OPPOSITION No B 2 427 857

Deutsche Post AG, Charles-de-Gaulle-Str. 20, 53113 Bonn, Germany (opponent), represented by Jonas Rechtsanwaltsgesellschaft mbH, Hohenstaufenring 62, 50674 Köln, Germany (professional representative)

a g a i n s t

Escher Group (IRL) Limited, 111 St. Stephens Green, Dublin 2, Ireland (applicant), represented by Baker & McKenzie, Paseo de la Castellana, 92, 28046 Madrid, Spain (professional representative)

On 20/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 427 857 is rejected in its entirety.

2.        The opponent bears the costs, fixed at EUR 300.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 12 880 043. The opposition is based on the following earlier trade mark registrations and grounds:

	Articles	Earlier trade mark registrations
1)	8(5) EUTMR	German trade mark No 30 012 966 ‘POST’
2)	8(1)(b) EUTMR	German trade mark No 30 012 966 ‘POST’
3)	8(1)(b) EUTMR	European Union trade mark No 11 102 902

The Opposition Division will examine the grounds and earlier rights in the above mentioned order.

I. REPUTATION – ARTICLE 8(5) EUTMR

The opponent invoked Article 8(5) EUTMR in relation to earlier German trade mark No 30 012 966 ‘POST’.

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

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

• The signs must be either identical or similar.

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

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

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

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

1. The signs

POST	POSTPORT
Earlier trade mark	Contested sign

The relevant territory is Germany.

The earlier mark is a pure word mark, consisting of the word ‘POST’. The contested sign is a pure word mark, consisting of the word ‘POSTPORT’. As word marks, these signs have no element that could be considered more dominant (visually eye-catching) than other elements.

Regarding the meaning of the verbal element ‘POST’ on ist own, the relevant public will perceive this term as ‘die Post: 1) Dienstleistungsunternehmen zur Beförderung von Briefen, Paketen, Geldsendungen u.a., ®; 2) Postfiliale; 3) etwas, was von der Post zugestellt worden ist oder von der Post befördert werden soll; 4) (umgangssprachlich) Zustellung von Post’ (Duden Online Dictionary, 04/05/2017, http://www.duden.de/rechtschreibung/Post_Unternehmen_Filiale), translated as: 1) company providing the service of conveying letters, parcels, cash remittances, etc. ®; 2) post-office branch; 3) something that has been delivered by the post office or is to be conveyed by the post office; 4) colloquial term for ‘postal delivery’.

The word ‘POST’, contained in both signs, is per se non-distinctive in relation to goods and services relating to the physical or electronic delivery of mail and other items.

According to case-law, in opposition proceedings before the Office the validity of national trade marks may not be called into question for absolute grounds (such as lack of distinctive character, descriptive or generic character), under Article 7 EUTMR. Therefore, it is necessary to acknowledge a certain degree of distinctiveness in a registered national mark (24/05/2012, C-196/11, F1-Live, EU:C:2012:314, §§ 41, 47). The Opposition Division accordingly assumes that ‘POST’ is a registered national trade mark and that, in terms of absolute grounds for refusal, it had at least the minimum degree of distinctive character required for registration at the date of filing (22/02/2000). The earlier mark ‘POST’ has only a low degree of distinctiveness (13/05/2015, T-102/14, TGP Post, EU:T:2015:279, § 68).

The verbal element ‘PORT’, contained in the contested sign, is used in the context of computing and refers to: Schnittstelle, die ein peripheres Gerät mit dem Bus verbindet (Duden Online Dictionary, 04/05/2017, http://www.duden.de/rechtschreibung/Port_Schnittstelle_Hardware), translated as: hardware interface by which an external device is connected to a computer. The opponent argues that ‘PORT’ is weak. The Opposition Division agrees that is distinctiveness is lower than average, as it is allusive in relation to services which can be carried out with electronic devices, but notes that it is not descriptive of the contested services (being provision of use to non-downloadable software) and that it is more distinctive than the term ‘POST’.

The term ‘POSTPORT’, as a whole is not listed in dictionaries. Although it may not be excluded that a part of the public may perceive it as a meaningful combination referring to ‘a hardware interface for (electronic) mail or delivery’ – which consequently will be of limited distinctiveness –, for another part of the public it will be a coined word without a clear concept going beyond the combination of the elements. In any case, in this combination, the word ‘POST’ will not be perceived as an indication to an undertaking.

Visually, the signs coincide in the per se non-distinctive word ‘POST’. They differ in the word ‘PORT’ of the contested mark. Furthermore, they differ noticeably in length: four vs. eight letters. Overall, and despite that the common element is placed at the beginning of the contested mark, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛POST’, present identically in both signs. The pronunciation differs in the sound of the second syllable of the earlier sign, ‘PORT’, which has no counterpart in the other sign. The earlier mark contains one syllable, the contested one two, which leads to a different rhythm and intonation. The signs are aurally similar to a low degree.

Conceptually, the earlier sign has the meanings indicated above, including ‘a specific undertaking’ (namely the opponent), ‘mail’ or ‘postal delivery’. As regards the contested sign, reference is made to the findings above. Irrespective of the perception of the relevant public as regards the concepts in the contested sign, since the common element will not be seen as a reference to an undertaking, the conceptual similarity on account of the per se descriptive meaning of ‘POST’ will be at most low.

As the signs have been found similar in at least one aspect of the comparison, the examination of Article 8(5) EUTMR will proceed.

2. Reputation of the earlier trade mark

According to the opponent, the earlier German mark No 30 012 966 enjoys a high degree of distinctiveness, ‘due to an extensive and longstanding use’ in Germany and has acquired a reputation among the German public, in connection with all the services for which it is registered.

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 16/05/2014, with a priority date of 19/11/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Germany prior to the priority date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 35: Collecting, forwarding and delivery of direct and indirect mail advertising.

Class 39: Postal, freight, express, parcel and courier services; transport and delivery of items, letters, parcels, packets; collecting, forwarding and delivery of consignments with written communications and other messages, in particular letters, printed matter, trade samples, circulars, books, Braille literature, newspapers, periodicals, brochures.

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

The evidence was presented within the prescribed time limits on 29/07/2016 in a clear and structured manner and consists of the documents listed below. For the sake of clarity and ease of reference, the Opposition Division will follow the numbering of items provided by the opponent.

Annex 1)         Printout from the German online dictionary Duden, www.duden.org, with an entry for the word ‘POST’ with the following meanings (translated into English): ‘1) company providing the service of conveying letters, parcels, cash remittances, etc., this is followed by the symbol ®, which indicates that the word is used as a trade mark; 2) post-office branch; 3) something that has been delivered by the post office or is to be conveyed by the post office; 4) colloquial term for ‘postal delivery’.

Annex 2)         Printouts from Wikipedia, www.wikipedia.org (printed 16/12/2015), and from the opponent’s homepage (printed 16/12/2015), with information about the history and present status of the undertaking from its establishment until the present day. The evidence refers to the opponent’s brands ‘Deutsche Post’, ‘DHL’, ‘Power Packaging’, ‘ePost’ and ‘E-Postbrief’. The Deutsche Post brand is depicted as .

Annex 3)         Excerpts from Semion® Brand-Broker GmbH evaluations of well-known German trade marks dated from 2005 to 2014. During this period, the mark ‘Dt. Post’ appears in fourth, fifth and sixth position. It shows the brand value at approximately EUR 15 million. In 2007, an additional remark states, ‘the opening of the market and the loss of rights to the generic word mark ‘POST’ diminish the brand value’. According to the 2014 valuation the mark had lost 20 % of its value in the last 10 years, i.e. after the liberalisation.

Annex 4)        Excerpts from the Deutsche Post DHL Group Annual Report of 2014 giving key figures for the period 2007 to 2014. The excerpt includes a yearly breakdown of company revenue in each field, one of them named as ‘Post – eCommerce – Parcel (until 2013 Mail)’.

Annex 5)        Two consumer surveys (with an explanation of the methodology used for the surveys included) conducted by independent survey institutes, namely IPSOS Deutschland GmbH (2000) and NFO Infratest (2002) about the public’s degree of awareness of the trade mark ‘POST’. According to the results of the IPSOS Deutschland GmbH (2000) survey concerning the secondary meaning of ‘POST’, when interviewees were shown the name ‘POST’, 94.9% of them related it to the relevant services, and 77.6% recognised a specific undertaking behind those services. A total of 70.6% of the interviewees named ‘Deutsche Post (AG)’, ‘Post (AG)’, ‘Bundespost’, ‘Gelbe Post (AG)’, ‘Post-Express’ or something similar when asked for the name of the undertaking they associate with this word. According to the survey conducted by NFO Infratest in November/December 2002, 67.8% of the interviewees spontaneously associated the designation ‘POST’ with a certain enterprise in Germany.

Annex 6)        A consumer survey conducted by TNS Infratest in 2005 (with an explanation of the methodology used for the surveys included) that gives information about the degree of awareness of the word ‘POST’ and shows that 76.6% of the German public associated the word ‘POST’ with the opponent, thereby reaffirming the results of the previous two surveys conducted in 2000 and 2002 submitted as Annex 5.

Annex 7)        A market survey carried out by Pflüger Rechtsforschung GmbH in October and November 2015. The survey contains information on the methodology, number of respondents (sample of 2 000 interviewees), type of questions asked, data analysed and results referring to the awareness of the sign ‘POST’ and its association with one particular undertaking. According to the results, 97.5% of the German population knows that the word ‘Post’ refers to the transport of letters and parcels. The designation ‘Post’ has a degree of distinctiveness of 81.0% among the total population in Germany in connection with the transport of letters and parcels, that is, the percentage of interviewees associating ‘Post’ exclusively with one particular undertaking. A total of 68.2% of the correct literal allocations of this designation refer to the company ‘Deutsche Post AG’ after clarifying questions. Without the clarifying questions, this percentage is 63.8%.

Annex 8)        Decision of the German Federal Patent Court regarding Cancellation Proceedings 26 W (pat) 27/06, dated 28/10/2010. The decision rejects the request for cancellation based on an alleged lack of distinctiveness, due to surveys in 2000 and 2002 that show that 78 % of those surveyed associate the term ‘POST’ with postal services provided by the opponent. The Court held that the trade mark ‘POST’ had acquired a secondary meaning amongst trade circles prior to the date of the decision rendered on its registration, as a result of its use for the services in respect of which it had been applied for. The Court considered that use in the form ‘Deutsche Post’ had to be taken into consideration when determining the use of ‘POST’.

Annex 9)        An undated scholarly article by Dr. Büscher, a judge at the IP Senate of the German Supreme Court, according to which the trade mark ‘POST’ fulfils not only the requirements for distinctiveness acquired through use, but also those for a well-known trade mark in Germany, as for postal services almost 85 % of the general public associate ‘POST’ with a particular company. According to the opponent the article dates from 2006.

Annex 10)        Printouts from the Internet showing use of the slogans ‘Die Post im Internet. Der E-Postbrief’ (www.epost.de/privatkunden.html, 28/01/2011, translated by the opponent as ‘The Post on the Internet. The E-Postbrief’), ‘Die Post im Internet. Der E-Postbrief kommt‘ (www.number1.biz, dated 10/07/2010, translated by the opponent as ‘The Post on the Internet. The E-Postbrief is coming’) and ‘Die Post im Internet. Die Post für Deutschland‘ (http://bonner-presseblog.de, dated 11/10/2010, translated by the opponent as ‘The Post on the Internet. The Post for Germany‘).

Annex 11)        Printout from the webpage, www.slogans.de (dated 14/07/2010), with the title ‘Deutsche Post startet E-Postbrief: “Verbindlich. Vertraulich. Verlässlich.’’’ (translated as ‘German Post launches e-mail letter: “Binding. Confidential. Reliable’’)’.

Annex 12)        Article from the webpage www.horizont.net (dated 14/07/2010), with the heading ‘Deutsche Post startet Mega-Kampagne für den E-Postbrief’.

Annex 13)        An article from the website www.postandparcel.info (dated 05/11/2010) entitled ‘Deutsche Post reaches hybrid mail landmark’. Reference is made only to the E-POSTBRIEF.

Annex 14)        Press release from www.marktforschung.de (dated 14/11/2011), on German public awareness of ‘E-POSTBRIEF’.

Annex 15)        A presentation documenting the opponent’s advertising campaigns in 2010 to 2013 regarding ‘E-POSTBRIEF’ and ‘E-POST’.

Annex 16)        Market research undertaken by MRSC in 2010, showing brand awareness of the trade mark  amongst the rest of the German enterprises in the mail and delivery sector.

Annex 17)        Copies of two market analyses carried out by the German Federal Network Agency in September 2009 and April 2013. In the 2009 analysis, the agency came to the conclusion that the opponent’s market share in the relevant market of the letter delivery services reached 98.8 % in 1999 and slightly more than 90 % in 2009. The opponent’s share of the turnover generated in this market reached 98.7 % in 1999 and 89.3 % in 2008. In the 2013 analysis, the agency investigated the same market share in respect of 2008 to 2011, and the results show that the opponent still held a market share of around 90 % in 2011 and 89.3 % in 2008. No reference is made to the trade mark ‘POST’.

Annex 18)        Excerpts from an analysis published on 28/01/2014 by WIK-Consult GmbH and ITA Consulting GmbH. According to the document, Deutsche Post remains the undisputed leader in the traditional (paper mail) postal sector, with a market share of around 90 %, 10 years after the liberalisation of the postal services market in Germany.

Annex 19)        Printouts from Cedelex of registrations and use on the opponent’s webpage of the trade marks ‘POSTIDENT’, ‘POSTIDENT SPECIAL’, ‘POSTIDENT COMFORT’, ‘POSTIDENT BASIC’ ‘POSTKIT’, ‘POSTCARD’, ‘POST-24/7’, ‘POSTFACH’, Deutsche Post POSTWURFSPEZIAL’, ‘POSTVERTRIEBSSTÜCK’, ‘POSTPAY’, ‘POSTADRESS’, ‘E POSTBUSINESS’, ‘E POSTSAFE’ and ‘Postbus’. The screenshots are dated January 2011.

Relevant time period and territory, language of the documents

The opponent submitted the abovementioned evidence in order to prove the reputation of the earlier mark. The Opposition Division notes that the evidence submitted by the opponent concerns the relevant territory, namely Germany. All evidence submitted in the original language, German, is supported with (partial) translations into English in compliance with the requirements of the Office.

Most of the evidence is dated prior to the priority date of the contested sign, namely 19/11/2013. The market survey carried out by Pflüger Rechtsforschung GmbH (Annex 7) is dated later and the scholarly article by Dr. Büscher (Annex 9) is undated. The extracts from Wikipedia and from the opponent’s homepage (Annex 2) are also dated later but refer to the relevant time period.

Probative value of part of the documents

Case-law has consistently held that information from collective encyclopaedias such as Wikipedia lacks certainty, because their content may be amended at any time and, in certain cases, by any visitor, even anonymously (18/06/2013, T-338/12, K9 products, EU:T:2013:327, § 32; 10/02/2010, T-344/07, Homezone, EU:T:2010:35, § 46; 16/11/2011, T-500/10, DORMA, EU:T:2011:679, § 55). Therefore, the probative value of the printout from Wikipedia (Annex 2) is considered to be low. Likewise, an issue also raised by the applicant, the probative value of the printouts of the opponent’s homepage (Annex 2) is diminished, as it comes from the party itself and not from an independent third party. In any case, these documents concern the history of the opponent as an undertaking and do not contain information regarding the earlier mark ‘POST’.

The opponent as an undertaking, the market share and marketing campaigns

The opponent considers that the earlier mark enjoys a substantial reputation in Germany for services in Classes 35 and 39 due to the long-standing, continuous and intensive use of the earlier mark. The term ‘POST’ became an indication of origin of the opponent through its historical association with ‘Deutsche Bundespost’, the State postal services in Germany, which was the opponent’s predecessor. The term ‘POST’ was exclusively connected with Deutsche Bundespost (established in 1950) for almost 50 years. Even after its privatisation in 1995, the German public associated the term ‘POST’ with the opponent as its legal successor. Even nowadays, the opponent is still the leading postal undertaking for (paper) mail delivery in Germany (Annexes 17 and 18). It has spent a considerable amount of money in marketing campaigns for ‘E-POST’, ‘E POSTBRIEF’ etc. (Annexes 10 to 15) and created high revenue (Annex 4).

The Opposition Division points out that the documents submitted to prove the high market share (Annexes 17 and 18) relate to the opponent itself and not to the earlier trade mark ‘POST’ on its own. They do not clarify to which of the several trade marks of the opponent the market share relates. Similar reasoning applies to the revenue as presented in the Deutsche Post DHL Group Annual Report of 2014 (Annex 4). The Annual Report refers to the opponent as an undertaking and does not differentiate between the different trade marks owned by the opponent. The field ‘Post – eCommerce – Parcel (until 2013 Mail)’ indicates the relevant area, here the term ‘Post’ is used in its meaning ‘mail’ and not as a trade mark. As regards the marketing campaigns (Annexes 10 to 15), it clear from the documents submitted that they concern other trade marks such as ‘E-POST’ or ‘E-POSTBRIEF’.

Registration of the earlier mark due to acquired distinctiveness

The opponent considers the registration of the earlier mark to be proof that it enjoys enhanced distinctiveness or reputation. The Opposition Division does not agree. Registration of the earlier trade mark due to distinctiveness acquired through use does not automatically mean that the trade mark also enjoys enhanced distinctiveness or reputation (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 68), but only that it reached the required minimum level to be registered. The fact that the earlier mark just reached the threshold required to be registered as a trade mark, does not mean that it has acquired such a degree of distinctiveness that it can serve to oppose every latter mark in which it is contained (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 44).

Even if the sign ‘POST’ acquired distinctiveness to serve as an indication of origin for the provision of postal services, its descriptive nature in relation to the subject matter of the services is out of the question (26/04/2017, B 2 667 726 POST/posta plus, corroborated by the German Federal Court of Justice in its decision of 23/10/2008, I ZB 48/07, Post II, § 35-36). The scope of protection of the sign ‘POST’ does not bar competitors from trade mark use of the term ‘POST’ according to honest practices in commerce and trade, provided such use is accompanied by other elements which help differentiate from the single trade mark ‘POST’ and such use is sufficient to maintain a distance from the opponent’s enterprise, within the requirements of avoiding likelihood of confusion (03/11/2014, R 2063/2013-1, PostModern/ Deutsche Post, §§ 6, 55).

As already indicated above, the earlier national trade mark had the minimum degree of distinctive character required for registration at the date of filing. It is considered to have just this low degree of distinctiveness.

Listing of the earlier mark in dictionaries and its various meanings

As regards the opponent’s argument that the word ‘Post’ is to be found in the Duden dictionary followed by the sign for a registered trade mark, the Opposition Division finds it appropriate to note the following: The Duden dictionary lists various different meanings for the word ‘POST’. Only one of these meanings refers to a ‘company providing the service of conveying letters, parcels, cash remittances, etc.’, that is to say, an undertaking. This definition is followed by the ® sign, which indicates that the previous term is a registered trade mark. Using the ® sign in a dictionary to make people aware of the fact that a certain word is a registered trade mark is a measure intended to avoid a trade mark becoming generic. This situation will occur when a word that can initially function as a trade mark becomes the generic name for the relevant products or services ‒ irrespective of who has produced or provided them. If a trade mark loses its distinctiveness and becomes a purely generic word, then it also loses trade mark protection. However, it is impossible to reverse the process and ‘resurrect’ a generic word and make it capable of being a trade mark (unless it is long forgotten), nor is it possible to make an inherently generic word in relation to particular goods and services become other than a generic word by putting the ® sign next to the word, even if there might be legal grounds for that.

The other meanings of the term ‘POST’ concern postal services in the broader sense. In particular, they indicate the action of transport and delivery itself (postal delivery), the objects transported (mainly letters and parcels) or the physical place where postal services are offered (post office). The term ‘POST’, on its own, can refer to any of these meanings, one of which relates to a particular undertaking, while the other refers to postal services or to the place where they are provided.

The opponent’s services in Class 35 are registered with a view to distributing advertising materials in the form of mail, rather than providing independent marketing services, and in particular advertising. The postal services for which the opponent’s mark is registered in Class 39 consist of a system for transporting letters and other tangible objects, such as written documents, typically enclosed in envelopes, and also small packages for delivery to various destinations. All the relevant services may be covered by the expression ‘POST’ as a term directly describing their essence. Therefore, the word ‘POST’ can be used by the German public in its daily life without bringing to mind any additional association with the opponent’s trade mark or company. Consequently, the word ‘POST’ is purely descriptive for the services covered by the earlier mark, which are postal services. Therefore, it is a generic term for the services at hand (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 38, 11/12/2013, R 2108/2012-1 TPG POST/ DP et al., §§ 42-47), which is also corroborated by the German Federal Court of Justice (23/10/2008, I ZB 48/07, Post II, § 35-36).

Liberalisation process in the relevant market

In the present case, particular attention must be paid to the changes in the relevant market, which took place due to the gradual liberalisation of postal services in the European Union (29/10/2012, R 2108/2012-1 TPG POST, § 63). From 1998 onwards, the postal monopoly was reduced by degrees following Directive 97/67/EC on common rules for the development of the internal market of Community postal services and the improvement of quality of service, Directive 2002/39/EC with regard to the further opening to competition of Community postal services, and Directive 2008/6/EC with regard to the full accomplishment of the internal market of Community postal services. Progressively, the postal services sector in the countries of the European Union was opened to new operators. Since 2008, the postal market has been fully liberalised in Germany. While postal services were carried out by a single state-owned entity in the past, this is no longer the case as they may be rendered by numerous companies nowadays.

Therefore, while the postal service may have been a service carried out by a single state-owned entity in the past and, consequently, the provision of these services was necessarily attributed to this entity, this is no longer the case. Likewise, the delivered items can be transported by various different entities. The relevant public will not necessarily link the term ‘POST’ with the opponent (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 69). Although part of the relevant German public may still recognise the trade mark significance of the word ‘POST’, this does not, in itself, demonstrate that this word has the value of a unique origin indicator when it is incorporated into trade marks that differ in their overall appearance, pronunciation and concept from the word ‘POST’.

Assessment of surveys

The above mentioned liberalisation of the market is also relevant for the assessment of the surveys. Part of the surveys (Annexes 5 and 6) indicate that in 2000, 2002 and 2005 a very high percentage of the relevant public in Germany associated the term ‘POST’ with the opponent. However, even though revealing a significant level of public awareness at the moment they were carried out and due to which the earlier mark reached the threshold required to be registered as a trade mark, the results from the surveys cannot serve as a direct presumption that the earlier mark nowadays has an enhanced distinctiveness which goes beyond the minimum level to be registered or even a reputation by the time of the priority date of the contested sign on 19/11/2013, when the relevant market had changed considerably.

When assessing the distinctive character of the earlier mark, account must be taken of its distinctive character at the moment of the opposition proceedings and not at the moment of filing of the earlier mark, which in the present case was on 22/02/2000 (03/11/2014, R 2063/2013-1, ‘PostModern/Deutsche Post’, § 48). Part of the surveys (Annexes 5 and 6) were conducted at the beginning of the gradual liberalisation process. There is a difference of eleven or more years between the surveys and the priority date of the contested trade mark.

Due to the gradual liberalisation of the postal market in Europe and the corresponding changes of the undertakings in carrying out postal services, it cannot be automatically concluded that the current market situation corresponds with the results submitted for the years 2000, 2002 and 2005 respectively, and that the relevant public will nowadays associate the word ‘POST’ solely with the opponent (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 69). Therefore, consumers are nowadays less likely to connect one particular organisation with the term ‘POST’. Instead, they will know that the postal sector is a competitive market where one can increasingly expect to find different companies offering postal services under trade marks containing the word ‘POST’ (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 63).

As regards the survey submitted that was conducted in 2015 (Annex 7), the Opposition Division considers that the results of the survey do not support a finding of enhanced distinctiveness of the earlier word mark ‘POST’ in the German territory in connection with the transport of letters and parcels. The outcome that 97.5% of the German population are familiar with the word ‘POST’ in connection with the respective services is not surprising, since ‘POST’ is a generic German word used in relation to the transport of letters and parcels. There are no other generic equivalents in use. A mere knowledge of the word ‘POST’ in relation to the services for which the trade mark is registered therefore cannot serve as an indication of enhanced distinctiveness or even reputation of the word ‘POST’.

Moreover, the finding that 81.0% of the German population associate ‘POST’ exclusively with one particular undertaking does not support a high or even normal degree of distinctiveness of the word ‘POST’ for postal services. It can be interpreted as a mere indication that a significant number of the interviewees tend to rely on the same postal company when they require this type of service.

Finally, the result that 63.8% (unaided recognition) of the relevant public relate the word ‘POST’ to the company Deutsche Post (AG) is not an automatic indicator of enhanced distinctiveness of the earlier mark, ‘POST’, either. Since the applicant’s company is the largest mail operator in Germany, it is not surprising that a considerable part of the German-speaking public associate the word ‘POST’ with the opponent’s company name, Deutsche Post AG. Also the scholarly article of Dr. Buescher (Annex 9) recognises that the degree of market acceptance required for distinctiveness through use can be assumed to be significantly higher than 50 % for descriptive marks. In the view of the Opposition Division, the result of 63.8 % cannot be considered to be significantly higher than 50 % and, thus, even if the threshold necessary for an inherently descriptive sign in order to meet the minimum degree of distinctiveness to be registered is reached, this cannot be considered sufficient to prove enhanced distinctiveness.

It is to be noted that the results of the survey of 2015 confirm the tendency that consumers are nowadays less likely to connect one particular undertaking with the term ‘POST’: in 2000 and 2002 77.6% and 70.6% of the interviewees related the term ‘POST’ to the opponent’s services, while in 2015 only 63.8% of the interviewees perceive it as an indication of the opponent’s services.

Use as part of another trade mark

The opponent, furthermore, argues that the increased distinctiveness of the sign ‘POST’ also proceeds from its use as part of another trade mark, namely ‘Deutsche Post’. It is true that use of a trade mark as part of another trade mark may constitute use of the former. Yet, this does not apply automatically to every single case. It is not applicable to the present one due to the various meanings of the term ‘POST’, the gradual decrease of the reputation of the sign ‘Deutsche Post’ in the trade mark rankings, the decrease of the public, that associates the term ‘POST’ in connection with the delivery of mail and letters with the opponent. Furthermore, the German Federal Court of Justice in its decision of 23/10/2008, I ZB 48/07, Post II, § 35-36, confirms that, even if the sign ‘POST’ acquired distinctiveness to serve as an indication of origin for the provision of postal services, its descriptive nature in relation to the subject matter of the services is out of the question. Therefore, the scope of protection of the term ‘POST’ has to be assessed very narrowly (03/11/2014, R 2063/2013-1 PostModern/ Deutsche Post, § 55).

Use of the earlier mark on its own

When used on its own, the sign ‘POST’ is mainly used in its generic meaning, namely as referring to ‘postal services’, or mail (for example in Annexes 4 and 10, 11), e.g. ‘The Post on the Internet’ means (also) the ‘Mail on the Internet’ (Annex 11).

Conclusion

Regardless of the situation in the past, nowadays, with many competing private postal services, consumers are less likely to connect one particular organisation with the word ‘POST’ and are more likely to recognise that it is a market in which one can increasingly expect to find competing companies offering postal services under trade marks using the word ‘POST’.

The scope of protection of the earlier mark is quite narrow; according to German Court decisions the earlier mark cannot be used to exclude competitors at European level from using the term ‘POST’ as a part of their trade marks, because of its generic nature per se in respect of the earlier postal and related services. The distinctiveness which the term ‘POST’ had acquired through use was just sufficient to reach the threshold for registration as a trade mark.

As a consequence of its narrow scope of protection, use of the earlier mark as part of other trade marks, such as ‘Deutsche Post’, cannot be considered to be use of the term ‘POST’ on its own. Most of the evidence submitted to prove enhanced distinctiveness/reputation refers to the verbal element ‘POST’ together with other terms, such as ‘E POST’, ‘E POSTBRIEF’ or ‘BESTSELLERMAIL’, with the descriptive word ‘Deutsche’/‘Dt. Post’ (Annexes 2, 3 and 10 to 16) and/or figurative elements such as a postal horn (Annexes 2, 16) and rarely to the term ‘POST’ alone. Thus, these documents do not prove enhanced distinctiveness of the earlier mark on its own.

When used on its own, the sign ‘POST’ is mainly used in its generic meaning, namely as referring to ‘postal services’, or mail.

As seen above, for the opposition to be successful under Article 8(5) EUTMR, it is a requirement that the earlier trade mark has a reputation. Since it has not been established that the evidence submitted by the opponent proves enhanced distinctiveness/reputation of the earlier mark, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and therefore the opposition must fail on this ground.

Nevertheless, for the sake of completeness, the Opposition Division explains that even if the earlier German trade mark is considered to have a reputation, the relevant public would not establish a link, as can be seen from the following.

3. The ‘link’ between the signs

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

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

∙        the degree of similarity between the signs;

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

∙        the strength of the earlier mark’s reputation;

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

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

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

Family of marks

The existence of a family of marks is a further relevant factor to be considered in the assessment of the existence of a link. The opponent’s puts forward that the earlier marks invoked in this proceedings form part of a ‘family of marks’ or ‘marks in a series’, all characterised by the presence of the same word component ‘POST. It invokes other marks such as ‘E-POST’, E POSTBRIEF’ as part of this series (see also Annex 19). In its view, such a circumstance is liable to give rise to a link insofar as the consumer, when confronted with the contested mark which contains the same word component as the earlier marks, will be led to believe that the services identified by that mark may also come from the opponent.

When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics which give grounds for regarding them as forming part of a single ‘series’ or ‘family’ an association may be created between the contested trade mark and the earlier marks forming part of the series. According to one of the necessary conditions, the trade mark applied for must not only be similar to the marks belonging to the series, but also display characteristics capable of associating it with the series.

This could not be the case where, the element common to the earlier series of marks is used in the contested trade mark with a different semantic content or is non-distinctive for the relevant services.

In the present case, the word ‘POST’ in the contested mark will be understood with the meaning of mail or delivery, while the earlier mark will be perceived with any of its possible meanings.

The element ‘POST’ in the contested has a limited distinctiveness and cannot serve to link it with the claimed family of marks of the opponent (13/05/2015, T-102/14, ‘TGP Post’, EU:T:2015:279, § 72).

Other criteria for a link

In the present case, the signs have been found to be similar to some degree owing to the word that they have in common, namely ‘POST’. This does not mean that the relevant public is likely to establish a link between them. When consideration is given to the services in question and the market reality in the sector of postal services, it is clear that the similarities between the signs in dispute relate to an element that is descriptive for the relevant services. In addition, the contested mark will be perceived as a whole. If it will be perceived as meaningful it will refer to an (electronic) mail or delivery. The word ‘POST’ in this composed mark will not be understood as a reference to a specific undertaking. Bearing in mind the generic meaning of the word ‘Post’ per se in relation to the relevant services and the different concepts, there is absolutely no reason to believe that the average consumer will establish a link between the signs, even if one were to take into account a possible reputation of the earlier mark (which in this case has not been established). The market recognition of the surveys does not mean that ‘POST’, which is inherently devoid of any distinctiveness in relation to postal services, will be seen as a normally or highly distinctive element/mark in relation to those services when used on its own or as part of competitors’ marks in combination with additional elements.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

II. 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.

German trade mark No 30 012 966

1. The services

The services on which this earlier right of the opposition is based are the following:

Class 35: Collecting, forwarding and delivery of direct and indirect mail advertising.

Class 39: Postal, freight, express, parcel and courier services; transport and delivery of items, letters, parcels, packets; collecting, forwarding and delivery of consignments with written communications and other messages, in particular letters, printed matter, trade samples, circulars, books, Braille literature, newspapers, periodicals, brochures.

The contested services are the following:

Class 42: Providing temporary use of non-downloadable computer software, featuring a tracking and tracing system that provides the user with information relating to the delivery status and description of the contents of packages, catalogs and/or other mail pieces sent to or by the user through catalog companies, delivery services and/or the postal service, and allows the user to view a digital image of the mail pieces and take actions and initiate electronic bill payments in connection with the mail pieces.

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 services in Class 42

The contested services providing temporary use of non-downloadable computer software, featuring a tracking and tracing system that provides the user with information relating to the delivery status and description of the contents of packages, catalogs and/or other mail pieces sent to or by the user through catalog companies, delivery services and/or the postal service, and allows the user to view a digital image of the mail pieces and take actions and initiate electronic bill payments in connection with the mail pieces are services which are offered through the webpage of a provider of postal or courier services, even if they are developed by specialized IT personnel. They are directed at the same user of the opponent’s postal, freight, express, parcel and courier services; transport and delivery of items, letters, parcels, packets; collecting, forwarding and delivery of consignments with written communications and other messages, in particular letters, printed matter, trade samples, circulars, books, Braille literature, newspapers, periodicals, brochures, in fact, they are complementary to these postal or delivery services in that as the contested services will not be offered on their own, they will only be used in connection with the mail or courier services. They are offered by the same service provider. They provide information about the delivery status, the content of the mail and offer payment options and, thus, serve the same purpose of a complete postal service. Therefore, these services are considered to be similar.

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 similar are directed at the public at large. The degree of attention is considered to be average.

3. The signs

POST	POSTPORT
Earlier trade mark	Contested sign

The relevant territory is Germany.

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

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. 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).

The distinctiveness/reputation has been analysed above in the context of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

5. Global assessment, other arguments and conclusion

The services of the opposing signs are similar. The level of attention of the relevant public is average.

The signs are visually and aurally similar to a low degree, as they differ in length and intonation. The earlier sign can have various meanings, including ‘a specific undertaking’, ‘mail’ or ‘postal delivery’. Conceptually, in the combination ‘POSTPORT’ the word ‘POST’ will not be perceived as a reference to an undertaking. Overall, and despite that the common element is placed at the beginning of the contested mark, the dissimilarities outweigh the similarities. Furthermore, the degree of distinctiveness of the earlier sign is minimal.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected, insofar it is based on earlier German mark No 30 012 966 in relation with Article 8(1)(b) EUTMR.

The analysis will continue with the earlier European Union trade mark invoked by the opponent.

European Union trade mark No 11 102 902

6. The services

Part of the goods and services on which this earlier mark is based have been rejected in opposition decision B 2 164 641. The remaining services on which this earlier right of the opposition is based are the following:

Class 39: Transport, in particular transport of goods by motor vehicle, lorry, rail, ship and aeroplane; Transport of relief supplies to disaster areas; Freight brokerage, unloading of freight; Courier services for messages or merchandise; Logistics in the transport sector; Collection, transport and delivery of goods, in particular documents, packages, parcels, letters and pallets; Tracking by means of the electronic tracking of goods, in particular documents, packages, parcels, letters and pallets, included in class 39; Franking of goods, in particular letters, parcels and packages, including online; Freight forwarding; Transport brokerage; Delivery of goods by mail order.

The contested services are the following:

Class 42: Providing temporary use of non-downloadable computer software, featuring a tracking and tracing system that provides the user with information relating to the delivery status and description of the contents of packages, catalogs and/or other mail pieces sent to or by the user through catalog companies, delivery services and/or the postal service, and allows the user to view a digital image of the mail pieces and take actions and initiate electronic bill payments in connection with the mail pieces.

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 services in Class 42

The contested providing temporary use of non-downloadable computer software, featuring a tracking and tracing system that provides the user with information relating to the delivery status and description of the contents of packages, catalogs and/or other mail pieces sent to or by the user through catalog companies, delivery services and/or the postal service, and allows the user to view a digital image of the mail pieces and take actions and initiate electronic bill payments in connection with the mail pieces are highly similar to the opponent’s tracking by means of the electronic tracking of goods, in particular documents, packages, parcels, letters and pallets, included in class 39, as they coincide in nature, purpose, public and provider.

7. 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 highly similar are directed at the public at large. The degree of attention is considered to be average.

8. The signs

	POSTPORT
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 contested sign is a pure word mark, consisting of the word ‘POSTPORT’. As such, it has no element that could be considered more dominant (visually eye-catching) than other elements.

The earlier mark is a figurative mark, composed of a yellow background with the word ‘POST’ in black letters and the word ‘PAY’ in red letters. It has no elements that could be considered clearly more visually eye-catching than other elements. The background is a less distinctive figurative element of a purely decorative nature. Therefore, the verbal elements are more distinctive than the figurative element.

Neither sign as a whole is listed in dictionaries in the relevant territory. It is to be noted, however, that the relevant public may perceive one-word signs as composed of different components, in particular, in cases where those components have a clear and immediate meaning. It follows from the above that part of the relevant public may perceive the contested sign as composed of the verbal elements ‘POST’ and ‘PORT’ and the earlier mark as composed of the words ‘POST’ and ‘PAY’, in case of the latter also due to the representation of the two words in different colours.

The meaning of the verbal element ‘POST’ in German, contained in both marks under comparison, has already been described above, under I.a). Reference is made to this definition, which is equally valid here. Also in English, the word ‘POST’ refers to, amongst others, ‘the official service or system that delivers letters and parcels’, ‘letters and parcels delivered’, ‘a single collection or delivery of mail’ (https://en.oxforddictionaries.com/definition/post, 16/05/2017).

Due to the international reach of postal services, the word ‘POST’ will be understood as a borrowed English or German term throughout the whole relevant territory, including territories where in the relevant language a different term is used to refer to the system of mail delivery or the provision of postal services (18/01/2016, R 3107/2014-1 BPOST/ ePOST (fig), § 41). Because of its extensive use in social networking media in recent years the term ‘POST’ has gained popularity in the entire relevant territory.

The word ‘PAY’, contained in the earlier mark, refers to a payment or remuneration or the action of giving money in exchange for goods or work done. It can also describe a transfer of money. It is a basic English word which will be understood throughout the whole relevant territory (16/06/2016, R 891/2015-5 Paymax (fig)/ PAYBACK (fig), § 57, 20/08/2014, R 1098/2013-4, CASHPAY (fig) /PAYCASH (fig), § 31). It has an average degree of distinctiveness for the relevant services in Class 39.

The word ‘PORT’, contained in the contested sign, in the context of computing refers (as a noun) to a hardware interface by which a computer is connected to another device (as a printer, a mouse, or another computer). It is an English word which is commonly used for computing and will be understood throughout the whole relevant territory in relation to IT-related goods and services.

The term ‘POSTPORT’, as a whole is not listed in dictionaries. Although it may not be excluded that a part of the public may perceive it as a meaningful combination referring to ‘a hardware interface for (electronic) mail or delivery’ – which consequently will be of limited distinctiveness –, for another part of the public it will be a coined word without a clear concept going beyond the combination of the elements. In any case, in this combination, the word ‘POST’ will not be perceived as an indication to an undertaking.

A similar reasoning applies to the term ‘POSTPAY’, which is not listed in dictionaries. Part of the public may perceive it as ‘payment for or by mail or delivery’ and for another part it will be a coined word without a clear concept going beyond the combination of the elements.

Visually, the signs coincide in the per se non-distinctive word ‘POST’ and the fifth letter ‘P’. They differ in the last letters ‘ORT’ of the contested mark and the last letters ‘AY’ of the earlier mark. They also differ in the non-distinctive yellow background and the black and red lettering of the earlier mark. Overall, and despite the similarities at the beginning, the signs are visually similar to a low 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 ‛POST-P***’, present identically in both signs. The pronunciation differs in the sound of the final letters ‛AY’ of the earlier sign and the final letters ‘ORT’ of the contested mark, which have no counterparts in the other sign. The signs are aurally similar to a low degree.

Conceptually, reference is made to the above conceptual analysis. For the part of the public that would perceive the combinations ‘POSTPAY’ and ‘POSTPORT’ as meaningful, the signs are conceptually dissimilar. For the part of the public that would not see a meaning beyond the elements on account of the element ‘POST’ a very low conceptual similarity cannot be excluded.

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

9. 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 European Union trade mark  enjoys a high degree of distinctiveness as result of the long standing and intensive use of the earlier German mark ‘POST’. The opponent considers the distinctiveness/reputation of the earlier mark ‘POST’ also applicable to the present sign, as the element ‘PAY’ is only of descriptive character.

The Opposition Division refers to the above assessment of the documents submitted to show enhanced distinctiveness/reputation, where the Opposition Division came to the conclusion that ‘POST’ has no reputation/enhanced distinctiveness. This conclusion is equally applicable to the earlier mark .

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 the services in Class 39 from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the non-distinctive word ‘POST’, the background as a less distinctive figurative element of a purely decorative nature, and the basic colours as stated above in section c) of this decision.

10. Global assessment, other arguments and conclusion

The services of the opposing signs are highly similar. The level of attention of the relevant public is average. The earlier mark has an average degree of distinctiveness in relation to the services at hand.

The signs are visually and aurally similar to a low degree. For a part of the public the signs are conceptually dissimilar and for a part only similar to a very low degree. The per se non distinctive word ‘POST’ cannot lead to a relevant conceptual similarity, given also the existence of the distinctive word ‘PAY’ in the earlier mark and the more distinctive word ‘PORT’ in the contested sign. The common element ‘POST’ will not be perceived as a reference to an undertaking in the combination ‘POSTPORT’. Overall, and despite the common five letters ‘POST-P’ placed at the beginning of the marks, the dissimilarities outweigh the similarities.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must also be rejected insofar it is based on earlier European Union trade mark No 11 102 902.

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

Alexandra APOSTOLAKIS

Julia SCHRADER

Denitza STOYANOVA-VALCHANOVA

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.