ECOS 3 | Decision 2609868
Date Published: Oct 1, 2017
OPPOSITION No B 2 609 868
Etos B.V., Provincialeweg 11, 1506 MA Zaandam, The Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595DA Den Haag, The Netherlands (professional representative)
a g a i n s t
Ekokimya Kimyevi Ürünler Sanayi ve Ticaret Anonim Sirketi, Haramidere Merkez Mahallesi, Dereboyu Caddesi, Emek Ishani, No: 47, D: 2, Beylikdüzü – Istanbul, Turkey (applicant), represented by Silex IP, Calle Velázquez 109, 2º D, 28006 Madrid, Spain (professional representative).
On 03/04/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 609 868 is upheld for all the contested goods and services.
2. European Union trade mark application No 14 341 408 is rejected in its entirety.
3. The applicant bears the costs, fixed at EUR 650.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 341 408. The opposition is based on, inter alia, European Union trade mark registration No 13 521 281. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 13 521 281.
- The goods and services
The goods and services on which the opposition is based are among others the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; deodorants for personal use; breath fresheners; lotion-impregnated wipes; polishes; hair dye; makeup; cleaning products; shoepolish; wiper fluid; suncream.
Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; dietetic foodstuffs and dietetic substances adapted for medical and veterinary use; food for babies; dietary supplements for humans and animals; plasters, materials for dressings; tooth fillers and media for dentists; disinfectants; preparations for destroying vermin; fungicides and herbicides; sanitary napkin air fresheners; analgesics; baby diapers of paper.
Class 35: Advertising; business management; business administration; administrative services; marketing; business organization and business and other such business assistance with the commercialization and exploitation of a retailer; advertising, sales promotion and publicity services, business and advertising assistance in selling all kinds of commodities, market research, organizing commercial operations; Services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; publicity and sales promotion; abovementioned retail services with respect to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, deodorants for personal use, breath fresheners, lotion-impregnated wipes, polishes, hair dye, makeup, cleaning products, shoepolish, wiper fluid, baby diapers of paper, suncream, pharmaceutical and veterinary preparations, sanitary preparations for medical purposes, dietetic substances adapted for medical use, dietetic foodstuffs and dietetic substances adapted for medical and veterinary use, food for babies, dietary supplements for humans and animals, plasters, materials for dressings, tooth fillers and media for dentists, disinfectants, preparations for destroying vermin, fungicides and herbicides, sanitary napkin air fresheners, analgesics, candles, hand tools and implements, hand-operated, knives, forks and spoons, side arms, razors, cutlery, can openers, manicure sets, earpiercing needles and engraving needles , nail clippers, scissors, planning, pizza cutters, garden tools (hand-operated), pocketknives, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life (life-saving) and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital media, mechanisms for coin operated apparatus, cash registers, calculating machines, data processing equipment and computers, software, fire extinguishers, agendas (electronic), batteries, battery chargers, protection plates for electrical outlets, glasses, eyeglass cases, contact lens, computers, cameras, earphones, measuring rulers, folding rulers, graduated rulers for office and stationery use, tape rulers s, optical mirrors, flashlights, fuses, paper, cardboard, printed matter, bookbinding, pictures, stationery, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites (except furniture), instructional and teaching material (except apparatus), plastic materials for packaging,letters, clichés, bonus, discount and savings benefit cards, savings books, stickers, picture books, colouring books, booklets, cardboard, cover paper, coffee filters made of paper, handkerchiefs of paper, foodstuffs and drinks, fresh fruit and vegetables, alcoholic drinks.
The contested goods and services, after final partial refusal of the contested mark in parallel opposition proceedings No B 2 620 709 of 17/11/2016, are the following:
Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; bleaching and cleaning preparations, detergents other than for use in manufacturing operations and for medical purposes, laundry bleach, fabric softeners for laundry use, stain removers, dishwasher detergents; fragrances; deodorants for personal use and animals; dental care preparations, denture polishes, tooth whitening preparations, mouth washes, not for medical purposes.
Class 5: Hygienic pads; hygienic tampons; diapers, including those made of paper and textiles; deodorants, other than for human beings or for animals; air deodorizing preparations; detergents for medical purposes.
Class 35: Advertising; business management; business administration; office functions; the bringing together, for the benefit of others, of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, bleaching and cleaning preparations, detergents other than for use in manufacturing operations and for medical purposes, laundry bleach, fabric softeners for laundry use, stain removers, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dishwasher detergents, fragrances, deodorants for personal use and animals, dental care preparations, denture polishes, tooth whitening preparations, mouth washes, not for medical purposes, sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of dietary supplements for humans and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, hygienic pads, hygienic tampons, plasters, enabling customers to conveniently view and purchase those goods; the bringing together, for the benefit of others, of materials for dressings, diapers, including those made of paper and textiles, deodorants, other than for human beings or for animals, air deodorizing preparations, antiseptics, detergents for medical purposes (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes.
An interpretation of the wording of the list of services is required to determine the scope of protection of these services.
The term including used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (on the use of ‘in particular’ see a reference in judgment of 09/04/2003, T-224/01, Nu-tride, EU:T:2003:107).
On the other hand, the term namely, used in the opponent’s list of goods and services to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods and services.
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 bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; bleaching and cleaning preparations; deodorants for personal use are identically included in both lists of goods.
The contested detergents other than for use in manufacturing operations and for medical purposes, fabric softeners for laundry use, stain removers are included in the broad category of the opponent’s other substances for laundry use and are therefore identical.
The contested laundry bleach is included in the broad category of the opponent’s bleaching preparations and the contested dishwasher detergents are included in the broad category of the opponent’s cleaning preparations. The compared goods are, are therefore identical.
The contested fragrances; deodorants for animals are included in the broad category of the opponent’s goods perfumery and are therefore identical.
The contested dental care preparations include, as a broader category, the opponent’s dentifrices. 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 denture polishes, tooth whitening preparations, mouth washes, not for medical purposes are included in the broad category of dentifrices and are therefore identical.
Contested goods in Class 5
The contested diapers, including those made of paper and textiles include as a broader category the opponent’s baby diapers of paper. 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 goods hygienic pads; hygienic tampons are included in the broad category of the opponent’s sanitary preparations for medical purposes and are therefore identical.
The contested deodorants, other than for human beings or for animals; air deodorizing preparations overlap with the earlier goods air fresheners as all of these goods can be used to freshen up a room. Therefore, they are identical.
The contested detergents for medical purposes are included in the broad category of the opponent’s sanitary preparations for medical purposes and are therefore identical.
Contested services in Class 35
The services advertising; business management; business administration are identically included in both lists of services.
The contested office functions are similar to the opponent’s services business administration as they have the same purpose. They can also coincide in producer and end user.
Retail services allow consumers to satisfy different shopping needs in one place and are usually directed at the general consumer. They can take place in a fixed location, such as a department store, supermarket, boutique or kiosk, or in the form of non-shop retailing, such as through the internet, by catalogue or mail order.
The services rendered in connection with different forms exclusively consisting of activities around the actual sale of goods, such as wholesale services, internet shopping, catalogue or mail order services, etc. are closely related to retail services.
The contested the bringing together, for the benefit of others, of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices, bleaching and cleaning preparations, detergents other than for use in manufacturing operations and for medical purposes, laundry bleach, fabric softeners for laundry use, stain removers, enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they are identically included in both lists) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.
The contested services the bringing together, for the benefit of others, of dishwasher detergents enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they refer to retail services of identical goods) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to cleaning preparations.
The contested services the bringing together, for the benefit of others, of fragrances, deodorants for animals, enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they refer to retail services of identical goods) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to perfumery.
The contested services the bringing together, for the benefit of others, of deodorants for personal use, enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they refer to retail services of identical goods) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to deodorants for personal use.
The contested services the bringing together, for the benefit of others, of dental care preparations, denture polishes, tooth whitening preparations, mouth washes, not for medical purposes enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they refer to retail services of identical goods) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to dentifrices.
The contested services the bringing together, for the benefit of others, of sanitary preparations for medical purposes, dietetic food and substances adapted for medical or veterinary use, food for babies enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they are identically included in both lists) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to sanitary preparations for medical purposes, dietetic substances adapted for medical use, dietetic foodstuffs and dietetic substances adapted for medical and veterinary use, food for babies.
The contested services the bringing together, for the benefit of others, of dietary supplements for humans and animals, plasters, materials for dressings, material for stopping teeth, dental wax, disinfectants, preparations for destroying vermin, fungicides, herbicides, hygienic pads, hygienic tampons, plasters enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they refer to retail services of identical goods ) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to sanitary preparations for medical purposes, dietary supplements for humans and animals, plasters, materials for dressings, tooth fillers and media for dentists, disinfectants, preparations for destroying vermin, fungicides and herbicides, plasters.
The contested services the bringing together, for the benefit of others, of materials for dressings, diapers, including those made of paper and textiles enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they refer to retail services of identical goods) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to materials for dressings, baby diapers of paper.
The contested services the bringing together, for the benefit of others, of deodorants, other than for human beings or for animals, air deodorizing preparations enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they refer to retail services of identical goods) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to air fresheners.
The contested services the bringing together, for the benefit of others, of antiseptics, detergents for medical purposes (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; all the aforementioned retail services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, including, through web sites or television shopping programmes are either identical (as they refer to retail services of identical goods) or at least similar (because they coincide in nature and purpose, may be provided by the same undertakings and are complementary) to the opponent’s services provided by supermarkets and retailers, namely: the bringing together of products (excluding the transport thereof), so that consumers can see them easily and buy; abovementioned retail services with respect to sanitary preparations for medical purposes.
- 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 (to various degrees) are directed at both the general public and professionals.
The degree of attention paid by consumers will vary from average to higher than average, depending on the characteristics of the goods or services (for example, business services in Class 35 may have important consequences for the clients´ business).
- The signs
ETOS | |
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). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking parts of the relevant public.
The earlier word mark consists of the word ‘ETOS’.
The contested sign consists of the word ‘ECOS’ in a slightly stylised typeface, in shades of blue, followed by the number ‘3’ in shades of green. There is a depiction of leaves, in shades of green, inside the letter ‘O’.
The verbal elements ‘ETOS’ and ‘ECOS’ in the marks will be perceived as meaningless by the relevant consumers and are, therefore, distinctive. The number ‘3’ in the contested mark will be perceived by all consumers as a number, and therefore it conveys the concept of that number. It is common nowadays to include numbers in trade marks, with the purpose of indicating the version or model of the goods or services covered by the mark, to indicate that the goods or services are innovative. In relation to detergents and cosmetics and other relevant goods in Classes 3 and 5, a number 3 may also indicate that these goods have triple effect. The leaves inside the letter ‘O’ in the contested sign are frequently used in the market to provide information about the goods or services in question, for example to indicate the composition or ingredients of the goods (e.g. that they contain natural ingredients or plants) or to indicate that the goods are produced or the services offered in an environmentally friendly way.
The contested sign is formed of the distinctive word ‘ECOS’, and the non-distinctive number ‘3’ and the depiction of leaves. The reason for considering that these last two elements are non-distinctive is that the number and the depiction of leaves are likely to be perceived as referring to characteristics of the goods and services in question, as explained above. Therefore, the verbal element is the most distinctive element in the contested mark.
The contested sign does not contain any elements that are more dominant than others. Although the depiction of leaves is relatively small, due to its colour and central position it will be clearly perceived visually.
Visually, the signs coincide in the sequence of letters ‘E*OS’ and differ in their second letters, ‘T’ in the earlier mark and ‘C’ in the contested sign. The marks also differ in the colours and typefaces, and in the depiction of leaves and the number ‘3’ in the contested mark.
The similarities between the marks are found in their distinctive elements, and their main differences (apart from the use of colours and typefaces in the contested sign) are found in elements considered non-distinctive.
In addition, when signs consist of both verbal and figurative components, like the contested sign, 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).
Taking all the above into account, it is considered that the marks are visually similar to at least an average degree.
Aurally, the earlier mark will be pronounced as E-TOS while the verbal element in the contested mark will be pronounced as E-KOS in German. Therefore the similarities are E-*OS. The number ‘3’ of the contested mark will be pronounced as “DREI”. It constitutes an aural difference between the marks while at the same time this element is also considered to be non-distinctive.
The aurally differing element ‘3’ will be pronounced at the end of the contested sign. In addition, the aural commonalities between the marks are found in their distinctive elements, and the aural difference is found in an element of the contested mark that is non-distinctive.
Therefore, taking all the above into account, the signs are considered aurally similar to a high degree.
Conceptually, neither of the signs has a meaning as a whole. Although the contested sign will convey the concepts of the number ‘3’ and of a pair of leaves, these elements are non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the fanciful verbal element, which has no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
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 mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
The contested goods and services are partly identical and partly similar (to different degrees). The marks are visually to at least an average degree and aurally similar to a high degree while a conceptual comparison is not possible.
The main commonalities between the marks are found in their distinctive verbal elements, ‘ETOS’ and ‘ECOS’. These are the only words in the signs. The main dissimilarities between the marks (apart from the differences in the contested mark’s colours and typefaces) are found in elements that are non-distinctive. The additional number ‘3’ in the contested sign is, furthermore, the last element of the contested sign, and will be perceived, read and pronounced last. Therefore, as explained above, consumers will pay less attention to it, since they read from left to right.
Therefore, the impact of the differing elements is limited, as explained above, and they are not considered sufficient per se to enable consumers to differentiate the marks in relation to identical or similar goods and services.
The degree of attention paid by consumers during the purchase of the goods and services will either be average or high. Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them.
Based on this principle of imperfect recollection, consumers might believe that the conflicting goods and services found to be identical or similar came from the same undertaking or economically-linked undertakings. In addition, having regard to the principle of interdependence, it is considered that the commonalities between the signs are clearly sufficient to outweigh their dissimilarities and might induce the relevant public to believe that the conflicting goods and services found to be identical or similar (to various degrees) come from the same undertaking or economically-linked undertakings.
Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the 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 13 521 281. It follows that the contested trade mark must be rejected for all the contested goods and services.
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 as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.
As the earlier right ETOS leads 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 right invoked by the opponent (see judgment of 16/09/2004, T-342/02, ‘Moser Grupo Media’).
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
Sigrid DICKMANNS | Lars HELBERT | Denitza STOYANOVA-VALCHANOVA |
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 shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.