PURESSENTIEL BEBE PUR | Decision 2571852 - CILAG GMBH INTERNATIONAL v. Puressentiel TM

Date Published: Sep 25, 2017

OPPOSITION No B 2 571 852

Cilag Gmbh International, Gubelstrasse 34, 6300 Zug, Switzerland (opponent), represented by Müller Schupfner & Partner Patent- und Rechtsanwaltspartnerschaft mbB, Bavariaring 11, 80336 Munich, Germany (professional representative)

a g a i n s t

Puressentiel TM,   28 place de la Gare, 1616 Luxembourg (applicant), represented by Office Freylinger S.A., 234, Route d'Arlon B.P. 48, 8001 Strassen, Luxembourg (professional representative).

On 27/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 571 852 is upheld for all the contested goods and services.

2.        European Union trade mark application No 13 983 218 is rejected in its entirety.

3.        The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 983 218. The opposition is based on, inter alia, European trade mark registration No 8 499 188. The opponent invoked Article 8(1)(b) EUTMR, Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR and 8(5) EUTMR.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European trade mark registration No 8 499 188.

PRELIMINARY REMARK

The applicant requested the opponent to prove use of all the earlier rights. However, European trade mark registration No 8 499 188 is registered for less than five years, and therefore it is not subject to the use requirement.

1. The goods and services

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

Class 3:         Bleaching preparations and other substances for laundry use; soaps; cleaning, polishing, scouring and abrasive preparations; skin cleaning preparations; nail care preparations; perfumery; essential oils; cosmetics; bodycream; bodymilk; bodylotion; facial cream; facial cleansing preparations such as cleansing foam, cleansing milk, cleansing lotion; facial tonic, wash gel and wash peeling, non-medicated lip care products, shampoo, shower gel and deodorants; skin creams, washing and shower creams, skin and massage oils, oil balms, skin cleaning preparations, sun creams and other sun care preparations, self-tanning preparations; powder; showers and oil baths and bath products; skin lotions; skin tinctures; dentifrices and toothpastes; mouth washes; hair care preparations, including shampoos, hair treatments and lotions for care of the scalp; deodorants for personal use; cotton sticks; cosmetic preparation and disinfectants; sun protection preparations and sunburn preparations; cotton buds and cottonwool balls.

Class 5:        Pharmaceutical and veterinary substances; sanitary substances for medical use; medicinal creams for treating wounds and skin and medicated soaps; paediatric preparations; medicinal powders for the treatment of wounds and for curative purposes, preparations for the treatment of dermatitis and acne; geriatric preparations; plasters, materials for dressings; incontinence pads and pants, paper compresses and paper tampons, breast pads, material for stopping teeth and dental wax, disinfectants; preparations for killing weeds and destroying vermin, fungicides, herbicides; medicated lip care products.

Class 16:        Nappies for small children of paper and cellulose (included in class 16); cellulose cloths, cleaning clothes, namely make-up removing cloths of paper or cellulose, paper napkins; paper, card board and goods of these materials; printed matter; bookbinding articles; photographs; stationeries; glues for paper and stationeries or for household purposes; artist's products; brushes; typing machines and office articles (excluding furniture); educational material (excluding apparatus); packaging material of plastic; printing blocks; cosmetical tissue for cleaning and health care, especially skin care wipes.

The contested goods and services are the following:

Class 3:        Bleaching preparations and other substances for laundry use; Cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; make-up removing preparations; make-up preparations; soaps; hair lotion; bath salts, not for medical purposes; perfume; perfumery; cosmetic preparations for the care of the skin, body and face; cleansing milk for toilet purposes; antiperspirants [toiletries]; antiperspirants [toiletries]; depilatories; make-up removing preparations; lipstick; cosmetic masks; shaving preparations; leather preservatives (polishes); creams for leather; perfume; powder (make-up —); hair shampoo; shampoo-conditioners; body milks; bath foam; preparations for mouth, skin and tooth care; amber [perfume]; aromatics; flavourings for beverages [essential oils]; astringents for cosmetic purposes; flower perfumes (bases for -); cotton sticks for cosmetic purposes; scented wood; colorants for toilet purposes; cosmetics; creams (cosmetic -); bleaching preparations [decolorants] for cosmetic purposes; dentifrices; deodorants for human beings or for animals; perfume water; incense; badian essence; bergamot oil; mint essence [essential oil]; ethereal essences; extracts of flowers [perfumes]; massage gels other than for medical purposes; greases for cosmetic purposes; almond oil; gaultheria oil; jasmine oil; lavender oil; rose oil; oils for cosmetic purposes; oils for toilet purposes; essential oils; cedarwood (essential oils of -); essential oils of lemon; oils for perfumes and scents; ionone [perfumery]; almond milk for cosmetic purposes; cleansing milk for toilet purposes; lotions for cosmetic purposes; mint for perfumery; transfers (decorative -) for cosmetic purposes; musk [perfumery]; cosmetic kits; cotton wool for cosmetic purposes; perfume; air fragrancing preparations; baths (cosmetic preparations for -); aloe vera preparations for cosmetic purposes; sunscreen preparations; douching preparations for personal sanitary or deodorant purposes [toiletries]; bath preparations, not for medical purposes; skincare cosmetics; cleaning preparations; perfumery; toiletries; almond soap; bar soap; soaps; disinfectant soap; medicated soap; bath salts, not for medical purposes; tissues impregnated with cosmetic lotions; shampoo; dusting powder; baby oils; baby wipes; baby lotions; baby powders; baby shampoo; conditioners for babies; baby oil (toiletries); baby wipes [for cosmetic use]; baby lotions [toiletries]; baby powder (toiletries).

Class 5:        Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; bath preparations for medical purposes; sanitary pads and towels and sanitary pants; chemical preparations for medical or pharmaceutical purposes; medicinal herbs; herbal teas for medicinal purposes; parasiticides; sugar for medical purposes; alloys of precious metals for dental purposes; medical preparation for slimming purposes; cotton for medical use; deodorants, other than for personal use; incense for repelling insects; absorbent cotton; menthol; smelling salts; remedies for foot perspiration; medicated creams; medicated skin creams; antifungal creams for medical use; moisturising creams [pharmaceutical]; acne creams [pharmaceutical preparations]; night creams [medicated]; babies' creams [medicated]; creams (medicated -) for application after exposure to the sun; protective creams (medicated -); cold cream for medical use; beverages for infants; babies' diapers; babies' napkin-pants of paper; disposable babies' napkin-pants (diaper-pants); lacteal flour for babies; medicated baby oil; powdered milk for babies; medicated baby powder; preparations containing menthol for steam baths for babies.

Class 44:        Medical services; veterinary services; hygienic and beauty care for human beings or animals; massage; beauty salons; hair salon services; grooming salons; tattooing; medical assistance; plastic surgery; hospitals; nursing homes; convalescent or rest homes; opticians' services; services for the care of the face; services for the care of the hair; cosmetic treatment for the hair; cosmetic treatment for the body; cosmetic treatment for the face; hygienic and beauty care; nail care services; beauty salons; treatment of allergies; services for the care of the skin; application of cosmetic products to the body; application of cosmetic products to the face.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The terms ‘such as’, ‘including’ used in the opponent’s list of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 3

The contested bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; perfumery, essential oils, cosmetics; dentifrices; dentifrices; soaps; shampoo; sunscreen preparations; body milks are identically contained in both lists of goods (including synonyms).

The opponent’s cosmetics refer to a range of preparations intended to beautify the hair, skin and complexion. Therefore, the contested cosmetic masks; astringents for cosmetic purpose; cosmetic preparations for the care of the skin, body and face; skincare cosmetics; make-up removing preparations; make-up preparations; antiperspirants [toiletries]; antiperspirants [toiletries]; depilatories; make-up removing preparations; lipstick; creams (cosmetic -); greases for cosmetic purposes; shaving preparations; perfume; powder (make-up —); shaving preparations; creams (cosmetic-); skincare; dusting powder; preparations for mouth, skin and tooth care;  lotions for cosmetic purposes; transfers (decorative -) for cosmetic purposes; aloe vera preparations for cosmetic purposes; douching preparations for personal sanitary or deodorant purposes [toiletries]; baby wipes; baby lotions; baby wipes [for cosmetic use]; baby lotions [toiletries]; tissues impregnated with cosmetic lotions; cosmetic kits; almond milk for cosmetic purposes; tissues impregnated with cosmetic lotions; colorants for toilet purposes;  baby powders; bleaching deodorant [decolorants] for cosmetic purposes baby powder (toiletries) are at least similar to the opponent’s cosmetics. The goods can have the same distribution channels, relevant public and commercial origin.

The contested cotton sticks for cosmetic purposes are included in the broad category of the opponent’s cotton sticks. Therefore, they are identical.

The contested hair shampoo; hair lotion; shampoo-conditioners; baby shampoo; conditioners for babies are included in the broad categories of the opponent’s hair care preparations, including shampoos, hair treatments and lotions for care of the scalp. Therefore, they are identical.

The contested cleansing milk for toilet purposes is included in the broad category of the opponent’s facial cleansing preparations. Therefore, they are identical.

The contested baby oils (toiletries); badian essence; bergamot oil; mint essence [essential oil]; ethereal essences; extracts of flowers [perfumes]; almond oil; gaultheria oil; jasmine oil; lavender oil; rose oil; oils for cosmetic purposes; oils for toilet purposes; essential oils; cedarwood (essential oils of -); baby oil (toiletries); essential oils of lemon; oils for perfumes and scents are included in the broad category of the opponent’s essential oils. Therefore, they are identical.

The contested almond soap; bar soap; disinfectant soap; medicated soap are included in the broad categories of the opponent’s soaps. Therefore, they are identical.

The contested deodorants for human beings or for animals are included in the broad category of the opponent’s deodorants. Therefore, they are identical.

The contested perfume; flower perfumes (bases for -); perfume water; mint for perfumery; musk [perfumery]; air fragrancing preparations; ionone [perfumery];   amber [perfume]; aromatics are included in the broad category of the opponent’s perfumery. Therefore, they are identical.

The contested cotton wool for cosmetic purposes overlaps with the opponent’s cottonwool balls. Therefore, they are identical.

The contested flavourings for beverages [essential oils] are a form of essential oils, which are used in household uses or for personal use. Thus all these goods are considered to be identical to the opponent’s goods essential oils. The latter goods cover as a broader category the goods of the applicant.  

The contested bath salts, not for medical purposes; baths (cosmetic preparations for -); baths (cosmetic preparations for -); bath foam; bath preparations, not for medical purposes are included in the broad category of the opponent´s bath products. Therefore, they are identical.

The contested incense; scented wood are similar to a high degree to the opponent’s essential oils as they share distribution channels and purpose; the consumers are the same.

The contested massage gels other than for medical purposes are similar to a high degree to the opponent’s skin and massage oils as they share distribution channels and purpose; the consumers are the same.

The contested preservatives for leather (polishes), creams for leather are used for restoring or preventing the deterioration of leather goods. These contested goods are similar to the opponent’s soaps as they have the same characteristics and uses. All these goods are meant to be used for household purposes or in industries. They are moreover found in the same distribution channels and target the same consumers.

Contested goods in Class 5

The contested pharmaceutical and veterinary preparations; preparations for destroying vermin, fungicides, herbicides; plasters; material for stopping teeth, dental wax; disinfectants; materials for dressings are identically contained in both lists of goods (including synonyms).

The contested lacteal flour for babies; medicated baby oil; powdered milk for babies; medicated baby powder; preparations containing menthol for steam baths for babies; beverages for infants are included in the broad category of the opponent’s paediatric preparations. Therefore, they are identical.

The contested medicated creams; medicated skin creams; antifungal creams for medical use; moisturising creams [pharmaceutical]; acne creams [pharmaceutical preparations]; night creams [medicated]; creams (medicated -) for application after exposure to the sun; protective creams (medicated -); cold cream for medical use are included in the broad category of the opponent’s medicinal creams for skin. Therefore, they are identical.

The contested sanitary pads and towels and sanitary pants include, as a broader category the opponent’s incontinence pads and pants. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

 

The contested menthol overlaps with the opponent’s pharmaceutical substances. Therefore, they are identical.

The contested chemical preparations for medical or pharmaceutical purposes; medicinal herbs; herbal teas for medicinal purposes; sugar for medical purposes; medical preparation for slimming purposes; remedies for foot perspiration;  bath preparations for medical purposes are included in the broad category of the opponent’s pharmaceutical substances. Therefore, they are identical.

A pharmaceutical preparation refers to any kind of medicine, that is, a substance or combination of substances for treating or preventing disease in people or animals.  Therefore, the contested sanitary preparations for medical purposes overlap with the opponent’s sanitary substances for medical use. Therefore, they are identical.

The contested dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals are substances prepared for special dietary requirements, with the purpose of treating or preventing disease. Bearing this in mind, their purpose is similar to that of the opponent’s pharmaceuticals substances insofar as they are used to improve a patient’s (or an animal’s) medical condition. The relevant public coincides and the goods generally have the same distribution channels. Therefore, these goods are considered similar.

The contested babies' diapers; babies' napkin-pants of paper; disposable babies' napkin-pants (diaper-pants) or overlap with the opponent’s incontinence pants Therefore, they are identical.

The contested insect repellent incense; parasiticides can be all related to the broad category of preparations for destroying vermin and fungicides. These goods are included in the broad category of the opponent’s preparations for destroying vermin, fungicides. Therefore, they are identical.

The contested cotton for medical use; absorbent cotton are pads that are or may be impregnated with a pharmaceutical lotion with medical properties. These goods and the opponent’s pharmaceutical preparations have the same purpose, namely to cure diseases, disabilities or injuries. They are usually produced by the same undertakings and are distributed to the same relevant public through the same channels. Therefore, they are highly similar.

The contested deodorants, other than for personal use are related to the opponent’s pharmaceutical substances. These goods share the same nature, given that they are chemical substances and because they share the same purpose and use with regard to the fact that the goods applied for are goods that contribute to air freshening, which is closely linked to cleaning, which is the primary purpose of the opponent’s goods. Therefore, those goods are considered to be similar.

The contested smelling salts are soluble substances that are added to bath water and can have an impact on health. They are often used in certain therapies, such as in the treatment of arthritis, for example. Those goods are therefore similar to the pharmaceutical substances, insofar as they share the same intended purpose, namely that of improving health, are targeted at the same relevant public and are sold via the same distribution channels, i.e. pharmacies or healthcare stores.

The contested alloys of precious metals for dental purposes are dental products used by professionals of dentistry. Dentistry is a branch of medicine that is involved in the study, diagnosis, prevention, and treatment of diseases, disorders and conditions of the oral cavity, commonly in the dentition but also the oral mucosa, and of adjacent and related structures and tissues. Dentists also use medical preparations in exercising their profession. Therefore, the contested goods may coincide in end users and distribution channels with the opponent’s sanitary substances for medical use. These goods are similar to a low degree.

Contested services in Class 44

The contested hygienic and beauty care for human beings or animals; beauty salons; hair salon services; grooming salons; services for the care of the face; tattooing; services for the care of the hair; cosmetic treatment for the hair; cosmetic treatment for the body; cosmetic treatment for the face; hygienic and beauty care; nail care services; beauty salons; services for the care of the skin; massage; application of cosmetic products to the body; application of cosmetic products to the face are similar to the earlier goods in Class 3 cosmetics; essential oils. The contested services are those that are provided in relation to the maintenance of hygiene or well-being and beauty. These services are provided, or can be provided by establishments, such as wellness and beauty centres which provide, among others, massages, hair, facial and body treatments by means of the application of cosmetics, oils, shampoos, etc. and the use of special apparatus. The earlier goods and human beauty care services may have the same purpose: both intend to enhance or protect the appearance or odour of the human body or animals. They may be complementary and coincide in end users, as well as distribution channels.

The contested medical services; veterinary services; medical assistance; plastic surgery; hospitals; nursing homes; convalescent or rest homes; opticians' services; treatment of allergies are services provided by professionals in the health-care field such as doctors, veterinarians provided to third parties. Even though a certain link cannot be denied between the aforementioned services and the earlier goods in Class 5 due to the common goal of treating diseases, the differences in nature and especially in the usual origin clearly outweigh any similarities. The relevant public does not expect a doctor to develop and market a drug or a medical product. Therefore, the goods and services are dissimilar. 

These contested services are also dissimilar with the earlier cleaning products, beauty-care products and paper products and stationery, among others, in Classes 3 and 16 due to their different nature and purpose.

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 and services found to be identical or similar to different degrees are directed at the public at large and at professionals with specific professional knowledge or expertise.

It is apparent from the case-law that, insofar as pharmaceutical preparations are concerned, the relevant public’s degree of attention is relatively high, whether or not issued on prescription (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36 and cited case-law).

In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health.

The degree of attention will vary from average to higher than average depending on the nature of goods and services. It will be average for, for example, cosmetics in Class 3 and higher than average for, for example, pharmaceutical and veterinary preparations in Class 5 and for the services in Class 44.

Although average and professional consumers both display a higher than average degree of attention in relation to pharmaceutical preparations, the examination will proceed on the basis of the perception of average consumers, since the general public is more prone to confusion.

3. The signs

Bebe Woman	PURESSENTIEL BEBE PUR
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

The common element ‘BEBE’ of both marks has no meaning as such in German, although part of the public may perceive it as referring to a baby, since it is widely used.

This element might be seen as non-distinctive for some of the goods and services, namely for part of the goods in Classes 3 and 5, and part of the services in Class 44 since they might indicate the public to which the relevant goods and services are addressed to or be suggestive by indicating that the goods concerned will help to keep the skin as smooth as a baby. Consequently, the impact of this element might be limited for a part of the relevant public when assessing the likelihood of confusion between the marks at issue. For the rest of the public, this element has no meaning and is therefore distinctive.

As regards the element ‘PURESSENTIEL’ of the contested sign, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). It will be dissected by the relevant public into ‘PUR’ which is the German equivalent of ‘pure’ meaning ‘something that is pure is clean and does not contain any harmful substances’ and ‘ESSENTIAL’ which will be understood by the German public on account of the similarity of the German equivalent ‘essenziell’ as ‘something extremely important or absolutely necessary to a particular subject, situation, or activity’ . Bearing in mind that part of the relevant goods are beauty or healthy products, and part of the services are also related to the beauty sector, it is considered that the elements ‘PURESSENTIEL’ and ‘PUR’ are non-distinctive as they describe the characteristics of the goods and of the services offered.

The earlier mark is a word mark composed of the words ‘BEBE’ and ‘WOMAN’. The word ‘WOMAN’ is a basic English word and will be therefore understood as ‘an adult human female’. Bearing in mind that part of the relevant goods are beauty or healthy products, and part of the services are also related to the beauty sector, it is considered that this element is non-distinctive as it merely refers to the target public.

Visually, the marks are similar to the extent that the element ‘BEBE’ of the earlier mark is fully included in the contested mark and is clearly distinguishable in the contested mark. On the other hand they differ in the additional words ‘PURESSENTIEL’ and ‘PUR’ of the contested mark, and in the element ‘WOMAN’ of the earlier mark.

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the marks coincides in the sound of the letters /B-E-B-E/ present identically in both signs. The pronunciation differs in the sound of the words ‘PURESSENTIEL’ and ‘PUR’ of the contested mark and in the element ‘WOMAN’ of the earlier mark.

Therefore, the signs are similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that will associate the word ‘BEBE’ with a baby, the marks will be associated with a similar meaning, and therefore will be conceptually similar. For the other part of the public, the signs are not conceptually similar.

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.

According to the opponent the earlier trade mark has a reputation in Austria and Germany in connection with part of the goods for which it is registered, namely for the goods in Class 3. Such claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion (see judgment of 11/11/1997, C-251/95, ‘Sabel’), and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (see judgment of 29/09/1998, C-39/97, ‘Canon’).

The opponent filed the following evidence:

• Survey by GFK Marktforschung Nürnberg of May 1990 in relation to the reputation of ‘BEBE’ for cosmetics in Germany. Among the questions asked are: ‘Do you know this name in connection with face and body care products?’, ‘Do you believe that ‘Bebe’ is an indication of one specific enterprise or several enterprises entirely unrelated or are you unable to answer this question?’ and, ‘What types of face and body care products are marked with this sign? For the evaluation, a total of 1933 questionnaires were taken into account the result being that the vast majority of the people acknowledge ‘Bebe’ as a sign of a single enterprise and related to cosmetics.

• Opinion poll by IMAS International, dated October 1995, in relation to the reputation of the trade mark ‘Bebe’ in connection with body care and facial products among German males and females from the age of 16 years and upwards. The results of the poll show that the earlier mark is indeed known by the German public, and that this pubic thinks that ‘bebe’ is used by only a particular producer.

• Market survey by the German market research institute GFK Marktforschung, Nürnberg, of October 2005, in relation to the reputation of ‘bebe’ in connection with body care and facial products. Among other the following questions were asked: ‘Do you know this name in connection with face and body care products?’ and, ‘Do you believe that ‘Bebe’ is an indication of one specific enterprise or several enterprises entirely unrelated or are you unable to answer this question?’, ‘Do you know the name of the enterprise?’ For this market survey 2000 persons were interviewed by 446 interviewers. The outcome of the survey shows that 84.8% of all respondents recognised the sign ‘bebe’ in connection with face and body products, and 60% of these people identified this trade mark as a trade mark of a specific enterprise.

• Excerpt from the communication analysis of the German women´s magazine ‘Brigitte’ of 2008 referring to cosmetics and body care products, which shows that the trade mark ‘bebe’ is known by 46% to 81% of the polled persons for different kinds of cosmetic care products. This analysis concerns the territory of Germany, and the polled persons are women between 14 and 54 years.

• Survey by Millward Brown of 2007 in relation to the awareness of the ‘Bebe Young Care’ trade mark. The polled persons are consumers between 14 and 65 years in one poll, and between 14 and 29 years in another. The survey shows that ‘Bebe Young Care’ is the third most famous mark in Germany after NIVEA and DOVE.

• Survey by Millward Brown of 2011 in relation to the awareness of the ‘Bebe’ trade mark. The polled persons are consumers between 14 and 65 years in one poll.

• Witness statement dated May, 2014 from Hae-Su- Kwon Business Unit Director of Johnson & Johnson GmbHh (the former owner of the earlier trade marks), Germany regarding the sales of ‘bebe’ cosmetics in the products lines ‘BEBE YOUNG CARE’ and ‘BEBE ZARTPFLEGE’ in the years 2008 to 2013. According to the table, the Net Trade Sales of face care products was of minimum 11,800,000 euros in 2013.

• Witness statement dated 23 July, 2008, from Ms. Sonja Gahleitner, Managing Director of Johnson & Johnson GmbH, Austria, regarding the net trade sales of ‘bebe’ cosmetic products for face, body, lip and hair care and cosmetic tissue in the years 2002, 2003, 2004, 2005 and 2006.

• Letter from the Kaufhof AG dated 17 July 1972, by which the department for cosmetic and perfumery confirms the high reputation of ‘bebe’ and designates ‘bebe’ as a topseller.

• Excerpts from Austrian journals, not dated, in which the representation of the mark ‘bebe’ can be seen.

• Flow charts in German which show information regarding the marketing activities for the mark ‘bebe’ in 2007, 2008, 2009 and 2010.

• Samples of German print advertisements for lip, hair care, facial, body and cosmetic products under the mark ‘bebe’ for the years 2007, 2008, 2009, 2010 and 2010.

• Samples of advertisement of ‘bebe’ products in internet portals such as: viva.tv., myspace.de from 2009, youTube.de, shape.de and Joy.de among others.

• Online study to the users of the website www.Bravo.de from November 2009, issued by Bauer Media KG, in which around 1312 teenagers between 12 and 18 years were polled about ‘bebe generation’. The result of the survey shows that the advertising campaign for ‘bebe generation’ is well known among more than 50% of German teenagers.

• Press release of December 2009, in relation to the favourite products of the BRAVO GIRL magazine readers. The products marked ‘bebe Young Care’ are among the products most voted.

• Copy of the decision of the Federal Patent Court of Germany in which the reputation of the trade mark ‘BEBE’ was confirmed.

• Copy of the judgment of the European Court of First Instance of 21/04/2005 in case T-164/03 bebe/monBebé, in which it was decided that the submitted IMAS opinion poll was sufficient to show that the mark ‘bebe’ possessed an elevated distinctiveness on account of its high reputation in Germany in relation to goods for body and face care.

• Table originating from IRI Database, Beauty Total Inc, a leader in delivering powerful market and shopper information and analysis, showing the market share of ‘BEBE’ in Germany in the beauty sector, which ranges between 3,6% and 2.9% in the years 2007 to 2013.

• Table originating from IRI Database, Beauty Total Inc, a leader in delivering powerful market and shopper information and analysis, showing the market share and market position in 2013 in the beauty market in Germany, showing that the current market share of 2,82% results in a top ten position as well as another table showing that the products offered under the trademark ‘BEBE’ for babies currently even hold the top 3 places in Germany in 2013.

Having examined the material listed above, the Opposition Division concludes that the element ‘bebe’ of the earlier trade mark has acquired a high degree of distinctiveness through its use, namely reputation, on the market.

Enhanced distinctiveness requires recognition of the mark by the relevant public that could be inferred, inter alia, from such elements as the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been, the amount invested by the undertaking in promoting the mark and the proportion of the relevant section of the public which, because of the mark, identifies the goods as originating from a particular undertaking (see judgment of 22/06/1999, C-342/97 ‘Lloyd Schuhfabrik Meyer’).

It is clear from the evidence that the earlier trade mark has been subject to a long standing and intensive use and that it is generally known by consumers in the German, as well as Austrian markets, where the sign enjoys a consolidated position among the leading brands, as has been attested by independent and diverse sources.

Although some of the evidence originates from the opponent itself, such as the witness statements from managers of key departments of the former owner of the trade marks and a printout from the opponent’s website, their content is mostly supported by other items of evidence. The evidence put before the Opposition Division shows that the opponent has extensively sold, promoted and advertised its goods in Germany, Austria. All the documents filed demonstrate that the earlier mark ‘bebe’ has reached a high degree of reputation and that ‘bebe’ products are among the group of the most popular trade names, in other words within the top ten brands in Germany. The sales figures mentioned in the witness statements, being to some extent supported by the surveys and promotional activities reflected in the evidence, printouts from various websites and the various references in the press to its success, are all factors that show unequivocally that the marks enjoy a high degree of recognition among the relevant public.

The Opposition Division points out that some of the evidence, such as the submitted surveys by renowned, independent market research institutes normally constitutes valuable evidence for examining market acceptance (see to that extent the decision of the Fourth Board of Appeal, of 11/01/2006, R-1/2005-4 ’Hilti’, § 32). Moreover, the opponent makes reference to a national court case that state the well-known character of the opponent’s ‘Bebe’ trade mark. Even though national decisions are not binding on the Office, they are admissible evidence and may have evidential value, especially if they originate from a Member State, the territory of which is also relevant for the opposition at hand. In the present case, they constitute indications of the existence of reputation.

Article 15 EUTMR states that use of the mark in a form different from the one registered still constitutes use of the trade mark as long as the differing elements do not alter the distinctive character of the trade mark, and regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (judgment of 18/04/2013, C-12/12, SM JEANS/LEVI‘S, EU:C:2013:253, § 36.). Similarly, the Court has clarified that use can be genuine where a figurative mark is used in conjunction with a word mark superimposed over it, even if the combination of those two marks is itself registered, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered (judgment of 18/07/2013, C-252/12, Specsavers, EU:C:2013:497, § 31).

In the present case, the fact that the element ‘WOMAN’ of the earlier mark is not present together with ‘BEBE’ in the evidence showing reputation of the earlier mark, but that use is shown for ‘bebe’ only or for ‘bebe’ together with non-distinctive elements such as ‘young care’ or ‘generation’ etc. is not relevant since all those additional elements are non-distinctive and therefore do not affect the distinctive character of the trade mark as registered.

On the basis of the above the Opposition Division concludes that in the present case the earlier trade mark enjoys a reputation in Germany in connection with the following goods covered in Class 3: cleaning preparations, soaps, goods for body and beauty care; hair lotions; cosmetics.

As regards the goods in Classes 5 and 16 covered by the earlier mark 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 in relation to the remaining goods in Class 3, also all goods in Classes 5 and 16 of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark might be seen as low for some of the goods for part of the relevant public who would associate the earlier mark as referring to ‘a baby’ and understand the meaning of ‘woman’.

5. Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, phonetic and conceptual similarities between the marks. The comparison “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’, § 22 et seq.)

The goods and services at issue have been found to be partly identical, partly similar to different degrees and partly dissimilar.

The marks are visually and aurally similar to the extent that the word ‘BEBE’ is identically contained in both marks. The differences between the signs in question are limited to the additional elements ‘PUREESSENTIELS’ and ‘PUR’ in the contested sign, and the element ‘WOMAN’ in the earlier mark. However, as already mentioned, these elements are non-distinctive, and therefore the relevant public will focus on the element ‘BEBE’ that has been found to be reputed in Germany and his acquired distinctiveness thus overcome the lack of inherent distinctiveness.

In the present case the beginnings of the signs differ, since in the contested mark the coinciding word ‘bebe’ is placed after the word ‘PURESSENTIELS’. Consumers are used to reading from left to right and from the top down. Therefore, they will generally focus on the first or upper element of a sign when being confronted with a trade mark. However, the different first element is not sufficient to differentiate the signs in their entirety. 

Conceptually, since ‘bebe’ has no meaning as such in German, a part of the public will not understand it as referring to ‘baby’ and therefore for this public the signs will not be conceptually similar. As regards the other part of the public, the marks will be conceptually similar to the extent that both contain ‘bebe’.

Furthermore, as it has been stated in the section d) of the decision the earlier trade mark enjoys a reputation in connection with some of the goods in Class 3. It must be noted that, the more distinctive the earlier trade mark, the greater will be the likelihood of confusion (11/11/1997, C-251/95 ‘Sabèl’, § 24). Therefore, marks with a highly distinctive character, either per se or because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97 ‘Canon’, § 18).

Account also should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks, and must rely on an imperfect recollection of them. In addition, consumers tend to remember similarities rather than dissimilarities.

Lastly, it must be noted that a likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods and services. Accordingly, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa.

Therefore, taking into account the above considerations, and in particular the identity and similarity to different degrees between the goods and services and the similarities between the signs, it is likely that there exists a likelihood of confusion in the mind of the targeted consumer who mostly retains only an imperfect image of the mark.

As regards the goods for which the earlier mark has been found to be distinctive to a low degree, considering the degree of similarity between the goods and services and the principle of imperfect recollection, the Opposition Division also finds likelihood of confusion for these goods and services.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to different degrees to those of the earlier trade mark. Considering all the above, there is a likelihood of confusion on the part of the German speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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.

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

1. Austrian trade mark registrations No 221 480, No 255 233 for the word mark ‘bebe’, registered for in Class 3;

2. International trade mark registration No 571 254 for the word mark ‘bebe’ designating the Benelux countries, the Czech Republic, Italy, Hungary, Austria and Romania, registered for goods in Class 3;

3. International trade mark registration No 578 812 for the word mark ‘bebe’, designating Poland, registered for goods in Class 3;

4. German trade mark registrations No 30 414 450, No 967 629 and No 1 168 346 for the word mark ‘bebe’ registered for goods in Class 3;

5. German trade mark registration No 302 014 004 328 for the word mark ‘bebe lovely’, registered for goods in Class 3;

6. European Union trade mark registration No 8 499 196 for the word mark ‘bebe Zartpflege’ registered for goods in Classes 3, 5 and 16;

7. European Union trade mark registration No 8 499 162 for the word mark ‘bebe more’ registered for goods in Classes 3, 5 and 16;

Since the marks mentioned above under (1) to (4) are identical to the most distinctive element of the earlier mark which has been compared and the marks mentioned above under (5) to (7) differ in their second element which is either also non-distinctive or weak in relation to the relevant goods and services either distinctive and therefore more different than the earlier mark ‘BEBE WOMAN’ and they all cover the same or a narrower scope of goods, the outcome cannot be different with respect to the services in Class 44 for which the opposition has already been rejected, no likelihood of confusion exists with respect to those services.

Since the opposition is not fully successful on the basis of the ground of Article 8(1)(b) EUTMR there is a need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier European trade mark registration No 8 499 188, for which the opponent claimed repute in Austria and Germany.

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. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

2. Reputation of the earlier trade mark

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

3. The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following services:

Class 44:        Medical services; veterinary services; medical assistance; plastic surgery; hospitals; nursing homes; convalescent or rest homes; opticians' services; treatment of allergies.

As has been seen above, the signs are similar, insofar as the element ‘BEBE’ of the earlier mark is identically contained in the contested mark, and that this element is the first element of the earlier mark which is followed by a non-distinctive element for all the relevant public.

As regards the distinctive character of the common element of the marks, it is inherently distinctive for part of the public and, as seen above, and has become highly reputed through use for cleaning preparations, soaps, goods for body and beauty care; hair lotions; cosmetics in Class 3 in Germany.

These goods of the earlier mark, for which reputation has been shown, are body and hair care products. Although the nature of the contested services in Class 44 is different from the nature of goods for which the earlier mark has a reputation, they are all intended to improve or maintain well-being and beauty, so they may serve a similar purpose. Providers of medical services or cosmetic treatments may also offer beauty care products to their clients for consumption at home. Consequently, the goods and services may have the same distribution channels and target the same end consumers and the same business operators can provide both the service and the products. Moreover, the services of the contested mark are also likely to be offered in connection with the goods of the earlier mark for which reputation has been proven.

Considering the above, also given the similarities between the marks, the high reputation of the earlier mark in connection with goods in Class 3, the Opposition Division concludes that, when encountering the contested mark in relation to the contested services in Class 44, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) CTMR (judgment of 26/09/2012, T-301/09, ‘CITIGATE’, paragraph 96).

4. Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙        it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙        it is detrimental to the repute of the earlier mark;

∙        it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

In the present case, the opponent argues that the trade mark ‘BEBE WOMAN’ has acquired a high reputation among consumers in the European Union for at least the goods in Class 3, in addition to the facts that the signs are highly similar. According to the opponent, the applicant will free-ride on the investment of the opponent in promoting its mark, since due to the high similarity between the marks, an association between the marks will be created by the consumer. Consequently, it considers that the contested mark will gain an unfair advantage as a consequence of an association between the marks.

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following services, for which a link has been established:

Class 44:                Medical services; veterinary services; medical assistance; plastic surgery; hospitals; nursing homes; convalescent or rest homes; opticians' services; treatment of allergies.

As seen above, the earlier trade mark was found to have a reputation for the following goods:

Class 3:        Cleaning preparations, soaps, goods for body and beauty care; hair lotions; cosmetics.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

According to the opponent, the applicants will free-ride on the investment of the opponent in promoting its mark. It argues that, due to the high similarity between the marks, an association between the marks will be created by the consumer. It states that the earlier mark ‘BEBE WOMAN’ has acquired a high reputation. Consequently, it considers that the contested mark will gain an unfair advantage as a consequence of an association between the marks.

In order to determine whether the use of a sign takes unfair advantage of the distinctive character or the repute of the mark, it is necessary to undertake an overall assessment which takes into account all the factors relevant to the circumstances of the case (judgment of 10/05/2007, T-47/06, ‘nasdaq’, paragraph 53, confirmed, on appeal, by judgment of 12/03/2009, C-320/07, ‘nasdaq’; see also judgment of 23/10/2003, C-408/01, ‘Adidas’, paragraphs 29, 30, 38; judgment of 27/11/2008, C-252/07, ‘Intel’, paragraphs 57, 58, 66; and judgment of 24/03/2011, C-552/09, ‘Kinder’, paragraph 53).

The notion of taking unfair advantage of distinctiveness covers cases where the applicant benefits from the attractiveness of the earlier right by affixing on its goods or services a sign which is widely known in the market, thus misappropriating its attractive powers and advertising value. This may lead to unacceptable situations of commercial parasitism, whereby the applicant is allowed to take a ‘free ride’ on the opponent’s investment in promoting and building up goodwill for its mark, which may stimulate the sales of the applicant's goods to an extent which is disproportionately high in comparison with the size of its promotional investment.

As shown, the earlier trade mark Citibank is reputed in the European Union and its reputation is associated with products in Class 3, namely cleaning preparations, soaps, goods for body and beauty care; hair lotions; cosmetics. Further to this, the goods and services show strong connections as seen above, and the signs are similar. It seems therefore inevitable that the image of the mark and the characteristics that it projects will be transferred to the applicant´s services if they are marketed under the trade mark ‘PURESSENTIEL BEBE PUR’.

In the present case there is indeed a risk that the mark applied for will take unfair advantage of the aura attaching to the earlier mark on account of its reputation and that, lastly, the relevant section of the public might decide to use the applicant´s services in the belief that the mark in question is linked to the earlier reputed mark.

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade mark.

5. Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR. Therefore, the contested trade mark must be rejected for medical services; veterinary services; medical assistance; plastic surgery; hospitals; nursing homes; convalescent or rest homes; opticians' services; treatment of allergies.

Given that the opposition is entirely successful under Article 8(1)(b) EUTMR and Article 8(5) EUTMR it is not necessary to examine the opposition based on Article 8(1)(b) EUTMR in conjunction with Article 8(2)(c) EUTMR.

COSTS

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

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Francesca DRAGOSTIN

Cristina CRESPO MOLTO

Michaela SIMANDLOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.