union as meaning ‘maximum of immediately available money’. Considering this and bearing in mind that the goods and services in question relate to different types of money sorting, counting and authenticating apparatus, financial software and apparatus for processing card transactions in Class 9, as well as various kinds of cash dispensing and financial services in Class 36, these elements and their combination are deemed weak.
For all the reasons mentioned before, the earlier mark is composed of two weak elements, however, the combination of those elements gives the earlier mark as a whole at least a minimum degree of distinctiveness in relation to the goods and services at stake.
Furthermore, the Opposition Division points out the following, which is applicable here: When dealing with the distinctiveness of the earlier mark as a whole, the latter should always be considered to have at least a minimum degree of inherent
distinctiveness. Earlier marks, whether EUTMs or national marks, enjoy a
‘presumption of validity’. The Court made it clear, in its judgment of 24/05/2012,
C-196/11, F1-Live, EU:C:2012:314, § 40-41, that ‘in proceedings opposing the
registration of a European Union trade mark, the validity of national trade marks may
not be called into question’. The Court added that ‘it should be noted that the
characterisation of a sign as descriptive or generic is equivalent to denying its
distinctive character’.
Visually, the marks coincide in the sequence of letters ‘C-A-S-H-M-A-X’, with the only difference that in the contested sign these letters appear in a slightly fancy typeface and in different colours. On the other hand, the contested sign contains a figurative element, as pointed out above, which is not shared by the earlier mark.
When signs consist of both verbal and figurative components (as does the contested sign in the present case), in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Consequently, the figurative element in the contested sign has less impact.
Regarding the slightly fancy typeface in which the verbal element of the contested sign is written, this stylisation must be considered not that elaborate or sophisticated and it will not lead the consumer’s attention away from the verbal element it seems to embellish.
Therefore, the marks are, visually, similar to a high degree.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the marks coincides in the sound of the word /CASHMAX/, present identically in both signs. With respect to the figurative element of the contested sign, it is rather unlikely that the public will see any specific letter or letter sequence therein given that it contains an abstract combination of curvy and straight lines. Therefore, the signs are, phonetically, identical.
Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As both signs will be perceived as having the same meaning, they are, conceptually, identical.
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 mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as minimal.
- 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.
The goods and services at issue have been found to be partly identical or similar and partly dissimilar, while the level of attention of both, the general and more professional public, is rather high. The earlier mark has at least a minimum degree of inherent distinctiveness.
The marks have been found visually similar to a high degree and aurally and conceptually they are even identical.
In addition, account should also be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks and must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers with a high degree of attention need to rely on the their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).
Therefore, even though taking into account that the attention of the relevant public may be higher, especially given the phonetic and conceptual identity and the high visual similarity between the signs, likelihood of confusion cannot safely be excluded.
Regarding the differences in the slightly fancy typeface, the figurative element and the colours used in the contested sign, it is conceivable that the relevant consumer will perceive the contested sign as a sub-brand of the opponent, being a variation of the earlier mark. It is quite possible for an undertaking to use sub-brands, that is to say signs that derive from a principal mark and which share with it a common element.
It is also important to point out that a coincidence in an element with a low degree of distinctiveness will not normally on its own lead to likelihood of confusion. However, there may be likelihood of confusion if the other components are of a lower (or equally low) degree of distinctiveness or are of insignificant visual impact and the overall impression of the marks is similar. There may also be likelihood of confusion if the overall impression of the marks is highly similar or identical. In the present case, the other component, namely the figurative element in the contested sign, is considered to have less impact, as pointed out above, as consumers usually focus more on the verbal element. Furthermore, the overall impression of the marks is also highly similar from a visual point of view and phonetically and conceptually it is identical.
Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 10 219 624.
It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
For the sake of completeness, the Opposition Division points out that if the applicant’s observations had been taken into account, they would not have changed the outcome of this decision. The Opposition Division puts forward that the comparison of goods and services must be based on the wording used in the lists of goods and/or services in question, that is, for which the trade mark is registered or for which registration is sought. The actual or intended use of the goods and services not stipulated in the list of goods and/or services is not relevant for the examination (16/06/2010, T 487/08, ‘Kremezin’, EU:T:2010:237, § 71). It is not important how the goods are actually used, their prices, availability, and so on. Consequently, the applicant’s argument had anyway to be set aside.
COSTS
According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.
Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.
The Opposition Division
Martin MITURA | 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.