VAMEDIS | Decision 2652355
Date Published: Sep 24, 2017
OPPOSITION No B 2 652 355
Médis - Companhia Portuguesa De Seguros De Saúde, S.A., Av. Dr. Mário Soares (Tagus Park). Edifício 10, Piso 1, 2744, Porto Salvo, Portugal (opponent), represented by Gastão Da Cunha Ferreira, Lda., Rua dos Bacalhoeiros, nº. 4, 1100-070, Lisbon, Portugal (professional representative)
a g a i n s t
Vamedis Group AG, Viscosestrasse 64 – 68, 9443, Widnau, Switzerland (applicant), represented by Müller-Boré & Partner Patentanwälte Partg MBB, Friedenheimer Brücke 21, 80639, Munich, Germany (professional representative).
On 21/08/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 652 355 is rejected in its entirety.
2. The opponent bears the costs, fixed at EUR 300.
REASONS:
The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 590 814. The opposition is based on European Union trade mark registration No 6 647 093 and Portuguese trade mark registration No 519 701. The opponent invoked Article 8(1) (b) EUTMR in relation to both of the earlier marks and Article 8(5) EUTMR for the Portuguese registration.
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 goods and services
Preliminary remark
On 12/08/2015, within the prescribed time limit, the opponent substantiated its Portuguese trade mark registration. The translation does appear to slightly differ to the original claimed list of goods and services and the one in the certificate of registration. However, the documents filed to substantiate the earlier mark do not go beyond what was originally claimed. Taking all of the documents into consideration, including the original certificate of registration, the earlier Portuguese trade mark registration covers the goods and services as listed below.
With regard to the earlier relied upon European Union trade mark registration, the applicant correctly identified that the registration has been successfully attacked (Oppositions No. 1 451 790, 1 464 405 and 1 463 951 and it now covers as follows:
The goods on which the opposition is based are, therefore, the following:
European Union trade mark No. 6 647 093
Class 9: Encoded credit and debit cards, magnetic, and encoded cards, magnetic, for banking operations and healthcare-related operations.
Class 16: Printed publications, brochures, prospectuses, stationery used for banking and business operations, calendars and diaries, paper, cardboard and goods made from these materials, not included in other classes; printed matter; credit cards, not magnetic; printed matter, namely cards for use in bank transactions, magazines, periodicals.
Class 36: Insurance underwriting and financial services including those provided via the Internet or via other means of telecommunications.
Class 38: Telecommunications and electronic transmission in relation to financial matters.
Portuguese trade mark registration No. 519 701
Class 5: Pharmaceutical and veterinary goods; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, disinfectants.
Class 10: Equipment and surgical instruments, medical dental and veterinary limbs, eyes and teeth; orthopaedic articles; suture materials.
Class 36: Insurance; business financial, credit, investments and insurance, including the services through the internet or other means of telecommunication.
Class 44: Health care services provider, integrated by doctors, hospitals and other medical care providers.
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, perfumeries, essential oils, cosmetics, hair lotions, dentifrices.
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; Medical consumables for the sterile preparation of parenteral solutions, for dermatological treatments, and for surgical, medical, dental and veterinary purposes; Material for stopping teeth, dental wax; Disinfectants; Preparations for destroying vermin; Fungicides, herbicides.
Class 35: Import, export, wholesaling and retailing relating to medicines, medical products, medical apparatus and equipment, cosmetics, and cleaning articles, clothing, shoes and furniture for use in the medical and clinical sector; Import, export, wholesaling, semi-wholesaling and retailing relating to medical, pharmaceutical, veterinary, dietetic and cosmetic preparations; Bringing together, for others, of a variety of goods, namely medical, pharmaceutical, veterinary, dietetic and cosmetic preparations (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.
Class 39: Transport services; Transport; Shipping, packaging and storage of goods; Transport, delivery, shipping, packaging and storage of goods, in particular of medical, pharmaceutical and veterinary preparations, sanitary preparations, parapharmaceutical preparations and cosmetics.
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 dentifrices are similar to pharmaceutical goods in 5 as they have the same purpose. They can coincide in producer, end user and distribution channels.
The contested bleaching preparations and other substances for laundry use; cleaning preparations are considered to be similar to the earlier Class 5 disinfectants as they have the same purpose and nature. They can coincide in producer, end user and distribution channels.
The contested soaps are considered to be similar to the earlier disinfectants since they have the same purpose plus they coincide in producer, end user and distribution channels.
Polishing, scouring and abrasive preparations, perfumeries are not considered to be similar to any of the earlier relied upon goods or services. They differ in nature, they are not in competition with one another nor are they complementary. They are dissimilar.
The opponent argues that the contested cosmetics are similar to the earlier pharmaceutical goods. The Opposition Division agrees that they are similar since they have the same purpose plus they coincide in producer, end user and distribution channels.
The contested hair lotions is considered to be similar to the earlier pharmaceutical preparations as they can coincide in producer, end user and distribution channels. They are similar to a low degree.
The contested essential oils are considered to be similar to the earlier pharmaceutical goods since they have the same purpose. They can coincide in end user and distribution channels. They are similar to a low degree.
Contested goods in Class 5
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use; food for babies; material for stopping teeth, disinfectants are identically contained in both lists of goods (including synonyms).
The contested dietary supplements for humans and animals; dietetic food adapted for medical and veterinary use; dietetic substances adapted for veterinary use are goods used 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 pharmaceutical goods 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 medical consumables for the sterile preparation of parenteral solutions, for dermatological treatments, and for surgical, medical, dental and veterinary purposes are considered to be similar to the earlier pharmaceutical and veterinary goods. They are similar in nature and purpose, plus they are likely to share distribution channels and producers.
The contested dental wax are goods used to clean between one’s teeth. The goods include material for stopping teeth which are used to hold teeth in place. They will coincide with producers, distribution channels, sold in close proximity. Therefore, they are considered to be similar to a low degree.
The contested preparations for destroying vermin are similar to the earlier veterinary goods as they have the same purpose. They can coincide in distribution channels. Furthermore they are complementary.
The contested fungicides are considered to be similar to the earlier veterinary goods to a low degree as they have the same purpose. They can coincide in distribution channels. Furthermore they are complementary.
The contested herbicides are not considered to be similar to any of the earlier relied upon goods or services. They differ in nature, purpose and do not coincide with end users. Further, they are not on competition or complementary. They are dissimilar.
Contested services in Class 35
In principle, retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop, whereas wholesale services usually target shopkeepers and involve a large quantity of products for resale to the public.
Since the opponent has no protection for cleaning articles, clothing, shoes and furniture for use in the medical and clinical sector then it follows that they cannot be considered similar to the wholesaling and retailing thereof. Therefore they are dissimilar.
In view of the above, the contested wholesaling and retailing relating to medicines, medical products, medical apparatus and equipment, cosmetics; wholesaling, semi-wholesaling and retailing relating to medical, pharmaceutical, veterinary, dietetic and cosmetic preparations; Bringing together, for others, of a variety of goods, namely medical, pharmaceutical, veterinary, dietetic and cosmetic preparations (excluding the transport thereof), enabling customers to conveniently view and purchase those goods are considered to be similar to the goods which these services wholesale and retail to a low degree. They differ in nature since services are intangible whereas goods are tangible and they serve different needs, as referred to above, and they have different methods of use. In principle, similarity concerning retail services or wholesale services covered by one mark and particular goods covered by another mark can only be found when the goods involved in the retail or wholesale services and the specific goods covered by the other mark are identical. That is the case here.
With regard to import and export services of the same goods listed above relate to the movement of those goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements and they are considered to relate to business administration. These services do not relate to the actual retail or wholesale of the goods but are preparatory or ancillary to the commercialisation of such goods. They are dissimilar.
Contested services in Class 39
The contested services all cover the transportation, storage, packaging and delivery of various goods. These services would be provided by specialists. Whilst some of the goods they may transport, store, package or deliver are identical to the earlier goods (for example, pharmaceuticals) this does not result in there being similarity. They are clearly dissimilar in nature, purpose and end users. They are not in competition with one another and they are not complementary.
For the avoidance of doubt, none of the goods and services covered by the earlier European Union trade mark registration, notably credits cards, printed matter, insurance services and telecommunication are considered to be identical or similar to any degree. They differ in nature, purpose, producers/providers. They are neither complementary nor in competition. As a result, the opposition based on this earlier registration cannot succeed and the rest of the decision shall be based on the Portuguese registration.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods found to be identical or similar are mainly directed at the public at large, with an average degree of attentiveness.
On the other hand, 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.
Therefore, the degree of attentiveness will vary from average to high.
c) The signs
MÉDIS | VAMEDIS |
Earlier trade mark | Contested sign |
The relevant territory is Portugal.
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 Portuguese trade mark No 519 701 and the contested sign are word marks. In case of word marks, it is the word as such that is protected and not its written form.
As stated by the opponent the word ‘Médis’ is an invented word which has no definition in the Portuguese dictionary. However, it cannot be completely ruled out that the relevant public may perceive this word as allusive of something that is related to the medical field or to medicine, because this word shares a common root with the equivalent words in Portuguese, ‘medicina’, ‘medicamento’. The same analysis does not apply to the contested sign ‘VAMEDIS’. It is an entirely inventive word which has no meaning and is distinctive. Further, in the absence of clear meaning the Opposition Division does not consider that the relevant public would artificially separate ‘VA’ from ‘MÉDIS’ to form two separate elements.
The marks have no dominant elements or visually eye catching elements.
Visually, the signs coincide in the string of letters ‘Médis’ which is the sole element for the earlier Portuguese registration and form the last five letters of the seven letter contested sign. They differ insofar that the contested sign begins with ‘VA’. The opponent claims that ‘MÉDIS’ would be separated. However, the Opposition Division does not agree with this assessment. Further, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. This renders the visual similarity to being low.
Aurally, the pronunciation of the signs coincide in the syllables ‘MÉD-IS’, present identically in both signs. The pronunciation differs in the syllable ‛VA’ present at the beginning of the contested sign, which has no counterpart(s) in the earlier mark. As stated above, consumers generally tend to focus on the beginning of a sign. Therefore, given that the beginnings of the signs are different, the signs are considered to be aurally similar to a low degree.
Conceptually, neither of the signs has a literal meaning. Although the earlier mark may evoke a concept of something that is related to the medical field or to medicine, the contested sign does not convey such a concept. Therefore, to these members of the relevant public they are conceptually dissimilar. With regard to the remaining members of the relevant public, a conceptual comparison is not possible.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- 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 Portuguese trade mark ‘MÉDIS’ has a reputation in connection with the services listed under Classes 36 and 42. This 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, 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 (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).
Since the contested sign was filed on 24/09/2015 (‘the relevant date’) the opponent is required to prove that it has acquired an enhanced degree of distinctive character by this date.
The opponent submitted the evidence listed underneath. As it requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.
Exhibit 1: A Portuguese trade mark registration certificate for No. 519 701 ‘MEDIS’. The Certificate has been translated into English.
Exhibit 2: A press articles written by an independent source, Meu Portal Financeiro. The article is dated 10 August 2016 which is after the relevant date.
Exhibit 3: Details relating to Portuguese trade mark registration No. 309 184 which has subsequently been lapsed.
Exhibit 4: Comprises of various market surveys. These are as follows:
Exhibit 4.A Market Survey conducted in 2005 by the Portuguese company Causa a Efeito – Gabinete de Pesquisa de Mercado, Unipessoal, Lda. about health insurance companies. The opponent states that the survey shows ‘that [a] great part of the Portuguese population, are recognised by Portuguese consumers as a ‘Reliable Trademark’”.
Exhibit 4.B Market Survey conducted in 2009 by A.C. Nielsen Portugal. The opponent refers to the survey stating ‘that the level of trust by the professionals in the field, integrated in the MÉDIS’s structure, is very high and that it is considered the leading company in the market of health insurance”.
Exhibit 4.C Market Survey conducted in 2014, named ‘Marcas que marcam’, by the Magazine Marcas que Marcam, in the category of Health Insurance. The opponent specifically states that ‘in respect to spontaneous awareness ranks first, with a very significant difference in comparison to the other trademarks. 186 of 312 respondents quote Médis’. The opponent also refers to the survey stating that the Médis Brand was quoted 108 out of 312 respondents.
Exhibit 4.D consists of the same Market Survey as Exhibit 4.C for 2015. It states that ‘in respect to spontaneous awareness ranks first with 175 out of 312 respondents…and Médis was quoted by 98 out of 312 respondents’.
Exhibit 4E is another Market Survey conducted in 2015. It states that the health insurance services of Médis are considered to be ‘the most prestigious health insurance and the ideal health insurance’.
Exhibit 5: The opponent is the owner of a magazine called ‘Mais Médis’ about health and well-being, a quarterly publication, with a circulation of 11.000 copies. The magazine is sent on a free of charge basis.
Exhibit 6: The opponent refers to the following awards and corroborating documents to support the awards:
Exhibit 7 is split into A and B: Exhibit 7A is a press article of an interview with a director from the insurance company AXA Portugal. It is dated ‘Janeiro/Marco, 2012’. The latter exhibit is an undated press article with a director from a Portuguese health clinic. Neither article is translated.
Exhibit 8A comprises of screen prints of a YouTube video which includes the TV, Radio and digital advertising campaigns of 2013, 2014 and 2015.
Exhibit 8B another YouTube print out from the Médis Summer Tour event held in 2013. It shows a van touring Portugal bearing the mark.
Exhibit 8C. A press article dated 6 November 2015 (which is after the relevant date) which shows the launch of Sanjo’s sporting shoes bearing the mark Médis. Clearly this is use of the mark on footwear and not for the goods and services in question.
Exhibit 8D and E are a selection of invoices (16 for 2013 and 10 for 2015) which indicate the amount spent on advertising though radio, digital, press and television. In 2013 it totalled €400.020,01 and €214.813,80 in 2015. The mark is placed at the top left side of the invoices.
Exhibit 9: comprises of various further exhibits which are intended to demonstrate the sponsorship activities of the opponent. These include screen prints (Exhibit 9A) from YouTube regarding ‘Mercer Run 4 People’ sponsored by Médis. Another print (Exhibit 9B) out relates to a Médis conference held in 2006, which is 9 years prior to the relevant date. Further print outs relate to a race held for 8 years in Cascais (Exhibit 9C), a youth rugby festival held at Lisbon in 2014 (Exhibit 9D) and another race (Exhibit 9E) held on 30 September 2015 and attended by 3000 people.
Exhibit 10A: A press article from the Portuguese magazine called Marketeer dated 2011. It makes reference to the opponent.
Exhibit 10B: A press article dated August 2011 which refers to the mark and its affiliation with a charity in Portugal.
Exhibits 11A to D comprises of various Portuguese national court judgments. The opponent states that the judgments recognise the earlier mark as having a reputation in Portugal. It is not clear when the decisions were issued and therefore they offer little assistance in establishing that at the relevant date the opponent had the requisite reputation.
Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade mark acquired a high degree of distinctiveness through its use.
In the present case, the evidence filed by the opponent does not allow the Opposition Division to draw a solid conclusion about the degree of recognition. The opponent has not indicated the turnover it has for the various services that it relies upon nor does it provide any corroboratory evidence (such as invoices) to support that it has the requisite reputation. Further, there is no indication of the size of the market and what share it has of such market.
The opponent has provided four market surveys, one being 9 year prior to the relevant date and the other 6, but these do not form sufficiently cogent evidence to establish an enhanced degree of distinctive character. Further, much of the promotional material submitted are for events which do not have any supporting information such as photographs showing the mark, number of attendees, etc. Therefore, it is impossible for the Opposition Division to gauge the degree of exposure. Further, much of these events are a number of years prior to the relevant period.
It must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SA SALSA (fig. mark) et al.).
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, earlier trade mark does not, as a whole, have a meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C 39/97, Canon, EU:C:1998:442, § 17). This is known as the interdependency principle.
In the present case, the marks were found to be aurally and visually similar to a low degree. Conceptually to some members of the relevant public the word ‘Médis’ may evoke a meaning and the marks are therefore conceptually dissimilar. To the remaining members of the relevant public a conceptual comparison is not possible.
The earlier mark is considered to be of normal distinctive character and the degree of attention paid by the relevant public varies from average to high.
Some of the contested goods have been found to be identical whereas the remaining goods are either similar to varying degrees or dissimilar. With regard to the services, some of those in Class 35 were found to be similar to a low degree and some dissimilar and the Class 39 services were considered to be dissimilar.
Even taking into account the interdependency principle and that the relevant public’s level of attention is average (they are more likely to be confused than those with a higher degree of attention), there is no likelihood of confusion. The marks are not sufficiently similar for confusion to arise. This is particularly the case since the relevant public will not artificially dissect the earlier mark and consider it to be a ‘Medis’ mark. Instead they would merely view it as an invented word. Further, as stated above, consumers generally tend to focus on the beginning of a sign which differ insofar that the contested sign begins with ‘VA’. Therefore, the opposition is rejected.
Since the Article 8(1)(b) EUTMR claim has failed, it is now appropriate to consider the Article 8(5) claim.
REPUTATION – ARTICLE 8(5) EUTMR
According to the opponent, the earlier trade mark has a reputation in Portugal.
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 24/09/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation.
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 above mentioned 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.
- 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. Accordingly since the opponent has failed to demonstrate that it has an enhanced degree of distinctive character by virtue of the use made of its earlier mark, it must follow that it does not have the requisite reputation under Article 8(5) EUTMR.
Since reputation is critical for an Article 8(5) EUTMR claim, there is no requirement to analyse whether a link is established. Therefore, the Article 8(5) EUTMR claim fails.
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.
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.
The Opposition Division
Ioana MOISESCU | Mark KING | Marianna KONDAS |
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.