fixers | Decision 2730854 - ASFALTO EN FRIO, S.L. v. Fixers GmbH

Date Published: Sep 28, 2017

OPPOSITION No B 2 730 854

Asfalto En Frio, S.L., C. Pescador, Par 44-45, P.I. La Montaña, 46293 Beneixida, Spain (opponent), represented by Sanz Bermell International, Calle Jativa, 4, 46002 Valencia, Spain (professional representative)

a g a i n s t

Fixers GmbH, Rudolfstrasse 9, 47228 Duisburg, Germany (applicant), represented by Beiten Burkhardt Rechtsanwaltsgesellschaft mbH, Cecilienallee 7, 40474 Düsseldorf, Germany (professional representative).

On 18/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 730 854 is partially upheld, namely for the following contested services:

Class 37: Coating services for the repair of ships; Ship defence equipment construction services; Providing information relating to shipbuilding; Providing information relating to the repair or maintenance of vessels; Coating services for the maintenance of ships; Naval shipyard services; Removal of marine growths from ship's hulls; Installation of ship interiors; Marine construction; Cleaning of exterior ships' decks; Maintenance and repair of ships; Ship repair; Ship dismantling; Marine fitting out; Ship conversion; Ship maintenance.

2.        European Union trade mark application No 15 286 164 is rejected for all the above services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 15 286 164. The opposition is based on Spanish trade mark registration No 3 102 492 and international trade mark registration No 1 228 136 designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – SPANISH TRADE MARK No 3 102 492

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the evidence filed by the opponent consists of a translation of the registration certificate of the earlier Spanish trade mark No 3 102 492, into English, submitted twice.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark since it does not contain the original registration certificate.

 

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

The opposition continues on the basis of the earlier international trade mark registration No 1 228 136 designating the European Union.

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 and services

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

Class 1: Chemicals products for use in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; soil fertilizers; extinguishing compositions; tempering and soldering preparations; chemical products for preserving foods; tanning substances; adhesives for use in industry; Consolidation accelerators; vulcanization accelerators [prepared chemicals]; accelerators for increasing the speed of the setting of concrete ; adhesives for industrial purposes; hot-melt adhesive; adhesives made of rubber [other than for household or stationery purposes]; adhesives [sizing]; Structural adhesives for use in construction; ornamental paving adhesives  adhesives for manufactured products of  cement; adhesives for floor coatings; cement additives for finishing wells; additives to prevent the unmixing of concrete underwater; additives for concrete; chemical additives for rubber vulcanization; chemical additives for paints; chemical additives for use in asphalt binders; chemical additives for use in the repair of asphalt; chemical additives for use in the repair of asphalt ; chemical additives for use in the production of coatings; mold release agent for asphalt; binding agents for roofs applied while hot; binding agents for mixtures with mortars; binding agents for mixtures with sealing materials; mineral sands; photosensitive coatings for resins; catalysts; adhesive cement; cement (waterproofing preparations), other than paints; Coating compositions [chemicals preparations], other than paints; chemical compositions for hardening concrete; Chemical compositions for delaying the setting of concrete; chemical compositions for sealing slate; chemical compositions for use in the civil engineering industry; chemical compositions for use in construction; compounds made of adhesives and fillers to repair joints; Liquid elastomers; Sand thickeners for cores; chemical stabilizers for use in floor coatings; damp-proofing preparations for masonry other than paints; chemical preparations for the manufacture of pigments; chemical preparations for the manufacture of paints; soil conditioning preparations.

Class 2: Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; dyestuffs; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; binding agents for paints; organic thickening agents for paints; stabilizing agents for use in paints; binding agents for paints, cements, putty; anti-fouling paints; asphalt varnish; ceramic paints; colorants; coating compositions in the form of paint; road marking compositions [other than glass granules]; compositions for marking landing strips [except glass granules]; thermoplastic compounds for road marking [paints]; emulsions in the form of paints and coatings for roofing felt [paints]; materials for repaving [coatings] in the form of paint; road marking materials in the form of paint; liquefied plastic materials in the form of paint for surface coatings; paints; paint for floors; industrial paints for concrete surfaces.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible tubes, not of metal; acrylic resins [semi-finished products]; sealing agents for use in the building industry; rubber shock insulation; insulation in the form of floor coverings; insulation for construction; insulators; insulators made of fiber cement; insulating paints to absorb vibrations of rubber; rail supports [insulators]; semi-finished rubber in the form of machines; reclaimed rubber caulking compounds; rubber compounds vulcanizable at low temperatures; elastomers; non-metallic structures for noise reduction [sound-proofing]; raw and semi-processed materials included in this class, for non-specified purposes; plastic materials in the form of plates [semi-processed products]; insulating refractory materials; materials and articles for insulation; finished or semi-finished products, of materials included in this class, with specified purposes; resins in liquid form [semi-processed]; polymer resins, semi-processed, in the form of bundles; polymer resins, semi-processed, in the form of strips; polymer resins, semi processed, in the form of plates; artificial resins [semi-finished]; synthetic resins; foamed synthetic resins [semi-processed].

Class 19: Non-metallic building materials; rigid pipes, not of metal, for building; asphalt, pitch and bitumen; transportable buildings, not of metal; monuments, not of metal; binding material for road repair; tar; tar containing materials for use in roofing; asphalt, pitch and bitumen; asphalt paving; asphalt for building; bituminous products for building; roads of non-metallic materials; cement; sand and gravel for building and asphalt paving; grout for paving.

Class 35: Wholesale and retail services, in stores and via global computer networks, of building products, asphalts, grout, paints and other coatings, sand and gravel, chemical compositions for these products, semi-processed chemicals, and other paving materials.

Class 37: Services of construction, repair, asphalting, digging trenches and pipelines; services applying grout and painting floors; rental of machinery for construction, for road asphalting, for digging trenches and pipelines, for applying grout and painting floors; assembly of trapdoors in floors; grouting services; services of applying insulation, coatings and coverings; maintenance of streets and roads; construction of sports venues; managing and supervising of construction projects on-site; soil stabilization; information and advice relating to these materials.

The contested goods and services are the following:

Class 7: Marine mounted dock cranes; Automatic grapnels for marine purposes; Steam marine engines [not for land vehicles]; Electric power generators for ships; Stern drives for ships; Hydraulically driven winches for marine use; Power transmissions for water vehicles; Boat motors; Marine engines; Marine propulsion units; Boat lifts; Engines for boats; Marine pumps; Thrusters [marine propulsion apparatus]; Internal combustion engines for boats.

Class 12: Disengaging gear for boats; Portholes; Marine porthole window closures; Fenders for ships; Cable ships; Hatch covers being structural parts of ships; Boat rudders; Ships' hulls; Ships; Ship ballast tanks [structural components of vessels]; Cleats [nautical]; Marine masts; Funnels for ships; Screws [propellers] for ships; Spars for ships; Steering gears for ships; Steering gears for ships [automatic]; Stabilisers for reducing the motion of ships; Ships' steering gear [other than automatic]; Steering wheels for vessels [for vessels]; Timbers [frames] for ships; Inclined ways for boats; Tankers [ships]; Vessels [boats and ships].

Class 35: Provision of an on-line marketplace for buyers and sellers of goods and services; On-line auctioneering services via the Internet; On-line auction bidding for others; On-line data processing services; Providing on-line auction services; Online advertisements; Provision of space on web-sites for advertising goods and services; Provision of online price comparison services; Promotion, advertising and marketing of on-line websites; Arranging commercial transactions, for others, via online shops.

Class 37: Coating services for the repair of ships; Ship defence equipment construction services; Providing information relating to shipbuilding; Providing information relating to the repair or maintenance of vessels; Coating services for the maintenance of ships; Naval shipyard services; Marine launching services; Removal of marine growths from ship's hulls; Marine lifting services; Installation of ship interiors; Marine construction; Cleaning of exterior ships' decks; Maintenance and repair of ships; Ship repair; Ship dismantling; Marine fitting out; Marine dry docking services; Ship conversion; Ship maintenance.

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.

As stated in the Office’s Guidelines on Comparison of Goods and Services, where the Office is unable to clearly determine the exact scope of protection of vague terms, the vagueness of the wording is not a sufficient basis in itself for arguing in support of identity or similarity. Vague term(s) may only be taken into account in their most natural and literal meaning and may not be construed as relating to goods, qualities, properties, methods of use, etc. to which that term is not expressly limited (see decisions of 24/07/2003, R 559/2002-4, MOBILIX / OBELIX, §17; 02/12/2015, R 391/2014-4 Powermatic / POWRMATIC et al, § 29, 33).

Contested goods in Classes 7 and 12

The contested goods in Class 7 are essentially specific machines for marine use, motors, engines, generators, transmission components for boats and ships.

The contested goods in Class 12 are essentially apparatus for locomotion by water (boats, ships, etc.) and some of their parts and fittings such as portholes, fenders, rudders, steering gear, funnels, etc.

These goods are not similar to the opponent’s goods which mainly consist in chemicals products used in industry, science and agriculture in Class 1; paints, colorants and preparations used for the protection against corrosion in Class 2; electrical, thermal and acoustic insulating materials and plastics, being for use in industry in Class 17 and non-metallic building materials in Class 19.

These goods differ as regards their nature, purpose, method of use, distribution channels and manufacturers. Furthermore, they are neither in competition with each other nor complementary to each other.

Likewise, the above mentioned contested goods are not similar to the opponent’s services in Class 35 which cover wholesale and retail services of building products, asphalts, grout, paints and other coatings, sand and gravel, chemical compositions for these products, semi-processed chemicals, and other paving materials. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail and wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This applies also to wholesale services. This condition is not fulfilled in the present case since the goods at issue are not identical.

Finally, the contested goods in Classes 7 and 12 are not similar to the opponent’s services in Class 37 which cover services of construction, repair, asphalting, digging trenches and pipelines; services applying grout and painting floors; rental of machinery for construction, for road asphalting, for digging trenches and pipelines, for applying grout and painting floors; assembly of trapdoors in floors; grouting services; services of applying insulation, coatings and coverings; maintenance of streets and roads; construction of sports venues; managing and supervising of construction projects on-site; soil stabilization; information and advice relating to these materials. These goods and services do not have the same natures, purposes, they are not rendered/manufactured by the same companies and they are neither in competition nor complementary. In particular, the opponent’s repair is considered as a vague general indication. According to the Guidelines on Classification and the Common Communication on the Common Practice on the General Indications of the Nice Class Headings (28/10/2015), repair in Class 37 lacks the clarity and precision to specify the scope of protection that they give as it simply states that these are repair services, and not what is to be repaired. As the goods to be repaired may have different characteristics, the repair services will be carried out by service providers with different levels of technical capabilities and know-how, and may relate to different market sectors. Therefore, in the absence of an express limitation by the opponent clarifying the vague term, repair cannot be related to the repair of any specific goods.

Therefore, the contested goods in Classes 7 and 12 are not similar to the opponent’s goods and services in Classes 1, 2, 17, 19, 35 and 37.

Contested services in Class 35

The contested online advertisements; provision of space on web-sites for advertising goods and services; promotion, advertising and marketing of on-line websites are services which belong to the category of advertising services and which consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity.

These services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, these services are not similar to the opponent’s goods and services in Classes 1, 2, 17, 19, 35 and 37. In particular, these services are not similar to the opponent’s wholesale and retail services since these services do not have the same natures, purposes, they are not rendered by the same companies and they are neither in competition nor complementary.

The contested provision of online price comparison are services which provide information on which people and business can compare prices before making a purchasing decision. The contested provision of an on-line marketplace for buyers and sellers of goods and services are services rendered by professionals which provide a platform for commercial transactions; the contested arranging commercial transactions, for others, via online shops are services rendered by intermediaries in order to arrange commercial transactions and the contested on-line data processing services are clerical services which provide assistance and support to other businesses. These services are not similar to the opponent’s goods and services since they differ as regards their nature, purpose, providers/manufacturers and they are neither complementary nor in competition. Even though some of the applicant’s services are provided to facilitate commercial transactions, they are not similar to the opponent’s wholesale and retail services which consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. These services do not have the same nature and purpose and they are not provided by the same entities.

The contested on-line auctioneering services via the Internet; on-line auction bidding for others; providing on-line auction services are public sales at which goods are sold to the highest bidder. According to the Office’s practice (see Guidelines for Examination in the Office, Part C, Opposition, Section 2: Double identity and likelihood of confusion, Chapter 2: Comparison of goods and services, page 56), similarity between these services and the retail of specific products will only be found insofar as the retail services relate to goods that are commonly sold at auctions, such as objects of art. In the present case and in the absence of any observations from the opponent to the contrary, the Opposition Division considers that the opponent’s retail services relate to goods (building products, asphalts, grout, paints and other coatings, sand and gravel, chemical compositions for these products, semi-processed chemicals, and other paving materials) which are not commonly sold at auctions. Therefore, these services are not similar. The above mentioned contested services are even more dissimilar to the remaining opponent’s goods and services in Classes 1, 2, 17, 19 and 37 since they do not have the same natures, purposes, they are not manufactured/provided by the same companies and they are neither in competition nor complementary.

Contested services in Class 37

The contested ship defence equipment construction services; marine construction; providing information relating to shipbuilding are included in the opponent’s broad category services of construction. Therefore, they are identical.

The contested naval shipyard services are services which aim is to repair and build ships in one place called shipyard or dockyard. Therefore, they are included in the opponent’s services of construction and, are therefore, identical.

The contested coating services for the maintenance of ships; coating services for the repair of ships are included in the broad category of the opponent’s services of applying coatings and coverings. Therefore, they are identical.

The contested maintenance of ships; ship maintenance; removal of marine growths from ship's hulls; cleaning of exterior ships' decks are similar to the opponent’s services of applying insulation, coatings and coverings which include insulation, coatings and coverings in relation to ships. Therefore, these services are likely to be rendered by the same specialised companies to the same public.

The contested installation of ship interiors; marine fitting out are similar to the opponent’s services of construction to the extent that the latter include ships’ construction. Therefore, these services are likely to be rendered by the same specialised companies to the same public.

The contested ship dismantling is the process of breaking down a ship when it completes its operational life. The contested ship conversion are services which are often carried out as an alternative to building a new vessel. These services are similar to the opponent’s services of construction to the extent that the latter includes ships’ construction. Therefore, these services are carried out by the same specialised companies to the same public and ship conversion and construction of ships may be in competition.

The contested repair of ships; ship repair and the opponent’s repair services coincide in their nature. Their purpose is also the same in the sense that they are provided to fix something broken or damaged. To that extent these services are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its services, it cannot be assumed that they coincide in other criteria. For the same reasons, the contested providing information relating to the repair or maintenance of vessels are similar to a low degree to the opponent’s repair services.

The contested marine launching services; marine lifting services; marine dry docking services are services rendered by marinas in relation to yachts and small boats and by ports in relation to large ships and cargo. These services are not similar to the opponent’s services in Class 37. Even though the opponent’s services include construction services in relation to boats and ships, these services and the applicant’s marine launching services; marine lifting services; marine dry docking services are provided by different companies (companies specialised in shipbuilding or boat building and maintenance of boats and ships versus marina and ports). The above mentioned contested services are also not similar to the remaining opponent’s goods and services in Classes 1, 2, 17, 19 and 35 since they do not have the same natures, purposes, they are not manufactured/provided by the same companies and they are neither in competition nor complementary.

 

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 services found to be identical or similar are directed at business customers with specific professional knowledge or expertise. Taking into consideration the specialised nature of the services provided in relation to expensive and sophisticated goods (ships), it is expected that the degree of attention of the public will be high.

3. The signs

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 verbal elements of the signs are meaningless in certain territories, such as Spain. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Spanish-speaking part of the public.

The verbal elements of the signs ‘FIXER’ and ‘fixers’ are meaningless for the relevant public and thus, distinctive to an average degree.

The signs have no elements that could be considered clearly more dominant than other elements.

However, when signs consist of both verbal and figurative components, 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).

Regarding the stylisation, including the colours, and the figurative elements of the signs (the stylised letter ‘F’ of the earlier sign placed in a circular shape at the beginning of the sign in black and blue and the different stylised waves in different shades of blue placed below the verbal element of the contested sign), it is considered that they perform an essentially decorative function vis-à-vis the verbal elements of the marks. The public is used to perceive such depictions as ornamental elements and will instantly attribute more trade mark significance to the verbal elements of the signs.

Visually, the signs coincide in the letters ‘F-I-X-E-R’. The distinctive verbal element of the earlier sign is fully included in the verbal element of the contested application which only differs in the additional final letter ‘S’. Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Therefore, the difference lying in the final letter of the contested sign is not particularly relevant. Even though the signs further differ in their stylisation and their figurative elements, account should be taken that the colours used are almost the same (turquoise, navy blue, dark blue/black). Taking into account the above considerations about the distinctive elements of the signs, the signs are considered visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛ F-I-X-E-R’ present identically in both signs. The pronunciation only differs in the sound of the final letter ‛S’ of the contested mark, which has no counterpart in the earlier sign. However, due to its position at the very end of the sign, it will largely go unnoticed by the public and does not introduce a significant difference between the signs from a phonetic point of view. Due to its high stylisation and decorative purpose, the stylised letter ‘F’ of the earlier sign is not likely to be pronounced. Therefore, the signs are highly similar.

Conceptually, the verbal elements of the signs are meaningless. The figurative element of the earlier mark is also devoid of any concept as it will be perceived as the first letter of the element ‘FIXER’ and it is essentially decorative, as the figurative element of the contested sign. 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.

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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 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.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

The goods and services are partly identical, partly similar and partly dissimilar. The inherent distinctiveness of the earlier mark is normal.

The signs are visually and aurally similar to a high degree and they have no concepts that would help to differentiate them. The dissimilarities between the signs are insufficient to counterbalance the abovementioned similarities.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Spanish-speaking part of the public, even with a high degree of attention. Therefore, the opposition is partly well founded on the basis of the opponent’s international trade mark registration designating the European Union. 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 services found to be identical or similar to those of the earlier trade mark. This is also valid for the services similar to a low degree given the relevant similarities between the signs.

The rest of the contested goods and services 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 and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Catherine MEDINA

Frédérique SULPICE

Boyana NAYDENOVA

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.