KERA-BOND | Decision 2607474

Date Published: Oct 2, 2017

OPPOSITION No B 2 607 474

Mapei S.P.A., Via Cafiero, 22, 20158 Milano, Italy (opponent), represented by Dott. Franco Cicogna & C. SRL, Via Visconti di Modrone, 14/A, 20122 Milano, Italy (professional representative)

a g a i n s t

Henkel AG & Co. KgaA, Henkelstr. 67, 40589 Düsseldorf, Germany (applicant), represented by Joachim Renner, Henkel AG & Co. KgaA, Henkelstr. 67, 40589 Düsseldorf, Germany (employee representative).

On 27/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 607 474 is rejected in its entirety.

2.        The opponent bears the costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 397 426 ‘KERA-BOND’. The opposition is based on Italian trade mark registrations No 271 756 ‘KERABOND’ and No 876 719 ‘MAPEI KERABOND’; European Union trade mark registration No 4 754 685and International trade mark registrations No 800 251 and No 759 200 ‘KERABOND’, both designating the Netherlands, Estonia, the Czech Republic, the European Union, Denmark, Poland, Hungary, United Kingdom, Cyprus, Italy, Bulgaria, Croatia, Spain, France, Slovakia, Austria, Belgium, Germany, Latvia, Portugal, Finland, Slovenia, Lithuania, Greece, Malta, Romania, Sweden, Luxembourg and Ireland. The opponent invoked Article 8(1)(a) and (b), and Article 8(5) EUTMR.

SUBSTANTIATION – Italian trade mark registration No 271 756 and International trade mark registrations No 800 251 and No 759 200

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.

International trade mark registrations No 800 251 and No 759 200

In the present case the notice of opposition was not accompanied by any evidence as regards the international trade marks on which the opposition is based.

On 19/11/2015 the opponent was given two months, commencing after the ending of the cooling-off period, to submit the abovementioned material. This time limit expired on 19/03/2016.

The opponent did not submit any evidence concerning the substantiation of the earlier international trade marks.

Italian trade mark registration No 271 756

The evidence filed by the opponent consists of some extracts from the Italian official database, together with their translations into English.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier trade mark, because there is no indication of the goods covered by the earlier trade mark.

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 the abovementioned earlier marks.

The opposition continues on the basis of the remaining earlier rights, namely European Union trade mark registration No 4 754 685 and Italian trade mark registration No 876 719.

PROOF OF USE

The Opposition Division finds it appropriate to first examine the proof of use in relation to the opponent’s European Union trade mark registration No 4 754 685.

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 earlier European Union trade mark No 4 754 685 on which the opposition is based.

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 12/08/2015. 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 12/08/2010 to 11/08/2015 inclusive.

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

Class 1: Adhesives for ceramic tile applications; chemical products for use in industry; unprocessed artificial resins; unprocessed plastics, adhesives used in industry; preparations for the preservation or waterproofing of cement; fireproofing preparations; adhesives for wall tiles and floorings.

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 01/08/2016 to submit evidence of use of the earlier trade mark.

On 27/07/2016, within the time limit, the opponent submitted evidence of use.

On 11/11/2015, in support of the opposition, the opponent had already submitted documents in relation to the alleged reputation and enhanced distinctiveness of its earlier marks. These documents will also be taken into account for the assessment of the proof of use.

On 15/03/2017, after expiry of the time limit, the opponent submitted additional evidence.

The applicant argues that the evidence submitted by the opponent on 15/03/2017 was late and, therefore, it should not be taken into account.

Even though, according to Rule 22(2) EUTMIR, the opponent has to submit proof of use within a time limit set by the Office, this cannot be interpreted as automatically preventing additional evidence from being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 28). The Office has to exercise the discretion conferred on it by Article 76(2) EUTMR (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 30).

The factors to be evaluated when exercising this discretion are, first, whether the material that has been produced late is, on the face of it, likely to be relevant to the outcome of the proceedings and, second, whether the stage of the proceedings at which that late submission takes place, and the circumstances surrounding it, do not argue against these matters being taken into account (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 33). The acceptance of additional belated evidence is unlikely where the opponent has abused the time limits set by knowingly employing delaying tactics or by demonstrating manifest negligence (18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 36).

In the present case, the Office considers that the opponent did submit relevant evidence within the time limit initially set by the Office and, therefore, the later evidence can be considered to be additional. The fact that the applicant disputed the initial evidence submitted by the opponent justifies the submission of additional evidence in reply to the objection (29/09/2011, T-415/09, Fishbone, EU:T:2011:550, § 30 and 33, upheld by judgment of 18/07/2013, C-621/11 P, Fishbone, EU:C:2013:484, § 36). Furthermore, the additional evidence merely strengthens and clarifies the evidence submitted initially, as it does not introduce new elements of evidence but merely enhances the conclusiveness of the evidence submitted within the time limit.

For the above reasons, and in the exercise of its discretion pursuant to Article 76(2) EUTMR, the Office therefore decides to take into account the additional evidence submitted on 15/03/2017. However, although these documents are considered admissible and are taken into account by the Opposition Division, they do not alter the conclusions based on the assessment of the evidence submitted within the time limit. Therefore, the Opposition Division considers that it was not necessary to specifically invite the applicant to submit its observations with regard to the second batch of documents.

The evidence to be taken into account is the following:

Evidence submitted on 11/11/2015 (first batch)

• Extract from the Chamber of Commerce of Milano, in relation to the company name ‘Mapei S.P.A.’ established on 17/07/1961.

• Extracts from the opponent’s website www.mapei.com, in English and Italian, presenting the company ‘Mapei S.P.A.’ and the ‘KERABOND’ and ‘KERABOND T’ products.

Evidence submitted on 27/07/2016 (second batch)

• Annex 1: Packaging. The sign ‘KERABOND’ together with ‘MAPEI’ is displayed on the packaging of a product described as a ‘cementitious adhesive for ceramic tiles’.

,

• Annex 2: Technical details of the product called ‘cementitious adhesive for ceramic tiles’, written in several languages (English, Portuguese, Italian, Spanish, French). The sign is displayed as follows: .

• Annex 3: Advertisements, in several languages (Italian, English).

• Annex 4: Pictures of exhibitions where the ‘Mapei’ products have been presented, inter alia, the ‘KERABOND’ adhesive.

• Annex 5: Very high number of invoices dated 2011-2016. They are issued by the opponent and are addressed to clients located in several countries within and outside the European Union, such as Italy, Slovenia, Germany, United Kingdom and Malta. They show sales of ‘KERABOND’ and ‘KERABOND T’ products. The amounts and quantities sold are significant, all over the relevant period. The sign is depicted on the top of the invoices and ‘KERABOND’ and ‘KERABOND T’ are listed in the description of the products sold.

• Annex 6: Invoices sent to the opponent in relation to marketing services.

• Annex 7: Packaging, technical details of the product in several languages (French, German, English, Portuguese, Romanian, Spanish, Hungarian), advertisements, publications and extracts from catalogues; all showing the followings signs for a cementitious adhesive for ceramic tiles:

, ,

Evidence submitted on 15/03/2017 (third batch)

• Annex 1: Invoices dated 2011-2013 issued by the opponent and sent to clients located, inter alia, in several countries of the European Union (Slovakia, Slovenia, Hungary, Belgium, the Netherlands, Bulgaria). They show sales of ‘KERABOND’ and ‘KERABOND T’ products. The amounts and quantities sold are significant. The sign is depicted on the top of the invoices and ‘KERABOND’ and ‘KERABOND T’ are listed in the description of the products sold.

• Annex 2: Packaging for ceramic tile adhesive/cementitious adhesive for ceramic tiles. The signs displayed on the packaging are ‘MAPEI KERABOND’ and ‘MAPEI KERABOND T’, as reproduced above.

• Annex 3: Layouts of the packaging.

• Annex 4: Catalogues dated 2011-2016 in Italian and price lists dated 2015, 2013, 2010 and 2008, in Italian. These documents show the sign ‘MAPEI’ on the first page of the catalogues and price lists and the signs ‘KERABOND’ and ‘KERABOND T’ for cementitious adhesive for ceramic tiles/ceramic tile adhesives.

The applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The documents show that the place of use is the European Union. This can be inferred from the technical details of the product, the packaging and the advertisements written in several languages of the European Union and from the addresses in the invoices in Italy, Slovenia, Germany, United Kingdom, Malta, etc.  

Most of the evidence is dated within the relevant period.

The documents filed, namely the invoices, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use. They show that the products have been sold regularly all over the relevant period, to clients located in different Member States of the European Union and the quantities and amounts are significant.

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 evidence clearly shows that the sign has been used as a trade mark.

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

The purpose of this provision is to allow its proprietor to make variations in the sign which, without altering its distinctive character, enable it to be better adapted to the marketing and promotion requirements of the goods or services concerned (judgment of 23/02/2006, T-194/03, EU:T:2006:65, § 50).

The General Court further mentioned that strict conformity between the sign as used and the sign registered is not necessary. However, the difference must be in negligible elements and the signs as used and registered must be broadly equivalent (judgment of 23/02/2006, T-194/03, Bainbridge, EU:T:2006:65, § 50).

In the present case, the earlier mark is the figurative mark . The evidence shows, inter alia, use of the following signs: . These variations do not alter the distinctive character of the registered sign since they clearly reproduce the distinctive elements ‘MAPEI’ and ‘KERABOND’. The different font used and the fact that ‘MAPEI’ appears sometimes before ‘KERABOND’ are differences that do not alter the distinctive character of the earlier mark as registered. The same can be said in relation to the figurative element placed before the word ‘MAPEI’ since it is merely a decorative element which reminds the commonly used recycling symbol.

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.

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

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

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

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods or services.

In the present case, the earlier mark is registered for adhesives for ceramic tile applications; chemical products for use in industry; unprocessed artificial resins; unprocessed plastics, adhesives used in industry; preparations for the preservation or waterproofing of cement; fireproofing preparations; adhesives for wall tiles and floorings in Class 1.

The evidence shows genuine use of the trade mark for ceramic tile adhesive/cementitious adhesive for ceramic tiles.

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).

Use is clearly shown for adhesives for ceramic tile applications; adhesives for wall tiles and floorings and also for adhesives used in industry given that the opponent is not required to prove use of all the conceivable variations of the adhesives used in industry for which the earlier mark is registered and considering the need to reconcile the legitimate interest of the applicant to extend its range of goods in the future.

However, regarding the chemical products for use in industry protected by the earlier mark, even admitting that the ceramic tiles adhesives/cementitious adhesive for ceramic tiles, for which the earlier mark is used, fall within this broader category, they can only be considered to form an objective subcategory of the latter, namely adhesives used in industry. Therefore, the Opposition Division considers that evidence shows genuine use only for the subcategory adhesives used in industry and not for the broad category chemical products for use in industry.

Use is not proved for the remaining goods since there is no mention of these goods in the evidence submitted by the opponent.

Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for adhesives for ceramic tile applications; adhesives used in industry; adhesives for wall tiles and floorings in Class 1 and will only consider these 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.

The assessment proceeds on the basis of European Union trade mark registration No 4 754 685.

1. The goods

The goods on which the opposition is based and for which use has been proved are the following:

Class 1: Adhesives for ceramic tile applications; adhesives used in industry; adhesives for wall tiles and floorings.

The contested goods are the following:

Class 1: Chemical ingredients for cosmetic products.

Class 3: Soaps; Perfumery, essential oils, cosmetics, hair lotions; Dentifrices.

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 1

The contested chemical ingredients for cosmetic products are raw chemical products used in the manufacture of cosmetic products. They target professionals of the cosmetic sector. Therefore, these goods are dissimilar to the opponent’s adhesives for ceramic tile applications; adhesives used in industry; adhesives for wall tiles and floorings. Even though the contested goods contain chemical substances, they differ from the earlier goods as regards their nature (chemical ingredients versus finished products, namely adhesives), purpose and method of use (chemical ingredients for the manufacture of cosmetics versus products for sticking objects together such as glue, cement, paste), as well as their manufacturers and distribution channels. Furthermore, they do not target the same public (professionals of the cosmetic sector versus general public, DIY enthusiasts and professionals of the building sector) and they are not in competition or complementary to each other.

Contested goods in Class 3

The contested soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices are clearly dissimilar to the opponent’s adhesives. These goods have different natures, purposes, methods of use, manufacturers and distribution channels. Furthermore, they are not in competition or complementary to each other.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the goods are obviously not identical.

The opponent has also based its opposition on the Italian trade mark registration No 876 719 ‘MAPEI KERABOND’ for chemicals per use in industry, chemicals for use in science, chemicals for use in photography, chemicals for use in agriculture, horticulture and forestry, artificial and synthetic resins, plastic material dispersions, powder unprocessed plastics, liquid in Class 1.

This earlier trade mark is also subject to obligation of use. The evidence of use listed above is the same for all the earlier marks and from this evidence of use, it is clear that use can only be proved for the subcategory adhesives used in industry (belonging to the broader category chemicals per use in industry). Therefore, as far as this mark is concerned, the opposition is to be considered based on goods which have already been compared to the contested goods and which have been considered clearly dissimilar.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected and the opposition also fails on the grounds of Article 8(1)(a) and (b) EUTMR as far as it is based on Italian trade mark registration No 876 719.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 4 754 685, for which the opponent claimed repute in the EU.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 21/07/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in the European Union prior to that date.

Since the earlier trade mark has been used in relation to part only of the goods for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of that part of the goods.

Therefore, the evidence must show that the reputation was acquired for the following goods:

Class 1: Adhesives for ceramic tile applications; adhesives used in industry; adhesives for wall tiles and floorings.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 11/11/2015 the opponent submitted the evidence listed above (first batch) in the proof of use section. The evidence submitted later cannot be taken into consideration since it was received after the time limit for proving the scope of protection of the earlier mark.

The Opposition Division finds that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a reputation.

The evidence merely consists of extracts from the opponent’s website presenting the company and the ‘KERABOND’ products. The evidence provides no information on the extent of such use. The evidence does not provide any indication of the degree of recognition of the trade mark by the relevant public. Furthermore, the evidence does not indicate the sales volumes, the market share of the trade mark or the extent to which the trade mark has been promoted. As a result, the evidence does not show that the trade mark is known by a significant part of the relevant public. The opponent could have filed, for example, declarations made by independent parties attesting as to the reputation of the mark, verified or verifiable data as to the market share held, opinion polls and market surveys, certifications and awards, annual reports on economic results and other commercial documents, audits and inspections, etc., however since the opponent did not submit any such documentation within its deadline to substantiate the opposition, the Opposition Division concludes that the opponent failed to prove that its trade mark has a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected.

These conclusions are also valid for the remaining earlier right, namely Italian trade mark registration No 876 719 since the evidence submitted in support of the reputation of that trade mark is the same and is clearly insufficient to demonstrate reputation.

In any case, the Opposition Division also notes that the opponent did not provide any facts, arguments or evidence which could support the conclusion that the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade marks.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein. In the present case the applicant did not appoint a professional representative within the meaning of Article 93 EUTMR and therefore did not incur representation 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.