OPPOSITION No B 2 568 007

Fuencampo XXI S.L., Carretera Valencia, Km. 8,3, 50410 Cuarte de Huerva (Zaragoza), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Red Star Holding B.V., Poortcamp 10, 2678 PT De Lier, the Netherlands (applicant), represented by Merkenbureau Knijff & Partners B.V., Leeuwenveldseweg 12, 1382 LX Weesp, the Netherlands (professional representative).

On 10/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 568 007 is partially upheld, namely for the following contested goods:

Class 29:        Preserved, frozen, dried and cooked vegetables, including tomatoes, excluding onions; foodstuffs made from tomatoes; soups and soup preparations, broths and broth preparations, exclusive of preparations made from onions; sauces, with the exception of fruit sauces including sauces made from tomatoes.

Class 31:        Fresh fruits and vegetables, including all varieties of tomatoes excluding watermelon, mango, persimmons, onions and garlic.

2.        European Union trade mark application No 13 985 122 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 985 122. The opposition is based on European Union trade mark registration No 8 486 466. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 8 486 466. The earlier trade mark is registered as follows: .

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

The contested application was published on 26/05/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 26/05/2010 to 25/05/2015 inclusive.

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

Class 29:        Meat, fish, poultry and game; meat extracts; preserved frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products, edible oils and fats.

Class 31:        Agricultural, horticultural and forestry products and grains not included in other classes, live animals, fresh fruits and vegetables, including onions, seeds, natural plants and flowers, foodstuffs for animals, malt.

Class 39:        Warehousing, storage, distribution, packaging and transport of all kinds of vegetable products, agricultural and horticultural products and fruits and vegetables.

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 09/02/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 09/04/2016 to submit evidence of use of the earlier trade mark. On 01/04/2016, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is, in particular, the following:

• Exhibits 1 and 2

Exhibit 1 is a declaration signed by Gregorio Ignacio Lores Peco, administrator (General Manager) at FUENCAMPO XXI S.L., concerning the ‘sales volume of products with trademark FC SWEET ONIONS during the years 2010-2015’. The opponent also attached a translation of the declaration concerned (Exhibit 2).

• Exhibits 3 and 4

Exhibit 3 includes 19 invoices confirming purchases of products labelled with the mark ‘FC SWEET ONIONS’ made by clients in France and Spain (e.g. invoice No 01000087 of 11/01/2010, invoice No 01001852 of 30/04/2010, invoice No 01002617 of 14/06/2010, invoice No 01100085 of 10/01/2011, invoice No 01101901 of 11/04/2011, invoice No 01107245 of 28/11/2011, invoice No 01201949 of 19/03/2012, invoice No 01203295 of 14/05/2012, invoice No 01209405 of 31/12/2012, invoice No 01300265 of 14/01/2013, invoice No 01301795 of 11/03/2013, invoice No 01310619 of 30/12/2013, invoice No 01400270 of 13/01/2014 and invoice No 01403162 of 14/04/2014). The opponent also attached a translation of an invoice form (Exhibit 4).

• Exhibit 5

This exhibit contains the decision of 29/08/2011, R 2162/2010-2, MAURIPAN / MAURIPAN et al.

• Exhibits 6-10

These exhibits include product information cards (see an example below) used by the opponent, with a picture of the goods in boxes of 10 kg on which the earlier mark appears (an appropriate translation was attached thereto). They are undated.

• Exhibits 11-14

These exhibits are pictures depicting the registered mark ‘FC SWEET ONIONS’ on bags and boxes of onions.

The applicant argues that the mark used on the labels is in a different colour from and has additional elements to the mark as registered. It should be noted that the mark ‘FC SWEET ONIONS’ is registered as a figurative mark and is used by the opponent in such a manner. In fact, on a few of the labels, it is presented with additional verbal elements (e.g. ‘Granel Madera’ or ‘10 Kg C2’). It is common practice, particularly in the relevant market sector, for an individual mark to be used together with such words describing characteristics of the products, that is to say, vegetables. Moreover, the difference in colour used on the opponent’s packaging from that in the mark as registered is imperceptible. Therefore, it is considered that the opponent’s trade mark ‘FC SWEET ONIONS’ was validly used.

The applicant argues that ‘the declaration signed by Gregorio Ignacio Lores Peco … has only a low probative value’. As far as the aforesaid evidence (i.e. Exhibit 1) is concerned, Rule 22(4) EUTMIR expressly mentions written statements referred to in Article 78(1)(f) EUTMR as admissible means of proof of use. Article 78(1)(f) EUTMR lists means of giving evidence, amongst which are sworn or affirmed written statements or other statements that have a similar effect according to the law of the State in which they have been drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. This is because, in general, further evidence is necessary to establish use, since such statements have to be considered as having less probative value than physical evidence (labels, packaging, etc.) or evidence originating from independent sources.

Bearing in mind the foregoing, it is necessary to assess the remaining evidence to see whether or not the contents of the declaration are supported by the other items of evidence.

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

It should be noted that Exhibit 5 is irrelevant, as it concerns distinctiveness and it does not refer directly to proof of use of the earlier mark.

Place of use

The invoices (Exhibit 3) show that the place of use is Spain and France. This can be inferred from the addresses indicated in these invoices. When assessing proof of use, all the relevant facts and circumstances must be taken into account, including the characteristics of the market concerned, the nature of the goods or services protected by the trade mark and the territorial extent and scale of the use as well as its frequency and regularity (19/12/2012, C-149/11, Onel / Onel, EU:C:2012:816, § 58). Use of an EUTM in the UK (15/07/2015, T-398/13, TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57) or even in London and its immediate surroundings may be geographically sufficient (30/01/2015, T-278/13, now, EU:T:2015:57). In the present case, the opponent proved that its earlier mark was used in Spain and France, two of the largest countries in the European Union. Therefore, the evidence relates to the relevant territory. Other documents, such as the product information cards (Exhibits 6-10), are in Spanish and target the Spanish public.

Time of use

Most of the evidence in Exhibits 1 and 3 is dated within the relevant period (16 of the 19 invoices are dated within the relevant period).

Even though some of the evidence is not dated (i.e. documents in Exhibits 6-14), it can still be taken into consideration in conjunction with the other evidence that is dated within the relevant period, such as the invoices, as the undated evidence gives useful indications on the nature of use. In the present case, the undated evidence is packaging items and product information cards, which prove that the opponent has sold on the market fresh onions labelled with the earlier mark.

Extent of use

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

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

The documents filed, namely the declaration (Exhibit 1) and invoices (Exhibit 3), provide the Opposition Division with sufficient information concerning the commercial turnover, the territorial scope, the duration, and the frequency of use.

The invoices demonstrate that the opponent had commercial relations with customers based in France and Spain, and the Opposition Division finds that the evidence provides sufficient information concerning the territorial scope of the use. This was confirmed in the declaration made by Gregorio Ignacio Lores Peco, who is responsible for the opponent’s trade mark portfolio. It should be noted that the invoices submitted by the opponent are only examples and they concern significant amounts of money and goods, that is, fresh onions.

The territorial scope is sufficiently indicated by the fact that, as demonstrated by the invoices, the relevant goods were sold to customers based in France and Spain. A sufficient duration of use is clearly indicated by the fact that the opponent submitted invoices for each year of the relevant period. With regard to the frequency of use, the invoices leave no doubt that sales transactions under the ‘FC SWEET ONIONS’ trade mark were carried out regularly throughout the relevant period.

Nature of use

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

The evidence, in particular the pictures, product information cards and invoices, shows that the earlier sign was used in such a way as to establish a clear link between the goods and the company responsible for their manufacturing and marketing. Therefore, the evidence demonstrates that the opponent’s mark was used to identify the commercial origin of the goods, that is, fresh onions.

It should be noted that the mark ‘FC SWEET ONIONS’ is registered as a figurative mark, namely , and is used by the opponent in such a manner. The evidence shows, however, that the earlier mark is often used in combination with other words and numbers, as indicated above. It is common practice, particularly in the relevant market sector, for an individual mark to be used together with such words describing characteristics of the products, such as that they are fresh onions. In addition, the earlier mark appears in the invoices as a verbal sign, as it is not possible to reproduce it in its figurative version. Therefore, it is considered that the opponent’s trade mark ‘FC SWEET ONIONS’ was validly used.

Overall assessment

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

The documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the mark has been used as registered for some of the goods, namely fresh onions, for which the earlier mark is registered.

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

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

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

As explained above, in the present case, the evidence shows genuine use of the trade mark for the following goods:

Class 31:                Fresh onions.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition.

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

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

1. The goods and services

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

Class 31:         Fresh onions.

The contested goods and services are the following:

Class 29:        Preserved, frozen, dried and cooked vegetables, including tomatoes, excluding onions; foodstuffs made from tomatoes; soups and soup preparations, broths and broth preparations, exclusive of preparations made from onions; sauces, with the exception of fruit sauces including sauces made from tomatoes.

Class 31:        Fresh fruits and vegetables, including all varieties of tomatoes excluding watermelon, mango, persimmons, onions and garlic; seeds, exclusively of vegetable varieties including tomato seeds.

Class 35:        Advertising, promotion, wholesale services and retail services as well as import and export services for fresh vegetables, including tomatoes, fresh fruits and other foodstuffs and of seeds, including tomato seeds excluding all of these services in class 35 in relation to onions, garlic, watermelons preserved, dried and cooked fruits, jellies, jams, stewed fruits, fruit puree, milk and milk products, except whipped cream, beaten whipped cream and milk shakes, tea cocoa, chocolate, chocolate goods, pastry and confectionery, biscuits, rice, flour and preparations made from cereals, bread, ices, honey cakes, waffles, cakes mainly consisting of ice cream, sweet spreads, namely nut nougat creams and chocolate spreads.

Although the applicant has expressly excluded from its specification the goods and services that are of interest to the opponent, the fact still remains that the nature/kind of the conflicting goods/services is the same (vegetables) and that the same type of undertaking, that is, an agriculture company, can be responsible for the production/provision of the goods/services.

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 term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services 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).

However, the terms ‘exclusively’, ‘exclusive’ and ‘excluding’, used in the applicant’s list of goods to show the relationship of individual goods and services with a broader category, are exclusive and restrict the scope of protection only to the specifically listed goods.

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 29

The contested preserved, frozen, dried and cooked vegetables, including tomatoes, excluding onions and soups and soup preparations, broths and broth preparations, exclusive of preparations made from onions are similar to a low degree to the opponent’s fresh onions. In the present case, the applicant restricted the scope of protection, excluding onions from its list of goods. However, the contested goods still have several similarities to the opponent’s fresh onions. They can have the same purpose, namely to allay hunger, and the same method of use. These goods may all derive from the same manufacturers, coincide in their distribution channels and target the same consumers.

The contested foodstuffs made from tomatoes and sauces, with the exception of fruit sauces including sauces made from tomatoes are similar to a low degree to the opponent’s fresh onions. In this case, the applicant did not restrict the scope of protection (i.e. onions have not been excluded with regard to these goods). The contested goods have several similarities with the opponent’s fresh onions. They can have the same purpose, namely to allay hunger, and the same method of use. Fresh onions can be considered one of the main ingredients of the prepared dish. Therefore, a similarity can exist. It is common on the market to find many types of foodstuffs and sauces containing fresh onions, including having them as a main ingredient. These goods may all derive from the same manufacturers, coincide in their distribution channels and target the same consumers.

Contested goods in Class 31

The contested fresh fruits and vegetables, including all varieties of tomatoes excluding watermelon, mango, persimmons, onions and garlic are similar to the opponent’s fresh onions. In the present case, the applicant restricted the scope of protection, excluding onions from its list of goods. However, the contested goods have several similarities to the opponent’s fresh onions. They can have the same purpose, namely to allay hunger, and the same method of use. These goods may all derive from the same manufacturers, coincide in their distribution channels and target the same consumers.

The contested seeds, exclusively of vegetable varieties including tomato seeds are dissimilar to the opponent’s fresh onions. The contested goods are intended, in general, to produce a new plant. By contrast, fresh onions are fresh vegetables ready to be eaten. Therefore, these goods do not serve the same purpose and do not target the same public. They usually differ in their producers and they do not have the same distribution channels. They are not complementary or in competition.

Contested services in Class 35

The contested advertising, promotion, wholesale services and retail services as well as import and export services for fresh vegetables, including tomatoes, fresh fruits and other foodstuffs and of seeds, including tomato seeds excluding all of these services in class 35 in relation to onions, garlic, watermelons preserved, dried and cooked fruits, jellies, jams, stewed fruits, fruit puree, milk and milk products, except whipped cream, beaten whipped cream and milk shakes, tea cocoa, chocolate, chocolate goods, pastry and confectionery, biscuits, rice, flour and preparations made from cereals, bread, ices, honey cakes, waffles, cakes mainly consisting of ice cream, sweet spreads, namely nut nougat creams and chocolate spreads are dissimilar to the opponent’s fresh onions. The applicant has restricted the scope of protection, excluding onions from the services in Class 35. The aforesaid wholesale and retail services relating to the sale of particular goods are not similar to other goods. It should be noted that, in principle, goods are not similar to services. Too broad a protection would be given to retail services if similarity were found between them, even where the goods sold at retail/wholesale were highly similar to the goods covered by the other mark.

As far as the abovementioned contested advertising, promotion, and import and export services are concerned, they are also dissimilar to the opponent’s fresh onions. Import and export services relate to the movement of 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. As they are classified in Class 35, they are considered to relate to business administration. For these reasons, goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question are the same is not a relevant factor for finding a similarity.

The same applies to advertising and promotion services. These services are intended to provide assistance to businesses by promoting their products, improving their market share and their functioning. As such, they are rendered by specialised undertakings, such as advertising agencies, who study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, web sites, videos, the internet, exhibitions, etc.

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 found to be similar to various degrees are generally directed at the public at large. The degree of attention may vary from average to below average, as these are usually inexpensive goods that are regularly purchased.

3. The signs

	SWEETY
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 earlier mark is a figurative mark containing the verbal elements ‘FC’, ‘SWEET’ and ‘ONIONS’ written in standard letters, some in willow-green (‘FC’) and some in white (‘SWEET’ and ‘ONIONS’). The final two words are depicted against a willow-green rectangle and the verbal element ‘FC’ appears above the word ‘SWEET’.

The contested sign is a one-word mark, ‘SWEETY’.

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

The verbal elements ‘FC’, ‘SWEET’ and ‘ONIONS’ of the earlier mark and the word ‘SWEETY’ of the contested sign are not meaningful expressions in certain territories and languages, namely those where English is not understood, for instance in Poland/Polish and Spain/Spanish. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on these territories, where the signs are not understood, for instance on the Polish- and Spanish-speaking parts of the public.

As the verbal elements ‘FC’, ‘SWEET’ and ‘ONIONS’ of the earlier mark are not descriptive, allusive or otherwise weak for the relevant goods, they are distinctive. Any consumer, when perceiving the earlier mark as a whole, will focus on the verbal elements ‘SWEET’ and ‘ONIONS’, as these are words, and therefore they are the dominant elements of the sign.

The contested sign, as a one-word mark, has no elements that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the signs coincide in the word ‘SWEET’. As explained above, this is one of the distinctive and dominant elements of the earlier mark. However, the verbal element ‘SWEET’ and the contested sign differ in the letter ‘Y’ in the latter. In addition, the earlier mark and the contested sign differ in other distinctive verbal elements, that is, ‘FC’ and ‘ONIONS’, and the figurative elements of the earlier mark.

Therefore, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SWEET’, present identically in both signs. As explained above, these letters make up one of the distinctive and dominant elements of the earlier mark. The pronunciation differs in the sound of the letters ‛FC’ and ‘ONIONS’ of the earlier sign, which have no counterparts in the contested mark. In addition, they differ in the letter ‛Y’ at the end of the contested sign, which has no counterpart in the earlier mark.

Therefore, the signs are aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

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.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

The contested goods are partly similar to various degrees and partly dissimilar to the opponent’s goods, and the contested services are dissimilar to the opponent’s goods. The goods target the public at large, whose degree of attention may vary from average to below average. The signs are visually and aurally similar to an average degree. Furthermore, the earlier mark has a normal degree of distinctiveness.

Although the coincidences in the signs are less obvious than the differences, a likelihood of confusion still exists, as the coinciding element plays an independent distinctive role in both signs.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that does not understand English, for instance the Polish- and Spanish-speaking parts of the public, and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Loreto URRACA LUQUE

Michal KRUK

Plamen IVANOV

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.