DermaAngel | Decision 2507609 - CLARINS FRAGRANCE GROUP v. BenQ Materials Corporation

Date Published: Sep 28, 2017

OPPOSITION No B 2 507 609

Clarins Fragrance Group, 9, rue du Commandant Pilot, 92200 Neuilly-sur-Seine, France (opponent), represented by T Mark Conseils, 31, rue Tronchet, 75008 Paris, France (professional representative)

a g a i n s t

BenQ Materials Corporation, 29 Jianguo E. Road, Gueishan Taoyuan  333, Taiwan (applicant), represented by Pons Patentes y Marcas Internacional S.L., Glorieta de Rubén Darío 4, 28010 Madrid, Spain (professional representative).

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

DECISION:

1.        Opposition No B 2 507 609 is upheld for all the contested goods, namely 

Class 3:         Cosmetics; lotions for cosmetic purposes; beauty masks; skin whitening creams; cosmetic creams; essential oils; lipsticks; massage gels other than for medical purposes; hand cream; Sunscreen preparations; anti-wrinkle creams; Soap; Bath salts, not for medical purposes; Cleaning preparations; Cleansing milk for toilet purposes; bath preparations, not for medical purposes; Shampoos.

2.        European Union trade mark application No 13 581 277 is rejected for all the contested goods. It may proceed for the remaining non-contested goods in Classes 5 and 10.

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

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 13 581 277, namely against all the goods in Class 3. The opposition is based on European Union trade mark registration No 5 385 158. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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 trade mark on which the opposition is based, European Union trade mark No 5 385 158 for the word mark ‘ANGEL’.

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

The contested application was published on 14/01/2015. 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 14/01/2010 to 13/01/2015 inclusive.

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

Class 3:        Soaps; perfumery, essential oils, cosmetics, hair lotions; beauty products.

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 23/03/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 28/05/2016 to submit evidence of use of the earlier trade mark. This term was extended at the request of the opponent until 28/07/2016. On 22/07/2016, within the time limit, the opponent submitted evidence of use. In addition, the opponent also referred to the evidence submitted at an earlier stage of the proceedings, in particular on 23/10/2015.

The evidence consists of, inter alia, the following:

Evidence submitted on 22/07/2016:

• Annex 1 (items 1-19): Nineteen invoices dated in 2011, 2012, 2013 and 2014. The invoices are addressed to different clients throughout France and itemise, inter alia, ‘Angel’ goods such as perfumes, perfumed body milk, perfumed deodorant roll-on, perfumed hair mist, perfumed body oil, deodorant sprays, hands creams, perfumed shower gel and body creams.

• Annex 2: Nineteen invoices dated in 2010, 2011, 2012, 2013 and 2014. The invoices are addressed to different clients throughout Germany and itemise, inter alia, ‘Angel’ goods such as perfumes, shower gel, body lotion, body cream, deodorant roll-on, hair mist, deodorant spray, hand cream, etc.

• Annex 3: Twenty-six invoices dated in 2010, 2011, 2012, 2013 and 2014. The invoices are addressed to different clients throughout Italy and itemise, inter alia, ‘Angel’ goods such as perfumes, shower gel, body lotion, body oil, body cream, hair mist, deodorant spray, hand cream, etc.

• Annex 4: Affidavit dated 09/07/2015, executed by Mr. Jean-Marie Benot, Chief Financial Officer of the Clarins Group, providing ‘Angel’ average turnover figures and marketing expenses figures for 2009, 2010, 2011, 2012, 2013 and 2014 in relation to France, Germany, Italy and the UK.

• Annex 5: (107 pages) Advertising and promotional material dated 2011 regarding the ‘ANGEL’ perfume press advertising campaign featuring Eva Mendes. The document contains numerous press articles, advertisements and interviews in lifestyle magazines and websites (such as Cosmopolitan, Instyle, Elle, yodona.com, Vanity Fair, Marie Claire, Hello, etc.) in Germany, Belgium, Austria, Greece, Bulgaria, Latvia, the UK, France, Spain, etc.  

• Annex 6: (88 pages) Advertising and promotional material dated 2012, celebrating the 20th birthday of the launch of the ‘ANGEL’ perfume. The document contains numerous press articles and advertisements in magazines, newspapers and websites (such as Vie Modern, Cosmopolitan, Le Figaro, Beauty, Elle, Vogue.de, Stern, Corriere della Serra, Glamour, Marie Claire, etc.) in Belgium, France, Germany, Holland, Italy and the UK.

• Annex 7: (14 pages) Advertising and promotional material dated May – October 2014 regarding the ‘ANGEL’ perfume advertising campaign featuring Georgia May Jagger. The document contains media advertising, press articles, advertisements and interviews in various media, including valorisation and circulation information, in France, Luxembourg, Poland, Belgium, etc.

• Annex 8: Printout from the opponent’s UK-dedicated website showing, inter alia, various ‘ANGEL’ goods (including pictures and prices) available for online purchase such as  perfumes, shower gels, gift sets, body creams, hair mist, spray deodorant, roll-on deodorant, body oil, hand cream and body cream.

Evidence submitted on 23/10/2015 (inter alia):

• Annex 5: Advertising and promotional material dated 2013 in relation to ‘ANGEL’ goods, mostly perfumes. The document contains press articles and advertisements from magazines, newspapers and websites in, inter alia, Belgium, Germany, France, Holland, Italy, Poland, Spain and the UK.

• Annex 7: (39 pages) Advertising and promotional material dated November 2014 – March 2015 regarding the ‘ANGEL’ advertising campaign featuring Georgia May Jagger. The document contains media advertising, press articles, advertisements and interviews in various media, including valorisation and circulation information, in Belgium, Greece, Holland, Spain, the UK, Poland, Portugal, Italy, etc.

• Annex 9: Printouts of 08/07/2015 from www.sephora.com, www.douglas.de, www.boots.com and www.marionnaud.fr, showing various ‘ANGEL’ goods available for online purchase such as perfumes, perfumed body oil, shower gels, body creams, hair mist, deodorant spray, roll-on deodorant, body oil and hand creams.

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 and on which the opposition is based.

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.

The documents, such as invoices and the press articles show that the place of use is many different countries in the European Union. This can be inferred from the addresses and language of the documents, as well as the currency mentioned. Therefore, the evidence relates to the relevant territory.

The majority, and sufficient amount of the evidence, is dated within the relevant period.

The documents filed, in particular the turnover and advertising figures, the invoices and the press coverage documents, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The applicant argues that the mark is not used as registered because it appears in combination with the additional verbal elements ‘Thierry Mugler’.

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 will 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, it must be noted that the majority of the evidence shows uses of the sign as registered. Furthermore, as regards uses together with other words/signs, such as the designer/house brand ‘Thierry Mugler’, such use is acceptable. Several signs may be used simultaneously without altering the distinctive character of the registered sign (judgment of 08/12/2005, T-29/04, Cristal Castellblanch, EU:T:2005:438, § 34);

In this regard it is noted that it is quite common in some market areas for goods and services to bear not only their individual mark, but also the mark of the business or product group. In these cases, the registered mark is not used in a different form, but the two independent marks are validly used at the same time. There is no legal precept in the European Union trade mark system that obliges the opponent to provide evidence of the earlier mark alone when genuine use is required within the meaning of Article 42 EUTMR. Two or more trade marks may be used together in an autonomous way, or with the company name, without altering the distinctive character of the earlier registered trade mark (T-463/12, MB, EU:T:2014:935, § 43). It is common practice in the trade to depict independent marks in different sizes and typeface, so these clear differences, which emphasise the house mark, indicate that two different marks are used jointly but autonomously (decision of 07/08/2014, R 1880/2013-1, HEALTHPRESSO/PRESSO, § 42). As seen from the evidence, this clearly applies in the present case, as ‘Angel’ is used as the main brand for the goods and ‘Thierry Mugler’ appears as the designer/business name ‘behind’ the trade mark.

Consequently, considered as a whole, the evidence gives sufficient indications of the use of the earlier marks as registered within the meaning of Article 15(1)(a) EUTMR.

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, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark on which the opposition is based.

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.

Furthermore, 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 that the earlier mark was used during the relevant period in relation to various perfumery, cosmetic and beauty goods, in particular: perfumes, body milk, deodorant roll-on, perfumed hair mist, body oil, deodorant sprays, hands creams, perfumed shower gel and body creams. These goods belonging to the following categories in the specification: perfumery, essential oils, cosmetics; beauty products. Although the terms perfumery; cosmetics; beauty products are relatively broad, it is considered that use has been shown for the whole categories. This is because the opponent proved use for different types of goods falling within these categories and, also, in order to respect the legitimate interest of the opponent in not being stripped of all protection for not proving all conceivable variations of goods, as reflected in the above-cited Aladin judgement. In relation to essential oils the evidence proves use only for cosmetic body oils. These goods can be considered to form an objective subcategory of essential oils. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for cosmetic essential oils. No evidence of use has been submitted in relation to the remaining goods.

Therefore, the Opposition Division will only consider the following goods in its further examination of the opposition: perfumery, cosmetic essential oils, cosmetics, beauty products in Class 3.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods

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

Class 3: Perfumery, cosmetic essential oils, cosmetics, beauty products.

The contested goods are the following:

Class 3: Cosmetics; lotions for cosmetic purposes; beauty masks; skin whitening creams; cosmetic creams; essential oils; lipsticks; massage gels other than for medical purposes; hand cream; Sunscreen preparations; anti-wrinkle creams; Soap; Bath salts, not for medical purposes; Cleaning preparations; Cleansing milk for toilet purposes; bath preparations, not for medical purposes; Shampoos.

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 3

The contested cosmetics are identically contained in both lists of goods.

The contested lotions for cosmetic purposes; beauty masks; skin whitening creams; cosmetic creams; hand cream; sunscreen preparations; anti-wrinkle creams; bath salts, not for medical purposes; lipsticks; cleansing milk for toilet purposes; bath preparations, not for medical purposes; shampoos; massage gels other than for medical purposes are included in the broad category of the opponent’s cosmetics. Therefore, they are identical.

The contested essential oils include, as a broader category, the opponent’s cosmetic essential oils. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cleaning preparations are a broad category of goods, including, inter alia, items for body cleaning and hygiene. Consequently, to that extent, the contested cleaning preparations overlap with the opponent’s cosmetics (including goods for body hygiene and bath preparations such as shampoos, shower gels, etc.). Therefore, these sets of goods are considered identical.

The contested soap, which includes toilet soap, is similar to the opponent’s cosmetics, as these sets of goods target the same consumers and can have the same producers and distribution channels. 

2. Relevant public — degree of attention

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

In the present case, the goods found to be identical or similar are directed at the public at large. The degree of attention is average.

3. The signs

ANGEL
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. 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 ‘Angel’ and the element ‘derma’ will be associated with a clear meaning in a number of territories, for example, by the English-, Spanish- and Bulgarian-speaking part of the relevant public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-, Spanish- and Bulgarian-speaking part of the relevant public.

The earlier mark is a word mark and consists of the word element ‘ANGEL’. The word ‘ANGEL’, present in both signs stands for ‘a spiritual being believed to act as an attendant, agent, or messenger of God’ in English, Spanish and Bulgarian. According to the applicant, the element ‘angel’, which also means a person, esp. a woman, who is kind, pure, or beautiful (according to Collins English Dictionary), has a low distinctive character for the relevant goods, as it describes a characteristic of the goods, in particular ‘they are for a woman kind, pure and beautiful as a perfume’. The Opposition Division disagrees with this statement, as such characteristics do not normally describe any relevant features of the goods. Consequently, as the element ‘ANGEL’ is not descriptive, allusive or otherwise weak for the relevant goods, it is distinctive. Since it is the only element of the earlier mark, the inherent distinctive character of the earlier mark is, therefore, normal.

The contested sign is figurative and consists of the conjoined words ‘DermaAngel’, written in rather standard computer font, such as Times New Roman, where the initial letters ‘D’ and ‘A’ of ‘Derma’ and ‘Angel’ are in uppercase. The contested sign will doubtlessly be broken down into two distinct elements due to the fact that ‘Derma’ and ‘Angel’ are each represented with a capital letter and both have concepts.

The element ‘derma-’ included in the beginning of the contested sign will be associated by the relevant public with the concept of ‘derm’ (English), ‘dermo’ (in Spanish) and ‘derma, dermalen’ (in Bulgarian) standing for another term for dermis, the skin; dermal (see Oxford Dictionaries online, Diccionario de Real Academia Española at rae.es and Eurodict online dictionary at www.eurodict.com/bulgarian _properties.html). Bearing in mind that the relevant goods are cosmetics, cleaning and beauty-related preparations, it is considered that this element is non-distinctive for the relevant goods, as it indicates their intended purpose. Therefore, the relevant public will not pay as much attention to this non-distinctive element as to the other, more distinctive element of the contested sign.    

The marks have no element(s) that could be considered more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the word ‘ANGEL’, which represents the entirety of the earlier mark and the second verbal element of the contested sign. It has to be taken into account that in the case of word marks, it is the word that is protected and not its written form. Therefore, it is not relevant whether the earlier mark is represented in upper case or lower case letters. The signs differ in the additional verbal element ‘Derma’ of the contested sign which has no counterpart in the earlier mark. Although the differences in the signs are placed in the beginning of the contested sign and this is visually noticeable, the differing element ‘Derma’ is non-distinctive and the consumers will focus on the remaining distinctive element of the contested sign, which coincides in full with the earlier mark. Therefore, the signs are considered visually highly similar.

Following the same line of reasoning as in the visual comparison, it is considered that the signs are aurally similar to a high degree.

The concepts of the elements in the signs have been defined above. Consequently, the coinciding word ‘ANGEL’ will evoke the same concept. Although the element ‘derma’ in the contested sign will bring about a conceptual difference, this element is non-distinctive in relation to the goods and has reduced capacity to indicate the commercial origin of the contested sign. Consequently, the signs are conceptually similar to a high degree.  

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection in relation to perfumery in Class 3. 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 mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods are identical and similar to the opponent’s goods and they are directed at the public at large with an average degree of attention.

The earlier trade mark and the contested sign are visually, aurally and conceptually similar to a high degree. The similarities between the signs are on account of the common and normally distinctive element ‘ANGEL’, which constitutes the totality of the earlier mark and is represented, albeit as the second verbal element of the contested sign. However, the differentiating element ‘derma’ found in the beginning of the contested sign is non-distinctive and its impact as a trade identifier is rather limited.

In the present case, it is highly conceivable that the relevant consumer will perceive the mark applied for as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods which it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Therefore, consumers could be led to believe that the owner of the earlier trade mark has launched a new line of goods designated by the trade mark applied for.

In view of the foregoing and taking into account all the relevant circumstances of the case, also the interdependence principle between the relevant factors, i.e. that a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and/or the services and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17), the Opposition Division concludes that there is a likelihood of confusion on the part of the relevant public.

In its observations, the applicant argues that the earlier trade mark has a low distinctive character given that there are many trade marks that include the element ‘Angel’. In support of its argument the applicant refers to trade mark registrations in EUIPO, the United Kingdom, Italy, Germany and Spain.

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 the element ‘Angel’. Under these circumstances, the applicant’s claims must be set aside.

Furthermore, the applicant refers to previous decisions of the Office to support its arguments. However, the Office reminds that each case has to be dealt with separately and with regard to its particularities and the Office is not bound by its previous decisions. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. In the present case, the previous cases referred to by the applicant are irrelevant to the present proceedings, as the signs are totally different and not comparable.

Considering all the above, there is a likelihood of confusion on the part of the English, Spanish and Bulgarian-speaking part of the relevant 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 registration No 5 385 158. It follows that the contested trade mark must be rejected for all the contested goods.

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

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other 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

Marzena MACIAK

Liliya YORDANOVA

Gueorgui IVANOV

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.