OPPOSITION No B 2 465 600

Edulife Societa’ Per Azioni, Lungadige Galtarossa, 21, 37133 Verona (VR), Italy (opponent), represented by Mondial Marchi S.R.L., Via Olindo Malagodi, 1, 44042 Cento (FE), Italy (professional representative)

a g a i n s t

Fundació Centre De Regulació Genòmica, c/ Doctor Aiguader, 88 – Edifici PRBB, 6a. planta, 08003 Barcelona, Spain, and VIB, Rijvisschestraat 120, 9052 Gent, Belgium (applicants), represented by Consulpi Propiedad Industrial S.L., Rambla Badal 137-139-Esc B-Ent.1, 08028 Barcelona, Spain (professional representative).

On 25/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 465 600 is partially upheld, namely for the following contested goods and services:

Class 9: Electronic publications, downloadable; Recording discs, Compact discs, CD-ROMs, Video cassettes, DVDs; Computer programmes [programs], recorded, CD-ROMs; all the above mentioned products in relation to the life sciences sector.

Class 16: Books, magazines and printed publications; Teaching material (except apparatus); all the above mentioned products in relation to the life sciences sector.

Class 41: Arranging and conducting of courses, conferences, colloquiums, seminars, symposiums and training workshops, organisation of trade fairs and congresses for educational, cultural and training purposes, correspondence courses; Training (Practical -) [demonstration]; Publication of texts (other than publicity texts), Publication of books, Publication of electronic books and journals on-line; all the above mentioned services in relation to the life sciences sector.

2.        European Union trade mark application No 13 285 549 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all of the goods and services of European Union trade mark application No 13 285 549. The opposition is based on European Union trade mark registration No 2 510 535 and Italian trade mark registration No 955 682. 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 applicants requested that the opponent submit proof of use of the trade marks on which the opposition is based.

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

The contested application was published on 04/11/2014. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union and Italy from 04/11/2009 to 03/11/2014 inclusive.

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

European Union trade mark registration No 2 510 535 ‘EDULIFE’

On 29/08/2016, the opponent filed a declaration in accordance with Article 28(8) EUTMR declaring that it was its intention on the date of filing of the European Union trade mark application for the word mark ‘EDULIFE’ to seek protection in respect of services beyond those covered by the literal meaning of the class headings of Classes 35, 38, 41 and 42. This declaration was examined by the Office and the amended list of goods and services was published on 24/01/2017 in the European Union Trade Marks Bulletin, part C.3.2. The current list of services is therefore as follows:

Class 35:         Advertising; Business management; Business administration; Office functions; Auctioneering services; Commercial information agencies; Import-export agency services; Shop window dressing; Business investigation; Rental of advertising space; Office machines and equipment rental; Publicity material rental; Exhibitions for commercial or advertising purposes; Economic forecasting; Public relations services; Marketing studies; Business research; Opinion polling; Rental of photocopying machines; Modelling for advertising or sales promotion.

Class 38:         Telecommunications; Information about telecommunication; Rental of message sending apparatus; Rental of telecommunication equipment; Rental of facsimile apparatus; Rental of modems; Rental of telephones.

Class 41:         Education; Providing of training; Entertainment; Sporting and cultural activities; Publication of books; Publication of texts, other than publicity texts; Rental of sports equipment, except vehicles; Rental of movie projectors and accessories; Rental of show scenery; Timing of sports events; Entertainment information; Education information; Recreation information; Rental of skin diving equipment; Rental of video recorders; Rental of audio equipment; Rental of lighting apparatus for theatrical sets or television studios; Rental of video cameras; Booking of seats for shows; Rental of stage scenery; Modelling for artists.

Class 42:        Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming.

Italian trade mark registration No 955 682 ‘EDULIFE’

Class 35:         Advertising; Business management; Business administration; Office functions.

Class 38:         Telecommunications.

Class 41:         Providing of education; training; entertainment; sporting and recreational activities.

Class 42:        Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming.

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 marks for the goods and services in respect of which they are registered and on which the opposition is based.

On 29/10/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 03/01/2016 to submit evidence of use of the earlier trade marks. The opponent had already submitted evidence of use on 28/09/2015, before the Office’s express invitation to file proof of use.

As the opponent requested to keep certain commercial data contained in the set of submissions, including invoices, confidential vis-à-vis third parties, the Opposition Division will describe such evidence only in the most general terms without divulging any such data. This will not affect the presentation of the information that is otherwise publicly available.

The evidence to be taken into account is the following:

• Several invoices for each year between 2009 and 2014 for the provision of education and training and the publication of texts, addressed to various clients in Italy and Spain. The figurative sign  is displayed on each invoice.

• Several invoices dated in the period 2009-2013 showing that various promotional material displaying the figurative sign ‘EDULIFE’ was ordered from a printing company.

• A brochure in Italian regarding a ‘National Conference for the Training’ dated 2012 showing the figurative sign ‘EDULIFE’.

• A brochure in Italian displaying the mark ‘EDULIFE’ and the words ‘Good Practices’, referring to the opponent’s activities in the field of education and training, together with a partial translation into English.

• Several screenshots and pages from the website http://www.edulife.it/en describing and presenting services provided by the opponent. Partial translations into English have been provided.

• An undated service catalogue, presenting the project ‘EDULIFE’ with its mission and vision in relation to teaching models for enterprise social learning.

• Several copies of printouts from websites of different companies referring to ‘Edulife’ and the opponent’s activities, for example a copy of a news item by the University of Verona, Italy, containing the following information: ‘the online learning environment of the University of Verona is organized in collaboration with Esu ARDSU and is run with the support of Edulife Verona company leader in services for the online teaching’. It also includes screenshots of the website of the company Aliware, Italy, containing the following information: ‘more than 100.000 people in 17 countries worldwide are using Edulife as learning management system’.

Place of use

The evidence, which is exclusively in Italian, clearly shows that the place of use is Italy. The invoices show the use of the marks throughout the entire country and in some important cities in Spain.

Consequently, and in accordance with Article 15(1), second subparagraph, point (b) EUTMR, the evidence of use filed by the opponent contains sufficient indications concerning the place of use of both the Italian trade mark and the European Union trade mark.

Time of use

All the evidence is dated within, and is distributed evenly throughout, the relevant period.

Therefore, the evidence of use sufficiently indicates the time of use.

Extent of use

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

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

The documents filed, in particular the invoices for substantial amounts, supported by the catalogues, advertising material and other materials, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use and sufficiently demonstrate that there has been public and outward use of the marks.

The materials submitted, in particular the invoices, relate to dates during the five years of the relevant period and prove that the marks were used consistently and frequently during that period. Moreover, the territorial extent of the use was sufficiently shown, given that the evidence shows use of the trade marks throughout the entire territory of Italy and by clients located in some important cities in Spain.

The amounts shown in the invoices range from several hundred euros to over ten thousand euros per invoice and demonstrate that services amounting to a substantial value were provided; they also provide sufficient information concerning the commercial volume of use.

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

Nature of use

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

The evidence of use filed by the opponent, as listed above, shows use of the sign ‘EDULIFE’ as a trade mark identifying the commercial origin of the services provided by the opponent.

Therefore, the Opposition Division considers that the evidence shows use of the sign as a trade mark in the course of trade within the meaning of Article 15(1)(a) EUTMR.

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

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

The opponent’s earlier marks are the word marks ‘EDULIFE’. The evidence demonstrates use of the word ‘EDULIFE’ with a figurative element and the letter ‘F’ depicted in a different font and occasionally in colour, as shown below:

It is appropriate to consider whether the marks as used differ from their registered forms in a way that would affect their distinctive character or, in spite of some differences, the marks as used and their registered forms are essentially the same.

The figurative elements are not considered the main contributors to the overall distinctiveness of the signs, since they are mostly decorative, and the additional word elements, such as ‘apprendere per crescere insieme’, which means ‘learning to grow together’, are considered purely laudatory. The depiction of the word ‘EDULIFE’ in the ways shown above constitutes an acceptable means of bringing the marks in question to the public’s attention and, consequently, does not materially affect the distinctiveness of the main element ‘EDULIFE’.

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

As regards the use of the earlier marks for the services for which they are registered, having duly assessed the evidence submitted by the opponent, the Opposition Division finds that there is insufficient evidence as regards the use of the earlier trade marks in connection with most of the services for which they are registered and use is shown for only certain specific types of services in Class 41, namely education, providing of training and publication of texts, other than publicity texts.

In fact, no evidence was submitted in respect of any of the services in Classes 35, 38 or 42 or in respect of the remaining services in Class 41, namely entertainment; sporting and cultural activities; publications of books; rental of sports equipment, except vehicles; rental of movie projectors and accessories; rental of show scenery; timing of sports events; entertainment information; education information; recreation information; rental of skin diving equipment; rental of video recorders; rental of audio equipment; rental of lighting apparatus for theatrical sets or television studios; rental of video cameras; booking of seats for shows; rental of stage scenery; modelling for artists of the EUTM and entertainment; sporting and recreational activities of the Italian trade mark. None of the items of evidence submitted mentions these services or refers to them. Some invoices indicate the provision of services such as the use of an internet platform (telecommunication), promotion on search engines and the development of a video presentation (advertising), and the creation and sending of invitations and mailing services (office functions). However, these are isolated invoices and do not allow the conclusion to be drawn that the marks were genuinely used for these services, which seem to be merely ancillary to the main services associated with the provision of training.

Therefore, the earlier marks have been used for only some of the services for which they are registered.

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Overall assessment

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

Taking into account the evidence in its entirety, it does reach the level necessary to establish genuine use of the earlier trade marks during the relevant period in the relevant territory.

As indicated above, the evidence filed by the opponent does not show genuine use of the trade marks for all the services covered by the earlier trade marks.

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

The Opposition Division considers that the evidence shows genuine use of the trade marks for the following services:

European Union trade mark registration No 2 510 535 ‘EDULIFE’

Class 41: Education; providing of training; publication of texts, other than publicity texts.

Italian trade mark registration No 955 682 ‘EDULIFE’

Class 41:         Providing of education; training.

Consequently, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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

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

The 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 Union trade mark registration No 2 510 535.

1. The goods and services

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

Class 41: Education; providing of training; publication of texts, other than publicity texts.

The contested goods and services are, after a subsequent limitation, the following:

Class 9: Electronic publications, downloadable; Recording discs, Compact discs, CD-ROMs, Video cassettes, DVDs; Computer programmes [programs], recorded, Magnetic data carriers, CD-ROMs; Discount cards [magnetic], Magnetic credit cards, Magnetic club-membership cards; all the above mentioned products in relation to the life sciences sector.

Class 16: Books, magazines and printed publications; Catalogues, envelopes, letters, invoices, cards, agendas (not electronic), posters, calendars, note books, postcards, blueprints, newsletters and printed forms in general; Articles for writing; Teaching material (except apparatus); Stationery; all the above mentioned products in relation to the life sciences sector.

Class 41: Arranging and conducting of courses, conferences, colloquiums, seminars, symposiums and training workshops, organisation of trade fairs and congresses for educational, cultural and training purposes, correspondence courses; Training (Practical -) [demonstration]; awards, Publication of texts (other than publicity texts), Publication of books, Publication of electronic books and journals on-line; all the above mentioned services in relation to the life sciences sector.

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.

As a preliminary remark, it must be noted that the contested goods and services include the limitation all the above mentioned products/services in relation to the life sciences sector. However, this limitation – contrary to the applicants’ arguments – does not alter the substance of the comparison and, in some cases, does not even alter the scope of the goods or services. Therefore, although duly considered by the Opposition Division in the comparisons below, it will not be included in the comparison to avoid unnecessary repetition.

Contested goods in Classes 9 and 16

All of the kinds of teaching materials in Classes 9 (pre-recorded) and 16 (printed) are essential and thus complementary to the opponent’s education and provision of training. Generally, the contested goods are issued by the same undertaking as the opponent’s services; they have the same public and distribution channels (23/10/2002, T-388/00, ELS, EU:T:2002:260).

Therefore, the contested electronic publications, downloadable; compact discs, CD-ROMs (listed twice), video cassettes, DVDs, computer programmes [programs] recorded in Class 9 and books, magazines and printed publications; teaching material (except apparatus) in Class 16 are similar to the opponent’s education and provision of training.

The remaining contested goods in Class 9, namely recording discs, magnetic data carriers; discount cards [magnetic], magnetic credit cards, magnetic club-membership cards, are not essential for the provision of the opponent’s services and therefore do not have the same points in common with the opponent’s services as the other goods in this class. These goods are not issued by the same undertaking and do not have the same public or distribution channels as the opponent’s services. Therefore, these goods are dissimilar to the opponent’s services.

The remaining contested goods in Class 16, namely catalogues, envelopes, letters, invoices, cards, agendas (not electronic), posters, calendars, note books, postcards, blueprints, newsletters and printed forms in general; articles for writing; stationery, are not essential for the provision of the opponent’s services and therefore do not have the same points in common with the opponent’s services as the other goods in this class. These goods are not issued by the same undertaking and do not have the same public or distribution channels as the opponent’s services. Therefore, these goods are dissimilar to the opponent’s services.

Contested services in Class 41

The contested arranging and conducting of courses, conferences, colloquiums, seminars, symposiums and training workshops, organisation of trade fairs and congresses for educational, cultural and training purposes, correspondence courses; training (practical -) [demonstration] are included in the opponent’s education and provision of training. It follows that these services are identical.

Publication of texts (other than publicity texts) is identically reproduced in both lists. As stated above, the limitation all the above mentioned services in relation to the life sciences sector in the list of contested goods and services does not alter this finding.

The contested publication of books, publication of electronic books and journals on-line include, as broad categories, the opponent’s publication of texts (other than publicity texts). Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested awards relate to the hosting and organisation of competitions and awards. These services do not have the same purpose and are not provided by the same undertaking as the opponent’s services. They do not have the same distribution channels and do not target the same public. Therefore, these services are considered dissimilar to the opponent’s services.

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 services found to be identical or similar are directed at the public at large and at business customers (e.g. the latter in relation to arranging and conducting of courses, conferences, colloquiums, seminars, symposiums and training workshops, organisation of trade fairs and congresses for educational, cultural and training purposes). Depending on the price, subject matter, duration and complexity of the services, the degree of attention may vary from average to high.

3. The signs

EDULIFE
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). 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 of both signs have, as a whole, no meaning for the public in the relevant territory. However, for example, the English-speaking public will perceive the word ‘LIFE’ in both marks, given that this word is widely understood as referring to ‘the existence of an individual human being or animal’. In addition, when the element ‘LIFE’ is understood, the public is likely to split the marks and understand ‘EDU’ as referring to ‘education’ in relation to the relevant services and recognise ‘EU’ as referring to the European Union and thus to the territory where the services are provided or to the fact that they comply with EU standards, for example.

The contested sign is composed of the word ‘EULIFE’ and a device made up of eight tulip-shaped elements placed above the word and depicted in different shades of pink and purple. Even if the element ‘EU’ in the sign would be understood as referring to the ‘European Union’ by part of the public, a significant part of the relevant public will not split the mark ‘EULIFE’ and will perceive it as a single, meaningless word without any distinguishable components.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Hungarian-, Slovak- and Slovenian-speaking parts of the public, which will not associate the words ‘LIFE’, ‘EDU’ and ‘EU’ with any concepts in the context of the relevant goods and services and, therefore, will not dissect the marks and will perceive them as single, meaningless words without any identifiable components.

Therefore, the Opposition Division will focus the comparison on this part of the relevant public, for which the word ‘eulife’ has a normal degree of distinctiveness in the context of the relevant goods and services. Furthermore, it is considered that the figurative element is not more eye-catching than the verbal element ‘eulife’ of the contested sign. Therefore, the contested sign has no element that could be considered more dominant than other elements. The earlier mark is a word mark consisting of a single word, ‘EDULIFE’, which also has no meaning for the public in the relevant territory in relation to the relevant services. Therefore, it enjoys a normal degree of distinctiveness.

Visually, the signs coincide the six letters ‘E*ULIFE’ in the same sequence, which make up the entire verbal element of the contested sign. They differ, however, in the second letter, ‘D’, of the earlier mark and the device element in the contested sign, the latter having no counterparts in the earlier mark.

As regards the figurative element of the contested sign, its impact in the evaluation of the visual similarity is less important than the verbal element, since, 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, since 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

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

Aurally, the pronunciation of the signs coincides in the sounds ‘E*ULIFE’, present in both signs. The pronunciation differs in only the sound of the letter ‘D’, the second letter in the earlier mark. Therefore, the signs have very similar rhythms and intonations, as the sound of the differing letter ‘D’ is not of such a nature that it significantly offsets the sounds of the aurally identical letters surrounding it.

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 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.

5. Global assessment, other arguments and conclusion

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

The goods and services are identical and similar. The earlier mark enjoys a normal degree of distinctiveness.

Taking into account that the relevant public will refer to the contested sign as ‘EULIFE’, the signs are visually and aurally similar to an average degree. The difference between the signs lies only in the letter ‘D’ of the earlier mark.

Account must be 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). Even consumers with a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

Taking into account the abovementioned similarities between the signs in question, the Opposition Division considers that those similarities might lead at least part of the relevant public, even with a high degree of attention, to think that the contested goods and services and the opponent’s services come from the same undertaking or from economically linked undertakings. Considering all the above, there is a likelihood of confusion on the part of the Hungarian-, Slovak- and Slovenian-speaking parts of the public, including when the degree of attention is higher than average. 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 and there is no need to analyse the perception of the remaining part of the public.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 2 510 535. It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical and similar 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 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Jessica LEWIS

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.