FIRST BASE | Decision 2580499 - Bertels Textil Handels GmbH v. AT B.V.

Date Published: Sep 28, 2017

OPPOSITION No B 2 580 499

Bertels Textil Handels GmbH, Seebeckstr. 2, 24568 Kaltenkirchen, Germany (opponent), represented by Dieter Jungeblut, Dorotheenstr. 54, 22301 Hamburg, Germany (professional representative)

a g a i n s t

AT B.V., Diemermere 1, 1112 TA Diemen, Netherlands (applicant), represented by Arnold & Siedsma, A.J. Ernststraat 595F, 1082 LD Amsterdam, Netherlands (professional representative).

On 19/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 580 499 is partially upheld, namely for the following contested goods:

Class 18: Carrier bags made of leather or imitations of leather; trunks and travelling bags.

Class 25: Clothing, footwear, headgear.

2.        European Union trade mark application No 14 223 176 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 223 176. The opposition is based on European Union trade mark registration No 4 384 293.The opponent invoked Article 8(1)(b) 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, namely European Union trade mark No 4 384 293.

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 23/06/2015. 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 23/06/2010 to 22/06/2015 inclusive.

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

Class 18: Trunks and travelling bags, travel bags and sports bags, included in class 18, pocket wallets and purses, umbrellas, parasols.

Class 24: Textiles and textile goods, in particular for the manufacture of clothing and shoes, included in class 24, bed and table linen and covers, sheets, towels, bath linen, blankets, coverlets, washcloths, bibs, crawling blankets, bed canopies, antimacassars, covers and cushions for tables, benches and chairs.

Class 25: Apparel, sports wear, articles of headgear, shoes and articles of foot wear, sandals and bath slippers, gloves, in class 25, headbands, mufflers, scarfs, stockings, swimsuits, swimming trunks and bath robes, bikinis; t-shirts, sweatshirts; jackets, waistcoats, coats, shorts, trousers, shirts.

Class 28: Sporting articles, gloves for sports purposes, protectors for sports purposes, in particular hand, elbow, head and knee protectors (included in class 28).

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 01/06/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 06/08/2016 to submit evidence of use of the earlier trade mark. On 04/08/2016, within the time limit, the opponent submitted evidence of use for which it requested confidentiality.

The evidence to be taken into account is the following:

• Affidavit: Enclosure A contains a ‘statutory declaration’ signed by the managing director of the opponent, stating that the earlier mark is used for goods such as sportswear and shoes and footwear as well as travelling bags, travel bags and sports bags (i.e. for some goods in Classes 18 and 25) in various countries in the European Union during the period 23/06/2010 – 23/06/2015.
• Turnover and sales figures: Enclosure 1 specifies the information given in Enclosure A and shows an overview of sales in Austria, Belgium, Denmark, Germany, Italy, Luxembourg, Netherlands, Spain and in the United Kingdom for goods such as jackets, t-shirts, polo shirts, bags and backpacks. This information and figures stems from the opponent.
• Enclosures 2-5 are product catalogues for the period 2012-2015 showing, in particular, different jackets models for sale, but also t-shirts, polo shirts, bags and backpacks, displaying the word elements ‘FIRST B’. Enclosures 4 and 5, contain overviews of the sales partners of the opponent in Germany showing that the opponent has sales partners in different regions in Germany.    
• Pictures - Enclosures 6.1 – 6.7 contain pictures of a jacket with tags on which the trade mark ‘FIRST B’ is used.
• Invoices: Enclosure 7 and 8 contain a total of two invoices billed to addresses in Borkum and Langeoog, Germany. While the invoices mention goods without any direct reference to the opponent's earlier trade mark, they refer to such goods by their names (e.g. Jason and Jethro) and these can also be found in the product catalogues (Enclosures 2-5) together with the earlier trade mark, thus establishing a link between the trade mark ‘FIRST B’ and the goods concerned. Moreover, there is a reference to ‘FIRST B’ on the right bottom side of the invoices.
• Website printouts: Enclosures 9.1 – 9.3 show pictures of swim shorts, swim shoes and key-holders/bands that were for sale on the opponent’s website as of 02/08/2016. As this is after the relevant period, these printouts will be given less weight in the overall assessment of if the earlier mark has been genuinely used.

In accordance with Rule 22(3) EUTMIR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services. These requirements for proof of use are cumulative (05/10/2010, T-92/09, STRATEGI, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the sufficiency of the indication and proof as regards the place, time, extent and nature of use has to be considered in view of the evidence submitted in its entirety.

In the present case, in order to demonstrate genuine use of the earlier European Union mark, the opponent submitted one affidavit, a sales overview, product catalogues, two invoices, some photographs of a jacket with tags attached to it and website printouts (as described above in the list of the evidence of use).

As far as affidavits are concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Place of use

The opponent explains in Enclosure A that the earlier mark has been used for various goods in Class 18 and 25 in Austria, Belgium, Denmark, Germany, Italy, Luxembourg, Netherlands, Spain and in the United Kingdom. The sales overview in Enclosure 1 also refers to sales (of the same goods) in these countries. Nevertheless, the two invoices in Enclosures 7 and 8 only show use in Germany and the product catalogues (especially Enclosures 4 and 5) strongly implies use in Germany, since they have references to the opponent’s business partners or retailers in Germany (e.g. their names, email addresses and telephone numbers) and are mainly written in German. Moreover, the invoices are also in German and are addressed to German addresses. Finally, the relevant currency of the products sold in the invoices is in Euro. Therefore, the evidence provides sufficient indications as to the place of use in the relevant territory.  

Time of use

While Enclosures 6.1 – 6.7 are undated and the website printouts are dated after the relevant period, the two invoices and the product catalogues (at least the catalogues from 2012 until the summer of 2015) are dated within the relevant period. Therefore, the catalogues, the invoices and the data included in the affidavit and the sales overview (seen in combination with the product catalogues and the invoices) refer to use of the relevant goods within the relevant period.

Extent of use

The Court of Justice has held that ‘use of the mark need not always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C-40/01, Minimax, EU:C:2003:145).

The General Court has stated that ‘account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use’ (08/07/2004, T-334/01, Hipoviton, EU:T:2004:223, § 35).

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’ (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42)

In the present case, the opponent has provided invoices, product catalogues, an affidavit and a sales overview. Although the affidavit and the sales overview have little probative value as such (since they are provided by the opponent), they are in this case corroborated by other materials such as the invoices (be it very few) and the product catalogues.

With respect to the latter it must be noted that under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (judgments of 15/07/2015, T-398/13 TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57-58; 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

Therefore, that a large number of goods bearing the designation ‘First B’ were offered in the product catalogues and that those items were available throughout Germany for a significant part of the relevant period, as the contact info (to the opponent’s retailers) in the catalogues is implying, the product catalogues must be given considerable weight in the assessment of whether the earlier mark has been put into genuine use. The Opposition Division notes in this regard that Germany is the largest country and territory in the European Union. Although there is no information of prices in the product catalogues, the earlier mark is constantly being used on the goods in the catalogues, for example:

            

Bearing this in mind, the applicant’s reference to a judgment in the UK, ‘SOFA WORKSHOP’ and § 28 of that decision, must be set aside. While it is true that the invoices only show sales of jackets/coats, the Opposition Division finds that the evidence, assessed as a whole, show that the earlier mark is used for the goods demonstrated in the product catalogues, that is, jackets, shirts, t-shirts, different types of bags, that can be used for travelling and carrying computers (laptops), and backpacks, and that this use relates to Germany.

Enclosures 6.1 – 6.7 do not give any information about where the pictures were taken, but also support the findings above (i.e. that the earlier mark is used for jackets).

The website printouts are dated after the relevant time period and are, therefore, considered as referring to use outside the relevant time frame. Such use is in general immaterial, unless it constitutes conclusive indirect proof that the mark must have also been put to genuine use during the relevant period. Enclosures 9.1 – 9.3 show products (e.g. swim shorts and swimming shoes) that are not referred to or shown in the evidence that is dated within the relevant period. Therefore, these website printouts cannot be given any weight in the assessment of extent of use.

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.

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).

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 opponent’s trade mark, the word mark ‘FIRST B’, is used in standard fonts either directly on the products depicted in the Enclosures 2-5 or on their tags. However, on many occasions ‘FIRST B’ is used in combination with a figurative element (a circular logo containing a stylised B):

      

Although ‘FIRST B’ is depicted with other elements in many of the examples, the word element is separated from the figurative element in every one of these examples and is rendered in a font that does not alter its distinctive character.

Furthermore, although the invoices (Enclosures 7 and 8) only mention the products by product names, such as ‘Jethro’ and ‘Jason’, these product names are shown (and linked to the earlier mark ‘FIRST B’) in the product catalogue for spring – summer 2015. Therefore, the Opposition Division finds that the product catalogues (together with the invoices) add credibility to the information provided by the opponent in the affidavit and the sales overview (Enclosure 1), and that the evidence provided by the opponent is sufficient to demonstrate the nature of use of the opponent’s mark.

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.

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.

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 shall, 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.

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

Class 18: Travelling bags and travel bags included in class 18.

Class 25: Sports wear, t-shirts, sweatshirts; jackets, coats, shirts.

Therefore, the Opposition Division will only consider the abovementioned goods 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.

1. The goods

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

Class 18: Travelling bags and travel bags included in class 18.

Class 25: Sports wear, t-shirts, sweatshirts; jackets, coats, shirts.

The contested goods are the following:

Class 18: Leather and imitations of leather and carrier bags made of leather or imitations of leather; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 25: Clothing, footwear, headgear.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 18

The contested travelling bags are identically contained in both lists of goods (including synonyms).

The contested carrier bags made of leather or imitations of leather overlap with the opponent’s travel bags, since carrier bags can be used for travelling and travel bags can be made of leather and imitations of leather. Therefore, they are identical.

The contested trunks are large packing cases or boxes that clasp shut, used as luggage or for storage. These goods share much of the same purpose as the opponent’s travelling bags, namely to carry or store objects, target the same relevant publics and can also be sold through the same distribution channels.  Therefore, the contested goods are similar to the opponent’s travelling bags.  

The contested leather and imitations of leather; animal skins and hides refer to the skins of various kinds of animals (or imitations thereof). These are raw materials. The fact that one product is used for manufacturing another (for example, leather for travelling bags) is not sufficient in itself for concluding that the goods are similar, as their nature, purpose, relevant public and distribution channels may be quite distinct. The abovementioned raw materials are intended for use in industry rather than for direct purchase by the final consumer. Furthermore, these goods are sold in different outlets, are of a different nature and serve a different purpose from the opponent’s goods in Classes 18 and 25. Therefore, these goods are dissimilar.

The contested umbrellas are devices for protection from the weather consisting of a collapsible, usually circular canopy mounted on a central rod; parasols are light umbrellas carried for protection from the sun; walking sticks are canes or other staffs used as aids for walking; whips are instruments used for driving animals; harnesses are the gear or tackle with which a draft animal pulls a vehicle or implement; and saddlery is equipment for horses, such as saddles and harnesses. The nature of these goods is very different from the ones of the opponent’s in Class 18 and in Class 25. They serve very different purposes (storage, protection from rain/sun, assistance with walking, aid in the control and/or riding of animals versus carrying various objects and protecting the human body). They do not usually have the same retail outlets and are not usually made by the same manufacturers. These goods are considered dissimilar.

Contested goods in Class 25

The contested clothing includes, as a broader category the opponent’s jackets. 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 footwear serves the same purpose as clothing and goods such as the opponent’s t-shirts and jackets: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both t-shirts, jackets, shirts and footwear. Therefore, the goods are similar.

The contested headgear and clothing products such as the opponent’s jackets are of an identical or very similar nature. They also serve the same purpose, in particular in the case of jackets designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing products. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, headgear and clothing products such as the opponent’s jackets are considered similar.

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 considered average.

3. The signs

FIRST B	FIRST BASE
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 non-English-speaking part of the relevant public, since for this part of the public the signs’ common element ‘FIRST’ have no meaning.

Both marks are word marks.

As stated above, ‘FIRST’ placed first in both signs, is not understood by the non-English speaking part of the public (and is distinctive), while the ‘B’ (the earlier mark) will be understood as a letter in the alphabet (which is distinctive for the relevant goods) and the word ‘BASE’ will be understood by a significant part of the relevant public, as meaning a fundament or something fundamental, which has no meaning in relation to the relevant the goods and is distinctive. For the part of the public that does not understand the meaning of ‘BASE’, it will be perceived as a fanciful and distinctive element.

Visually, the signs coincide in their initial words ‘FIRST’. Both signs contain a second element consisting of the letter ‘B’; the earlier mark contains a single ‘B’ and the contested sign the word ‘BASE’. Therefore, the signs only differ in the string of letters ‘*ASE’. Taken into account that consumers generally pay more attention to the initial element of a sign, since they read from left to right, the Opposition Division finds the signs to be visually highly similar.

Aurally, the signs coincide in that their identical word element ‘FIRST’ will be pronounced first in both signs. Moreover, their second verbal element starts with a ‘B’. However, they differ in that the second verbal element of the contested sign contains three more letters ‘BASE’. Bearing this in mind, the signs are aurally similar to an average degree.  

Conceptually, the word ‘FIRST’ will not be understood by the non-English-speaking part of the relevant public, while the ‘B’ in the earlier mark will be perceived as a letter in the alphabet and the word ‘BASE’ will understood by a significant part of the non-English speaking part of the public (e.g. in Spain where the equivalent word is identical). Therefore, the signs are conceptually not similar. This applies both to the part of the relevant public that understands the word ‘BASE’ and the one that does not, due to the concept of the letter ‘B’ (in the earlier mark).

The applicant argues that the contested sign will give associations ‘to the first base(man) in baseball’. Although ‘first base’ is an expression in baseball, the non-English-speaking part of the relevant public will not see any link to this expression in the contested sign. The applicant’s reference to (12/01/2006, C-361/04 P, Picaro, EU:C:2006:25) is not relevant in this case, since that case tackled the situation where the relevant public immediately saw different concepts in the conflicting signs and therefore did not confuse them.  

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.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. 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

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29). The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 16).

According to the same line of case-law, 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). In addition, the global assessment of the likelihood of confusion entails a certain interdependence between the factors taken into account and, in particular, between the similarity of the trade marks and the similarity of the goods or services covered. Accordingly, a low degree of similarity between those goods or services may be offset by a high degree of similarity between the marks, and vice versa (23/10/2002, T-6/01, Matratzen, EU:T:2002:261, § 25).

In its observations, the applicant argues that the element ‘FIRST’ in the earlier trade mark has a low distinctive character given that there are many trade marks that include this word element ‘in combination with different word and/or device elements’. In support of its argument the applicant refers to that there are 220 hits ‘for EU marks that contain FIRST for goods in class 25’. ‘This shows that the element FIRST is very common in the clothing industry and consumers will not perceive this element by itself to be a source identifier, i.e. a trademark’.

As stated in section c) of this decision, the non-English-speaking part of the relevant public will not see any concept in the word ‘FIRST’ and will perceive it as distinctive. Moreover, 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 ‘FIRST’. Under these circumstances, the applicant’s claims must be set aside.

In the present case, the goods are partly identical, partly similar and are partly dissimilar. Moreover, the signs are visually highly similar and aurally similar to an average degree. The earlier mark is of normal distinctiveness and the degree of attention displayed by the relevant public is average. Although the signs are conceptually different, their initial element is identical and the signs cover (partly) identical goods. In this regard, 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).

Considering all the above, there is a likelihood of confusion on the part of the non-English-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.

It follows from the above that the contested trade mark must be rejected for the goods found to be identical or similar to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Martina GALLE

Christian RUUD

Adriana VAN ROODEN

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.