green-boxX | Decision 2230533 - GREEN BOX, S.L. v. NESKA Schiffahrts- und Speditionskontor Gesellschaft mit beschränkter Haftung

Date Published: Oct 11, 2017

OPPOSITION No B 2 230 533

Green Box, S.L., Carrer dels Fusters, 5, 46290 Alcácer, Valencia, Spain (opponent), represented by Elzaburu, S.L.P., Miguel Ángel, 21, 28010 Madrid, Spain (professional representative)

a g a i n s t

Neska Schiffahrts- und Speditionskontor Gesellschaft mit beschränkter Haftung, Kasteelstraße 2, 47119 Duisburg, Germany (applicant), represented by Grüter, Angerstr. 14-18, 47051 Duisburg, Germany (professional representative).

On 24/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 230 533 is partially upheld, namely for the following contested goods:

Class 6:        Containers of metal [storage, transport]. 

2.        European Union trade mark application No 11 612 397 is rejected for all the above goods. It may proceed for the remaining 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 11 612 397. The opposition is based on Spanish trade mark registrations No 1 513 050 and No 1 506 950, Greek trade mark registration No 133 809 and international trade mark registration No 614 249 designating the Czech Republic, France, Germany, Italy, Poland and Portugal. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARKS

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 Spanish trade mark registrations No 1 513 050 and No 1 506 950.

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, inter alia, Spanish trade mark registrations No 1 513 050 and No 1 506 950 on which the opposition is based.

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

The contested application was published on 28/05/2013.The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in Spain from 28/05/2008 to 27/05/2013 inclusive.

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

Spanish trade mark No 1 513 050:

Class 16:        Boxes made of cardboard or paper.

Spanish trade mark No 1 506 950:

Class 20:        Boxes and cases made of wood or plastic materials.

According to Rule 22(3) EUTMIR, the evidence of use shall 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 07/12/2015, in accordance with Rule 22(2) EUTMIR, the Office gave the opponent until 12/02/2016 to submit evidence of use of the earlier trade marks. Following the opponent’s request, this time limit was extended by two months, until 12/04/2016.

On 12/04/2016, within the time limit, the opponent submitted the following evidence of use:

• Annex 1: This annex contains the following documents:

• Printouts of the opponent’s website www.greenbox.es in English and Spanish, showing the sign  at the top of the pages and the indication ‘Copyright 2011’ at the bottom of the extracts. These printouts refer to boxes, wooden structures and pallets for preserving, transporting and displaying fruit and vegetables.

• Printouts from the digital internet archive service Wayback machine, showing the opponent’s website www.greenbox.es as it was on 29/04/2008, 07/02/2009, 07/12/2009, 18/06/2010 and 28/09/2010. These extracts show the sign  at the top of the pages and refer to boxes and pallets for fruit.

• Invoices in Spanish for web hosting and the domain name www.greenbox.es, issued to the opponent and dated between 15/01/2011 and 03/07/2011.

• Annex 2: A set of 16 non-consecutive invoices dated between 29/07/2008 and 10/08/2012 and issued by Green Box, S.L. (the opponent) with an address in Spain to different clients with addresses in France, Germany, Greece, Italy and Spain. These invoices refer to sales of, inter alia, items indicated as ‘COLLAR GREEN BOX G-70’, ‘MADERA COMPLETA GREEN BOX G-70’, ‘GREEN BOX G-70’, ‘GREEN BOX G-100’, ‘GREEN BOX G-200’. The sales of goods marketed under the sign ‘GREEN BOX’ amount to several thousand euros per invoice.

• Annex 3: Copies of undated promotional catalogues in English, Spanish, French and German in relation to boxes, wooden structures and pallets in different sizes for preserving, transporting and presenting fruits and vegetables at points of sale. The catalogues show the indications  /  on some of the pages and contain text references to goods such as ‘the largest Green Box, the G 100’, ‘Green Box G70’, ‘Green Box G80’, from which it is apparent that they refer to the same goods which appear in the invoices. Some of the text references to the goods refer to the plastic trade palette and the wood structure of some of the boxes, while other references mention how to assemble and disassemble the cardboard box.

• Annex 4: A set of invoices dated between 02/11/2007 and 10/09/2012 issued to the opponent by different service providers for advertising and publicity services.

• Annex 5: Copies of printed publications in different languages (English, Spanish, French, German), dated between 2007 and 2012, containing advertisements of the opponent’s boxes with the trade mark  and covering various countries, among which Spain (e.g. the magazine Mercados, dated April 2008).

• Annex 6: A decision of the Opposition Division in opposition B 2 093 154 dated 21/07/2014, accepting that genuine use has been proven by the opponent for all the goods for which Spanish trade marks No 1 513 050 and No 1 506 950 are registered.

• Annex 7: A set of 11 non-consecutive invoices dated between 05/10/2012 and 27/08/2013 and issued by Green Box, S.L. (the opponent) with an address in Spain to different clients with addresses in France, Germany, Greece, Italy, the Netherlands and Portugal. These invoices refer to sales of, inter alia, items indicated as ‘GREEN BOX BG-70’, ‘GREEN BOX BG-70 DESMONTADO’, ‘GREEN BOX MG-70’, ‘GREEN BOX G-100’. The sales of goods marketed under the sign ‘GREEN BOX’ amount to several thousand euros per invoice.

Place of use

The documents submitted demonstrate that the place of use is Spain. The invoices are in Spanish and were issued directly by the opponent (a Spanish company) to different entities with addresses in, inter alia, Spain.

Furthermore, according to Article 15(1), second subparagraph, point (b) EUTMR, affixing the European Union trade mark to goods or the packaging thereof in the European Union solely for export purposes also constitutes use within the meaning of paragraph 1. This principle also applies to earlier national trade marks. Therefore, the invoices issued to clients in France, Germany, Greece, Italy, the Netherlands, Portugal and Spain show that the goods were distributed by a Spanish company with an address in Alcácer, Valencia, Spain. This clearly shows that the goods were exported from the relevant territory.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use, namely Spain.

Time of use

Most of the evidence, including the majority of the invoices, submitted as Annexes 2 and 7, the website printouts (Annex 1) and the copies of printed advertisements (Annex 5), is dated within the relevant period (from 28/05/2008 to 27/05/2013 inclusive). Furthermore, the opponent also submitted undated product catalogues. These documents have to be seen in conjunction with the dated evidence and, therefore, may still be taken into consideration. Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

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

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

The documents filed, in particular the invoices, supported by the product catalogues and printed advertisements, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope and the duration and frequency of use.

The invoices issued by the opponent (Annexes 2 and 7) relate to the full duration of the relevant period and demonstrate the frequency of use of the marks during that period. Although the evidence does not indicate a particularly high commercial volume of use, it demonstrates that sales of goods offered under the earlier marks were made to various clients in Spain or were exported from Spain to clients in other countries. Use of the mark need not be quantitatively significant for it to be deemed genuine. Moreover, the fact that the invoices are non-consecutive and cover an extensive period, from 2008 to 2013, must also be taken into consideration. All this permits the inference that the invoices have been submitted merely as examples of sales and do not represent the total amount of sales of goods under the earlier marks realised by the opponent during the relevant period. Therefore, it is clear from the evidence submitted that the opponent distributed or provided goods under the sign  in the relevant market, and this gives the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period. In any case, the documents prove that use of the marks has been more than mere token use.

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

Nature of use

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

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

The purpose of Article 15(1)(a) EUTMR, which avoids imposing strict conformity between the form in which the trade mark is used and the form in which it was registered, is to allow its proprietor, when exploiting it commercially, to vary it in such a way that, without altering its distinctive character, enables it to be better adapted to the marketing and promotion requirements of the goods or services concerned (23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

It is appropriate to consider whether the mark as used contains differences from its registered form that would affect its distinctive character or, in spite of some differences, the mark as used and its registered form are essentially the same.

Earlier Spanish trade marks No 1 513 050 and No 1 506 950 consist of the distinctive verbal element ‘GREENBOX’.

The invoices show the word mark ‘GREEN BOX’ used together with other descriptive indications. The product catalogues, website extracts and printed publications show use of the words ‘GREEN BOX’ in a rather standard title case letters, namely as follows: .

With regard to the use of the sign as two words, the Opposition Division considers that the addition of the space between the elements ‘GREEN’ and ‘BOX’ is a negligible difference and the signs as used and as registered are broadly equivalent. Although such use gives the mark a slightly different structure from the sign ‘GREENBOX’, as registered, this does not affect the fact that, for the majority of the relevant public, neither the verbal element ‘GREENBOX’, as registered, nor the elements ‘GREEN BOX’, as used, have a clear or univocal meaning. Consequently, in both cases these elements will be perceived as fanciful terms with no meanings. The presence of a space in the sign as used may not be given much attention and does not suffice to convey a different impression of that sign.

The additional word elements used with the sign ‘GREEN BOX’ in the invoices refer to characteristics of the goods offered by the opponent, such as the size and type of boxes. Therefore, these verbal elements will not be perceived as indications of the commercial origin of the goods at issue.

The depiction of the words ‘GREEN BOX’ in the way shown above, , constitutes an acceptable means of bringing the mark in question to the public’s attention and, consequently, does not affect the distinctiveness of the verbal element ‘GREENBOX’, which has been registered as a word mark.

The applicant argues that the expression ‘GREEN BOX’ refers to a type of goods, namely to indicate that the products marketed by the opponent are eco-friendly boxes, and cannot, therefore, function as an indication of commercial origin. The words ‘GREEN BOX’ do not belong to the language in the relevant territory, namely Spanish, and are not generally used and known by the public in the relevant territory, where the equivalents of these words are ‘caja’ (meaning ‘box’) and ‘verde’ (meaning ‘green’). It is unlikely that the majority of the relevant Spanish public will understand these terms. Therefore, in the absence of any indications to the contrary, it must be assumed that the relevant consumers will not associate the words ‘GREEN BOX’ with any meaning relating to the goods at issue. Therefore, the relevant public will perceive the earlier signs as a fanciful and distinctive expression.

Therefore, the use of the mark in the manner described above does not materially affect the distinctiveness of the opponent’s marks.

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

Overall assessment

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

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach the minimum level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

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

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.

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

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

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

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

The earlier marks are registered for the following goods:

Spanish trade mark No 1 513 050:

Class 16:        Boxes made of cardboard or paper.

Spanish trade mark No 1 506 950:

Class 20:        Boxes and cases made of wood or plastic materials.

In the present case, the evidence proves use only for boxes and pallets of wood, plastics and cardboard for preserving, transporting and displaying fruits and vegetables. These goods can be considered to form objective subcategories of the abovementioned goods of the opponent in Classes 16 and 20 (covered by the respective trade mark), namely the following:

Class 16:        Boxes made of cardboard or paper for packaging, transport and commercial use of foodstuffs.

Class 20:        Boxes and cases made of wood or plastic materials for packaging, transport and commercial use of foodstuffs.

Therefore, the Opposition Division considers that the evidence shows genuine use of the trade marks only for the abovementioned goods.

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.

As seen above, the Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s Spanish trade mark registrations No 1 513 050 and No 1 506 950.

1. The goods and services

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

Spanish trade mark No 1 513 050:

Class 16:        Boxes made of cardboard or paper for packaging, transport and commercial use of foodstuffs.

Spanish trade mark No 1 506 950:

Class 20:        Boxes and cases made of wood or plastic materials for packaging, transport and commercial use of foodstuffs.

The contested goods and services are the following:

Class 6:        Containers of metal [storage, transport]. 

Class 39:        Transport. 

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.

In relation to the applicant’s arguments about the actual use in the market of the trade marks in conflict for different goods and services (boxes for foodstuffs in the case of the opponent’s marks and containers used with fuels in the case of the applicant’s mark), it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods or services covered by the contested application are intended to be marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the applicant. Therefore, when considering whether or not the EUTM application falls under any of the relative grounds for refusal, it is the applicant’s rights and their scope of protection as applied for that are relevant.

Contested goods in Class 6

The contested containers of metal [storage, transport] may be intended for the storage or transport of any goods, including foodstuffs. The opponent’s boxes and cases made of wood or plastic materials for packaging, transport and commercial use of foodstuffs in Class 20 are containers for the storage and transport of specific goods. Despite their different nature, the goods under comparison have the same purpose of storage of goods and the same method of use. These goods may be produced by the same companies and distributed through the same channels of trade to the same relevant public. Furthermore, they may be in competition. Therefore, these goods are highly similar

Contested services in Class 39

The contested transport services are not considered similar to the opponent’s goods in Classes 16 and 20. Transport services refer, for example, to a fleet of lorries or ships used for moving goods from A to B. These services are provided by specialist transport companies whose business is not the manufacture and sale of those goods. Although a certain link of complementarity cannot be denied, the link is not sufficient. A consumer would not expect the company offering transport services to produce the opponent’s goods, or the manufacturer of these goods to offer transportation services. The nature, purpose and methods of use of these goods and services are different. They do not have the same distribution channels and they are not in competition. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Therefore, they are dissimilar.

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 of the earlier mark target exclusively business customers with specific professional knowledge or expertise, while the contested goods are broadly formulated and may target both general and professional public. Therefore, the relevant public for assessing likelihood of confusion will be the professional public only (14/07/2005, T-126/03, Aladin, EU:T:2005:288, § 81). The degree of attention of the relevant public is considered to be average.

3. The signs

GREENBOX
Earlier trade marks	Contested sign

The relevant territory is Spain.

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).

Both earlier Spanish trade mark registrations are for the word mark ‘GREENBOX’. In the case of word marks, the word as such is protected, not its written form. Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters, or in a combination thereof.

The contested sign is a figurative mark, consisting of the verbal element ‘green-boxX’, depicted in red rather standard letters over a green rectangular background, where the letters ‘g-r-e-e-n’ and ‘b-o-x’ are in lower case and the last letter ‘X’ is in upper case.

None of the marks have any element that could be clearly considered more dominant (visually eye-catching) than other elements.

The marks under comparison and their constitutive elements (in the case of the contested sign) have no meanings for the vast majority of the relevant Spanish public.

Consequently, the earlier marks have no elements that could be clearly considered more distinctive than other elements.

The green rectangle, which serves as a background to the verbal elements of the contested sign, will be perceived as a decorative element and will have less importance in the visual impact of the mark for the relevant consumers. Therefore, the verbal element is the most distinctive element of the contested sign.

In its observations the applicant argues that the common elements ‘GREEN’ and ‘BOX’ / ‘BOXX’ of the marks under comparison are non-distinctive for the relevant goods and refers to a decision of the Office in case R-1371/2014-4, Green Box, where the Boards of Appeal has refused protection of the trade mark applied by the opponent in the present proceedings for the European Union in relation to goods in Classes 6, 16 and 20 on the basis of Article 7(1)(b) and (c) and Article 7(2) EUTMR. Indeed, the Boards of Appeal have found the expression ‘GREEN BOX’ as a whole to be devoid of distinctive character for the English-speaking part of the public in the European Union (paragraph 23 of the decision). Nevertheless, this conclusion does not imply that the words ‘GREEN BOX’ are such basic and commonly known English words as to be bound to be known by most of the relevant public throughout the whole European Union. The Opposition Division is of the opinion that a substantial part of the relevant Spanish public will not be familiar with the meaning of the English words ‘GREEN’ and ‘BOX’. For that part of the public the marks under comparison do not convey any meanings, as they do not exist in Spanish and are not similar to the Spanish equivalents of these words, namely ‘caja’ (meaning ‘box’) and ‘verde’ (meaning ‘green’).

Visually, the signs coincide in the letters , ‘G-R-E-E-N-(*)-B-O-X-(*)’ which are the only letters constituting the earlier marks, ‘GREENBOX’, and are fully included in the same order in the verbal element of the contested sign, ‘green-boxX’. They differ in the additional final letter ‘X’ at the end of the contested sign and in that the contested sign contains a hyphen between the elements ‘GREEN’ and ‘BOXX’, whereas the earlier mark consists of a single word, ‘GREENBOX’. They also differ in the particular graphical depiction of the contested sign, consisting of a green rectangular background and the colour and stylisation of its verbal element, which is not particularly striking and will be perceived as an ordinary graphical means of bringing the verbal element to the attention of the public.

Despite the differences in their structures, the marks under comparison are visually similar to a high degree on account of their coinciding letters.

Aurally, the pronunciation of the signs is identical, since the additional letter ‘X’ at the end of the contested sign is not likely to be pronounced. The fact that the earlier marks consist of a single word while the contested sign consists of two separate elements does not influence this finding.

Conceptually, none of the signs has a meaning for the public in the relevant territory. 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 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 marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have 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 marks must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 8 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22).

As seen above, the goods and services under comparison are partly highly similar and partly dissimilar.

Despite the differences in their structures, the letter ‘X’ at the end of the contested sign and this sign’s overall graphical depiction, the signs are visually similar to a high degree on account of the letters that they have in common, ‘G-R-E-E-N-(*)-B-O-X-(*)’.

From an aural point of view, the verbal element of the earlier marks, ‘GREENBOX’, is reproduced identically by the verbal elements of the contested sign, ‘GREEN-BOXX’, as the differences in their structures and in the additional letter ‘X’ in the contested sign will not result in different aural perceptions.

Regarding the conceptual comparison, the marks will not be associated with any meaning by the vast majority of the relevant public and will be perceived as fanciful words. Therefore, there is no concept that could render the signs more distinguishable and, thus, avoid the potential for confusion between them that arises from their visual and aural similarities.

Considering all the above, the Opposition Division finds that the differences between the signs are not capable of counteracting the similarity resulting from their coinciding letters, ‘G-R-E-E-N-(*)-B-O-X-(*)’, and that there is a likelihood of confusion on the part of the public for highly similar goods.

Therefore, the opposition is partly well founded on the basis of the opponent’s Spanish trade mark registrations No 1 513 050 and No 1 506 950.

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

The rest of the contested 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 services cannot be successful.

The opponent has also based its opposition on the following earlier trade marks:

• Greek trade mark registration No 133 809 for the word mark ‘GREENBOX’ for the following goods:

Class 16:        Cardboard or paper boxes and cardboard or paper containers.

Class 20:        Non-metallic containers, boxes and containers of wood or of plastic materials.

• international trade mark registration No 614 249 designating the Czech Republic, France, Germany, Italy, Poland and Portugal for the word mark ‘GREENBOX’ for the following goods:

Class 16:        Boxes made of cardboard or paper.

Class 20:        Boxes and cases made of wood or plastic materials.

As follows from all the above, the opposition has been rejected only in respect of the services in Class 39 that were found to be dissimilar to the opponent’s goods.

The applicant requested that the opponent submit proof of use of all earlier marks on which the opposition is based. This request is admissible also in relation to earlier Greek trade mark registration No 133 809 and international trade mark registration No 614 249 designating the Czech Republic, France, Germany, Italy, Poland and Portugal, given that the earlier trade marks were registered more than five years prior to the publication of the contested application.

The evidence of use for these trade marks is the same as that listed above in relation to earlier Spanish trade mark registrations No 1 513 050 and No 1 506 950. Consequently, even if these documents could provide sufficient indications with respect to place, time, extent and nature of use of earlier Greek trade mark registration No 133 809 and international trade mark registration No 614 249, they refer to use for no broader a scope of goods for these trade marks.

As was concluded above, the opponent’s goods in Classes 16 and 20 are dissimilar to the contested transport services in Class 39. Therefore, the outcome cannot be different with respect to the services for which the opposition has already been rejected. No likelihood of confusion exists with regard to those dissimilar services.

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

Begoña URIARTE VALIENTE

Boyana NAYDENOVA

Martina GALLE

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.