ConsumerNext | Decision 2435447 - Next Retail Limited v. Klaus Hagen

Date Published: Oct 1, 2017

OPPOSITION No B 2 435 447

Next Retail Limited, Desford Road, Enderby, Leicester, Leicestershire LE19 4AT, United Kingdom (opponent), represented by Marks & Clerk LLP, 90 Long Acre, London WC2E 9RA, United Kingdom (professional representative)

a g a i n s t

Klaus Hagen, Wesuweer Straße 32b, 49733 Haren, Germany (applicant), represented by Schulte & Schulte Hauptstr. 2, 45219 Essen, Germany (professional representative).

On 12/06/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 435 447 is upheld for all the contested goods and services, namely

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 35: Retailing, wholesaling, online and mail order in relation to foodstuffs, beverages.

2. European Union trade mark application No 13 024 955 is rejected for all the contested goods and services. It may proceed for the remaining not contested goods and services.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 024 955 namely against all the goods in Class 32 and some of the services in Class 35. The opposition is based on European Union trade mark registration No 1 620 434 for the word mark ‘NEXT’, European Union trade mark registration No 5 978 549 for the word mark ‘NEXT’, European Union trade mark registration No 5 848 131 for the word mark ‘NEXT DIRECTORY’, European Union trade mark registration No 11 570 959 for the word mark the ’NEXT’, United Kingdom trade mark registration No 2 371 317 for the word mark ‘NEXT’, United Kingdom trade mark registration No 2 453 621 for the figurative mark , Irish trade mark registration No 228 242 for the word mark the ’NEXT’, well-known word trade mark ‘NEXT’ in Czech Republic, Denmark, Germany, Cyprus, Malta, Poland and the United Kingdom. The opponent invoked Article 8(1)(b) EUTMR, Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR and 8(5) EUTMR.

PRELIMINARY REMARK

The opposition is based on more than one earlier trade mark. However, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 5 978 549, for which no proof of use has been requested and in relation to the opponent’s European Union trade mark registration No 1 620 434.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the following trade marks on which the opposition is based: European Union trade mark registrations No 1 620 434 and No 5 848 131, United Kingdom trade mark registrations No 2 371 317 and No 2 453 621, Irish trade mark registration No 228 242. Considering the preliminary remark above, the Opposition Division will examine this request only in relation to the European Union trade mark registration No 1 620 434.

The request was submitted in due time and is admissible as the earlier trade mark cited in the previous paragraph was registered more than five years prior to the relevant date mentioned above.

The contested application was published on 08/08/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union, from 08/08/2009 to 07/08/2014 inclusive.

Furthermore, the evidence must show use of the trade mark for the services on which the opposition is based, namely the following:

Class 35: Retail services in the fields of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras; the bringing together for the benefit of others of a variety of goods including the aforesaid products; enabling customers to conveniently view and purchase these goods; services for the retail of products through high street stores, via mail order catalogues or over the Internet; providing on-line retail store services in the field of the aforesaid goods; information and advice in relation to retail services relating to the aforesaid goods; business management consultancy including giving assistance and advice in the establishment of retail stores in the field of the aforesaid goods; on-line trading services, trading services in respect of a wide range of goods; excluding modelling agency services.

Class 42: Technical consultancy and advising in the establishment of retail stores in the field of clothing, headgear and footwear, jewellery, fashion accessories, household articles, towels, bedding, textiles, furniture, lighting apparatus, toys, electrical products, cosmetics, non-medicated toilet preparations, eye ware, carrying cases, handbags and all manner of bags, kitchenware, paints, wallpaper and other products for decorating the home, pictures, picture frames, electrical products, cameras.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 05/08/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 10/10/2015 to submit evidence of use of the earlier trade mark. This deadline was extended upon request by the opponent until 10/12/2015. On 10/12/2015 the opponent submitted the requested evidence of use of which however one part was illegible. Therefore, the Office requested the opponent to retransmit the illegible part of the evidence until 28/01/2016. On 27/01/2016, within the time limit, the opponent re-submitted the evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

Extract from the opponent’s website http://nextplc.co.uk, dated on 18/03/2015 and providing overview of the opponent’s history.
Extract from the opponent’s website http://nextplc.co.uk, dated on 08/06/2012 and providing overview about the NEXT brand, opponent’s business activities, strategies and objectives.
Store address list from 05/02/2013, including several hundreds of addresses of the opponent’s stores in the United Kingdom. A screenshot of the opponent’s website http://stores.next.co.uk/next/locator/stores/country/United+Kingdom from 30/03/2015, including several hundreds of addresses of the stores in the UK and a photo of a store sign bearing the name ‘NEXT HOME’.
Extracts from the publication ‘NEXT Annual report and accounts’. According to this publication, for example, there were 541 stores in 2014 in the UK, the revenue (excluding VAT) in relation to NEXT retail services was 2227,6 million of pounds in January 2014, 2190,9 million of pounds in January 2013 whereas the profit and EPS (earnings per share) in relation to NEXT retail services was 347,7 million pounds in January 2014, 331, million pounds in January 2013. This set of evidence includes also sales numbers in pounds for NEXT physical stores between 2009 and 2013 in Czech Republic, Slovakia, Hungary, Germany, Sweden, Denmark as well as the numbers for franchise sales in the EU. These numbers are in pounds and for the time period between 2009 and 2013.
Extracts from different magazines e.g. ‘Easy living’ from March 2013, ‘Style at Home’ from April 2013, RetailWeek from August 2011 with the reference to the trade mark ‘NEXT’ mainly in relation to retail of homeware and furniture, including photos of the stores.
A copy of an Article published in ‘the BUSINESS’ from June 2011 with the title ‘Our Next move will be into DIY’ starting the article with the following sentence: ‘Retail giant Next is making a move into the DIY and gardening market.’.
Extract from magazines such as ‘new!’ from April 2012, ‘LOOK’ from July 2013 including photos of different items of clothing whereas the mark ‘NEXT’ is next to them as well as the relevant price (in pounds).
Extracts from the catalogues ‘Next Directory Christmas’ from 2009, 2010, 2011, 2012 offering different clothing, homeware, electronic, food products (from the latter for example spices, sauces, vinegar, olive oil, pasta, sweets), including information on how to proceed with the orders and the relevant contact details. Some of the products are bearing the trade mark ‘NEXT’ some are bearing other brands like ‘Toshiba’, ‘Timberland’, ‘Adidas’. Photos of the relevant products, their brief description in English, reference numbers and price in pounds are included.
A few dispatch notices for different items of clothing from Next England to customers in Turkey, Czech Republic from October 2012.
Summary of net sales (VAT exclusive) for goods bearing ‘NEXT’ trade mark in all EU member states except the United Kingdom.
Summary of sale of the goods bearing the trade mark ‘NEXT’ in the UK. The numbers include the sales from the NEXT Directory Catalogue and online sales as well as the sales from the UK stores for the period between 2009 and 2013.
Extracts from ‘Global 500’ from 2013, 2010, 2008 listing the world’s top brands in the respective years and including ‘NEXT’. According to the Brand-Finance® Brandirectory, available on-line at www.brandirectory.com, NEXT is one of the top 500 world’s most valuable brands. The ranking of the brand is as follows:

2007	469
2008	469
2009	409
2010	488
2011	-
2012	460
2013	449

Extracts from the publication ‘Best retail brands 2012’ compiled by Interbrands where the brand NEXT is listed as the 5th most valuable U.K. retail brand in 2012.
Market shares in relation to sale of Women’s, Men’s & Children’s wear under the brand NEXT in 2013 provided by Kantar Worldpanel.
Market shares in relation to sales of homeware and furniture under the brand NEXT in the UK for the period of time between 2009 and 2014, provided by Verdict.
Copies of the labels for different clothing articles, some of them include price in pounds. According to the opponent these samples are of labels used in the United Kingdom and Republic of Ireland.
Extracts from the opponent’s website www.next.co.uk from 08/07/2010 including photos of e.g. NEXT HOME stores in Cambridge, Stafford, of the NEXT stores from Westfield, in London. According to the information on the website, these photos are from March, June 2010.
Screenshots from the opponent’s Facebook page from 2013, featuring information on the various NEXT and third party branded products and services. According to the opponent the website had 1 576 758 follower in December 2015.
Copy of an article informing i.a. that the opponent’s group of companies was the official clothing and homeware supplier to the London 2012 Olympic and Paralympic Games and provided outfits for Team GB for the opening and closing ceremonies.
Extract from the opponent’s website www.next.co.uk showing various territories where the opponent provides its on-line retail services. According to the opponent, it serves customers in around 70 countries outside the United Kingdom.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

Place of use

The evidence must show that the earlier mark has been genuinely used in the European Union. The documents submitted show that the place of use is mostly United Kingdom. This can be inferred from the language of the documents submitted as well as from the addresses and the currency mentioned in the orders, screenshots from the websites and catalogues.

Time of use

A substantial part of the evidence is dated within the relevant period. Although some of the evidence, for instance the photos of the labels are undated, it has to be noted that, when assessed in its entirety the evidence contains sufficient proof that the trade mark ‘NEXT’ has been used in the relevant period.

Nature of use

In the context of Rule 22(3) EUTMIR, the expression ‘nature of use’ includes evidence of the use of the sign as a trade mark in the course of trade, of the use of the mark as registered, or of a variation thereof according to Article 15(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered.

According to Article 15(1), second subparagraph, point (a) EUTMR, the following shall also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 42(2) and (3) EUTMR, Article 15 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

In the present case, the signs depicted in the evidence are NEXT, NEXT HOME, NEXT DIRECTORY, NEXT GARDEN. The descriptive character of the words ‘home’, ‘directory’ and ‘garden’ in the relevant territory and in relation to the major part of the relevant goods and services is without any doubt. Hence the addition of these words to the word ‘NEXT’ does not alter its distinctive character.

In view of the above, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of Article 15(1), second subparagraph, point (a) EUTMR.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The documents filed, in particular the catalogues, the market shares, the articles and annual reports provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration and the frequency of use.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

Taking into account the evidence in its entirety, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory. This is mainly due to the fact that the opponent provided extracts from the annual reports showing the turnover figures, catalogues showing that the mark is clearly used in relation to retails services, the articles published by independent sources mentioning the mark ‘NEXT’ in relation to retail services, market shares originating from independent sources. It is true that the opponent did not provide many invoices; however, the few invoices submitted confirmed that the opponent is indeed active in the retailing field.

Moreover, the submitted catalogues, which were intended for end consumers, contained specific information concerning the goods offered for sale under the trade mark ‘NEXT’, their prices and the way in which they were marketed in the United Kingdom. In the light of the telephone and fax numbers and postal and Internet addresses given for mail order purchasing and the specific information relating to a very large number of shops offering the goods at issue in the United Kingdom, it is clear that the opponent is selling a variety of products under the trade mark ‘NEXT’ to end consumers. That the opponent is a big retailer is confirmed by the information published in several newspapers and in Internet as well as from the magazines submitted, which includes photos of the products and information about their price and a reference to the opponent when informing where to buy them.

Hence, all the submitted evidence in its entirety provide the Opposition Division with the sufficient information regarding the commercial activities of the opponent throughout the relevant period and proves that use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the services covered by the earlier trade mark.

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

According to case-law, when applying the abovementioned provision the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub-categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub-category or sub-categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub-categories.

(14/07/2005, T-126/03, Aladin, EU:T:2005:288).

In the present case, the evidence shows genuine use of the earlier trade mark for:

The remaining services in Class 35 as well as in Class 42 of the European Union trade mark registration No 1 620 434 are either not mentioned at all in the submitted evidence or the evidence is not sufficient.

Bearing in mind the foregoing, the Opposition Division will consider only the abovementioned services of the earlier European Union trade mark registration No 1 620 434 in its further examination of the opposition.

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, and in case of the European Union trade mark registration No 1 620 434 for which use has been proven, are the following:

European Union trade mark registration No 5 978 549

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; flavoured drink mixes.

European Union trade mark registration No 1 620 434

The contested goods and services are the following:

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; fruit beverages and fruit juices; syrups and other preparations for making beverages.

Class 35: Retailing, wholesaling, online and mail order in relation to foodstuffs, beverages.

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 32

Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages are identically contained in both lists of goods (including synonyms).

Contested services in Class 35

The contested retailing in relation to foodstuffs, beverages are included in the broad category, or overlap with the opponent’s services for the retail of products through high street stores, via mail order catalogues or over the Internet. Therefore, they are identical.

The contested online and mail order in relation to foodstuffs, beverages are included in the broad category of the opponent’s services for the retail of products via mail order catalogues or over the Internet. Therefore, they are identical.

The contested wholesaling in relation to foodstuffs, beverages are considered similar to the opponent’s services for the retail of products through high street stores, via mail order catalogues or over the Internet. Wholesaling is selling goods to other undertakings (retailers) which then sell the goods to end consumers. Even though the relevant public and distribution channels are different, the retail services and the wholesale services have the same nature and purpose and they are in general complementary to each other. Moreover, wholesalers sometimes also provide retail services and thus, the commercial origin of these services can be the same.

Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar are directed at the public at large and in case of services in Class 35 also at business customers with specific professional knowledge or expertise.

The degree of attention is average in relation to the goods in Class 32. Regarding the services in Class 35, the degree of attention may vary from average to high, depending on the price, frequency, terms and conditions of the provided services (e.g. in case of wholesaling directed at professionals, the degree of attention will be higher).

The signs

ConsumerNext

Earlier trade marks

Contested sign

The relevant territory is European Union.

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

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

The common element ‘NEXT’ as well as the element ‘Consumer’ of the contested mark is meaningful in certain territories, for example, in those countries where English is spoken and understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier marks as well as the contested mark are word marks. In case of word marks it is irrelevant whether they are written in lower or upper case letters or in a combination thereof since it is the word as such that is protected and not its written form.

The element ‘NEXT’, present in all marks, means ‘being the first one after the present one or after the one just mentioned, or being the first after the present moment’ (Cambridge Dictionaries Online). It does not have any immediate conceptual relation to the goods and services in question. As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is considered distinctive, in all marks concerned.

This element will also be understood as such in the contested sign. Although the average consumer normally perceives a mark as a whole and does 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 known to them (judgment of 12/11/2008, T-281/07, Ecoblue, EU:T:2008:489, § 30).

Therefore, the relevant consumer is will recognize two verbal elements in the contested sign, the word ‘CONSUMER’ and the word ‘NEXT’.

The element ‘CONSUMER’ stands for, inter alia: a person who purchases goods and services for his own personal needs; a person or thing that consumes (Collins English Dictionary). Since it will be perceived as reference to the target public of the goods or services at hand – as a buyer of these goods and services, the Opposition Division considers that it is non-distinctive.

Visually, the signs coincide in the element ‘NEXT’. On the other hand, they differ in the additional verbal element ‘CONSUMER’ included in the contested sign.

It must be emphasized that the earlier marks are fully included in the contested sign. The additional element ‘CONSUMER’ gives to the contested sign a certain visual difference, yet, since this word is non-distinctive in connection with the relevant goods and services, it has a minimal impact in its differentiating.

Considering the foregoing, the Opposition Division considers that there is a high degree of visual similarity between the marks in question.

Aurally, the pronunciation of the marks coincides in the sounds of the word ‘next’ present identically in all signs. The pronunciation differs in the sound of the word ‘consumer’ in the contested sign. However, the aural differences due to this word do not have enough impact in differentiating the signs since the word consumer is considered non-distinctive for the goods and services concerned.

Therefore, the signs are aurally similar to a high degree

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the verbal elements of all marks at hand. As already mentioned previously the word consumer is considered non-distinctive. Therefore its meaning does not affect the recognition and comprehension of the word ‘NEXT’ in the respective signs.

Consequently, to the extent that all marks will be clearly associated with the meaning of the word ‘NEXT’, as defined above, the marks are conceptually highly 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 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 mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade marks have no clear and straightforward meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of these marks must be seen as normal.

Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, with reference to the perception which the relevant public has of the signs and of the goods or services in question, taking into account all factors relevant to the circumstances of the case, in particular the interdependence between the similarity of the signs and the similarity of the goods or services designated. Accordingly, a lesser degree of similarity between those goods or services may be offset by a greater degree of similarity between the marks, and vice versa (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18 and 19; 29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The likelihood of confusion includes the likelihood of association, in the sense that the public may, if not confuse the two signs directly, believe that they come from the same undertaking or from economically related ones (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 16).

In addition, account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

In the present case, the contested goods and services have been found identical and similar and are directed at the public at large and professionals whose degree of attention is deemed to be average to high.

The marks are similar to the extent that they coincide in the verbal element ‘NEXT’ which constitutes the earlier marks and is fully included, yet clearly perceptible, in the contested sign. This makes them visually similar to an average degree and aurally highly similar. As mentioned above, the word ‘consumer’ will not affect the recognition and perception of the word ‘NEXT’ in the contested sign by the relevant public. Moreover, it will be perceived solely as a reference to the target public of the goods or services at hand and therefore it is non-distinctive. Considering the foregoing, both marks are very likely to transmit an almost identical meaning.

Consequently, the differences between the signs are not sufficient to counteract the visual, aural and conceptual similarity, even in case of an above average level of attention. Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

It follows that the dissimilarities between the marks at issue, resulting from the differences in the additional non-distinctive verbal element ‘CONSUMER’ in the contested mark, are not sufficient to counteract, on a visual, phonetic and conceptual level, the similarity between the signs, deriving from the common element ‘NEXT’. The differences between the signs at hand do not allow the consumers to distinguish between them safely and therefore those will likely to assume that the relevant goods bearing either one or another sign come from the same undertaking or from economically-linked undertakings.

It should also be borne in mind that the relevant goods are beverages and, since these are frequently ordered in noisy establishments (bars, nightclubs), the phonetic similarity between the signs is particularly relevant (see judgment of 15/01/2003, T-99/01, Mystery, EU:T:2003:7, § 48, which reflects this line of reasoning). judgments of 11 September 2014, Aroa Bodegas v OHIM — Bodegas Muga (aroa), T-536/12, not published, EU:T:2014:770, paragraph 55.

In its observations, the applicant argues that the earlier trade marks have a low distinctive character given that there are many trade marks that include the element ‘next’. In support of its argument the applicant refers to several trade mark registrations in the European Union.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘next’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the English speaking public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registrations No 1 620 434 and No 5 978 549. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the earlier rights, cited in the previous paragraph, lead to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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

At the same time, since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR, neither the other ground of the opposition, namely Article 8(5) 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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lars HELBERT

Renata COTTRELL

Martin EBERL

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.

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