OPPOSITION No B 2 661 240

Adler Modemärkte AG, Industriestr. Ost 1-7, 63808 Haibach, Germany (opponent), represented by Christina Hambeck-Joh, Industriestr. Ost 1-7, 63808 Haibach, Germany (employee representative)

a g a i n s t

José Gabriel Aldea Valdeolmillos, Pje. Hospital, 7 – 6º, Elche (Alicante), Spain (applicant), represented by Ars Privilegium, S.L., Felipe IV, 10, 28014 Madrid, Spain (professional representative).

On 25/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 661 240 is partially upheld, namely for the following contested goods and services:

Class 25:         Clothing excepting menswear, footwear, headgear.

Class 35:         Retailing and wholesaling in shops and via global computer networks of clothing.

2.        European Union trade mark application No 14 737 613 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 some of the goods and services of European Union trade mark application No 14 737 613, namely against all the goods in Class 25 and part of the services in Class 35. The opposition is based on European Union trade mark registration No 84 871. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

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

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark No 84 871.

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

The contested application was published on 03/12/2015. Therefore, the opponent was required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 03/12/2010 to 02/12/2015 inclusive.

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

Class 25:        Clothing, footwear, headgear.

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

On 15/09/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 15/11/2016 to submit evidence of use of the earlier trade mark, which has been extended until 15/01/2017. On 13/01/2017, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Item 1: Extract of the opponent’s website www.adlermode.com dated 13/01/2017 in German and English regarding the company profile.

• Item 1a: Adler’s 2011 annual report containing figures regarding net assets, financial position, number of employees and stores by country, namely, Germany, Austria and Luxembourg.

• Item 1b: Extract of the opponent’s website www.adlermode.com dated 12/01/2017 from which it is apparent that items of clothing labelled ‘VIVENTY BERND BERGER’ are offered for sale online. The website is in German and the prices are in euros.

• Item 1c: Extract of the opponent’s annual report for 2011 from which it is apparent that ‘VIVENTY BY BERND BERGER’ is one of the brands of the opponent’s portfolio.

• Item 2: List of addresses in Germany, allegedly corresponding to Adler Modemärkte’s stores.

• Item 3: Extract of https://web.archive.org regarding the opponent’s website in 2013 from which it is apparent that the opponent was, at that time, offering for sale various items of clothing under the brand ‘VIVENTY BERN BERGER’. The website is in German and the prices are in euros.

• Item 4: Affidavit from the Director of purchasing of the opponent in German along with the translation thereof. In essence, it states that the mark has been used continuously by the opponent since 2008 and it gives figures corresponding to the sales of clothing items labelled ‘VIVENTY BERND BERGER’ for the years 2010 to 2016. The document was filed along with the following annexes:

• Annex 1a: Labels and header cards ‘VIVENTY BERND BERGER’
• Annex 1b: Adler Modemärkte’s labelling instructions
• Annex 2: Sales statistics for the years 2010 to 2016
• Annex 3: Tables of figures of unknown source and unclear content
• Annex 4: Tables of figures of unknown source and unclear content

• Item 5: Pictures of clothing items labelled ‘VIVENTY BERND BERGER’.

• Item 6: Newsletters of 2014 and 2015 showing products labelled ‘VIVENTY BERND BERGER’ and tables of unknown source apparently containing transmission data (e.g. number of recipients).

• Item 7: Table of unknown source apparently corresponding to promotion expenses for 2011 and 2015, along with opponent’s 2013 winter catalogue extracts showing products labelled ‘VIVENTY BERND BERGER’.

Assessment of the evidence of use

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

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

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

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

The evidence, in particular, the extracts of the opponent’s annual report (item 1a) and website (items 1 and 3) show that the place of use is the German-speaking countries of the European Union, namely, Germany, Austria and Luxembourg. This can be inferred from the content of the documents, the language of these documents (German) and the currency mentioned (Euros).

Taking account of the fact that these countries constitute a significant part of the European Union, it has to be considered that the use of the earlier mark in these countries is use in the European Union (see, 15/07/2015, T-398/13, TVR ITALIA, EU:T:2015:503, § 57; 30/01/2015, T-278/13, now, EU:T:2015:57, by analogy).

Therefore, the evidence relates to the relevant territory.

As regards the time of use, it is noted that a part of the evidence is dated within or refers to the relevant period while the remaining part of the evidence is undated or dated outside the relevant period. According to the data appearing in, particularly, items 1, 1a, 3, 4, 6 and 7, the use of the earlier mark started in 2008 and lasted until, at least, 2016. Therefore, the evidence filed by the opponent contains sufficient indications concerning the time of use.

As regards the extent of use, it is recalled that 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.

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

Taken as a whole, the documents filed in the present case – in particular the opponent’s annual report for the year 2011 filed as item 1a and the affidavit filed as item 4 along with its annexes, as well as the extracts of newsletters and the various spreadsheets filed in items 6 and 7 – contain sufficient indications concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

More specifically, the annual report for the year 2011 (item 1a), contains figures – such as turnover figures – which correspond to significant amounts.

Although said figures correspond to the sales of all Adler Modemärkte’s products and, hence, do not allow to distinguish the incomes coming from the sales of products marketed under the brand ‘VIVENTY BERND BERGER’ from the sales of products marketed under other(s) trade mark(s) of the opponent’s portfolio, the affidavit and the several spreadsheets filed in its support do so.

In particular, the spreadsheets mention 145.389 pieces of clothing sold for the year 2011, 143.092 for 2012, 149.603 for 2013, 149.067 for 2014 and 187.482 for 2015.

Besides, the data herein contained concerning the extent of use are corroborated by the extracts of the opponent’s newsletters (items 6 and 7) and website (items 1b and 3).

Finally, it has been observed above that the territorial scope in which the earlier mark is used is significant and that such use qualifies as long-standing since it has lasted from 2008 to, at least, 2016.

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

In the light of all the aforesaid, the Opposition Division thus concludes that the opponent succeeded in proving the extent of use of the earlier mark.

As regards the nature of use, it is to be noted first of all that the earlier mark is a figurative mark made of the word elements ‘VIVENTY’, ‘BY’ and ‘BERND BERGER’.

The earlier mark in its registered form is as follows:

On the other hand, in the evidence filed, the earlier trade mark is shown mainly as follows:

   

As apparent from the above, in the form in which it is used on the market, the element ‘BY’ is omitted. In addition, the line separating the elements ‘VIVENTY’ and ‘BERND BERGER’ appearing in the form in which it is registered disappear in the form in which it is used.

It is also noted that the graphical representation of the remaining elements ‘VIVENTY’ and ‘BERND BERGER’ sometimes differ in that the typeface is white instead of black and the background is black instead of white.

However, it is considered that such modifications do not alter the distinctive character of the earlier mark in the meaning of Article 15 (1)(a) EUTMR.

According to settled case-law, if the omitted element is in a secondary position and not distinctive, its omission does not alter the distinctive character of the trade mark (24/11/2005, T-135/04, Online Bus, EU:T:2005:419, § 37). Similarly, if the addition is not distinctive, is weak and/or is not dominant, it does not alter the distinctive character of the registered trade mark (judgments of 30/11/2009, T-353/07, Coloris, EU:T:2009:475, § 29-33 et seq.; 10/06/2010, T-482/08, Atlas Transport, EU:T:2010:229, § 36 et seq.).

In that connection, it is noted at the outset that in the form in which the earlier mark is used, the elements ‘VIVENTY’ and ‘BERND BERGER’ are represented in an identical or at least very similar typeface to that used in the form in which it is registered. In addition, the element ‘VIVENTY’ is still represented in a bigger typeface than the elements ‘BERND BERGER’ and placed on top of the sign.

Besides, it has to be borne in mind that basic and commonplace geometric shapes, such as lines are not in themselves capable of conveying a message that consumers will be able to remember, with the result that they will not regard them as trade marks (03/12/2015, T-695/14, Darstellung eines schwarzen Quadrats mit Auslassung, EU:T:2015:928; 25/09/2015, T-209/14, Grünes Achteck, EU:T:2015:701, § 43; 13/04/2011, T-159/10, Parallélogramme, EU:T:2011:176, § 24; 12/09/2007, T-304/05, Pentagon, EU:T:2007:271, § 23; 13/0).

Therefore, the Opposition Division considers that the line placed between the word elements is not distinctive and, hence, that its omission is not capable of altering the distinctive character of the earlier mark.

Likewise, taking into account that the element ‘BY’ will be perceived as indicating that ‘VIVENTY’ originates from ‘BERND BERGER’ and that its omission does not have the effect of altering such interpretation, its omission does not alter the distinctive character of the trade mark.

Finally, in light of the case-law above mentioned, it has to be considered that the several graphical omissions and/or modifications above mentioned are not capable of altering the distinctive character of the earlier mark either.

Since the earlier mark was used in a form that does not alter its distinctive character, the nature of use is proven.

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

According to Article 42(2) EUTMR, if the earlier trade mark has been used in relation to part only of the goods or services for which it is registered it 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.

In the present case, use has been proven in relation to clothing. No evidence has been provided in relation to the remaining footwear, headgear.

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

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

1. The goods

The goods for which genuine use was proven and hence, on which the opposition is based, are the following:

Class 25: Clothing.

The contested goods and services are the following:

Class 25: Clothing excepting menswear, footwear, headgear.

Class 35: Retailing and wholesaling in shops and via global computer networks of footwear, clothing, headgear; Import and export of footwear, clothing, headgear.

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

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

Contested goods in Class 25

The contested clothing excepting menswear are included in the opponent’s broad category of clothing. Therefore, these goods are identical.

The contested headgear and the opponent’s clothing are of an identical or very similar nature. They also serve the same purpose, in particular in the case of clothing designed to give protection against the elements. Furthermore, headgear is seen not only as something worn on the head to protect against the weather, but also as a fashion article, possibly matching an outfit, and for this reason is sometimes chosen to complement clothing. The distribution channels for these goods coincide and their sales outlets or the retail departments they are sold in are often either the same or at least closely connected. Taking all these factors into account, headgear and clothing are considered similar.

Likewise, the contested footwear serves the same purpose as the opponent’s clothing: both are used for covering and protecting parts of the human body and for fashion. They are often found in the same retail outlets. Consumers looking for clothes will expect to find footwear in the same department or shop and vice versa. Moreover, many manufacturers and designers will design and produce both clothing and footwear. Therefore, the goods are similar.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested retailing in shops and via global computer networks of clothing are similar to a low degree to the opponent’s clothing.

Moreover, the same considerations apply to the contested wholesaling services in shops and via global computer networks of clothing. Indeed, like retail services, they consist of activities around the actual sale of goods and they are complementary to clothing. Therefore, the contested services of wholesaling in shops and via global computer networks of clothing are similar to a low degree the opponent’s clothing.

By contrast, the contested retailing and wholesaling in shops and via global computer networks of footwear, headgear and the opponent’s clothing are not similar. Indeed, similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case since, as apparent from the above, the goods at issue are only similar. Therefore, these contested services are dissimilar to the opponent’s clothing.

Moreover, the same holds true for the contested services of import and export of footwear, clothing, headgear. Import and export services relate to the movement of goods and normally require the involvement of customs authorities in both the country of import and the country of export. These services are often subject to import quotas, tariffs and trade agreements. These services do not relate to the actual retail or wholesale of the goods; they would be preparatory or ancillary to the commercialisation of such goods. For these reasons, goods are to be considered dissimilar to import and export services for those goods. The fact that the subject matter of the import/export services and the goods in question are the same is not a relevant factor for finding a similarity. These contested services are dissimilar to the opponent’s clothing.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical and similar to varying degrees address both general and professional public. The degree of attentiveness they will display at the time of the purchase is deemed respectively average and higher than average (24/10/2016, R 714/2016-2, WHATEVER IT TAKES, § 19; 22/09/2016, T-512/15, SUN CALI, EU:T:2016:527, § 48; 08/02/2007, T-88/05, EU:T:2007:45, NARS, § 53).

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on French-speaking part of the relevant public.

The earlier mark is a figurative mark consisting of the word elements ‘VIVENTY’, ‘BY’, ‘BERND BERGER’ written in an upper-case black standard typeface where the word element ‘VIVENTY’ is displayed on top and in bigger size than the elements ‘BY’ and ‘BERND BERGER’ and separated by a line.  

The element ‘VIVENTY’ has no meaning in French. On the other hand, the elements ‘BERND’ and ‘BERGER’ will be perceived as corresponding to a German name and surname, respectively. None of these elements has any relation with the goods and services in question. Therefore, they are distinctive. On the contrary, as the element ‘BY’ will be perceived as an indication that ‘VIVENTY’ products are designed by ‘BERND BERGER’ and is commonly used in such way on the fashion market in the European Union, it is not capable by itself of indicating the origin of the goods and services and hence, lacks any distinctive character.

Finally, as stated previously, it is considered that the line placed between the word elements is not distinctive.

In light of the above, it is considered that the elements ‘VIVENTY’ and ‘BERND BERGER’ are the most distinctive elements of the earlier mark. However, contrary to the opponent’s claim, the element ‘VIVENTY’ cannot be considered clearly dominant since it does not overshadow the other elements ‘BY BERND BERGER’.

The contested sign is also a figurative mark. It is made of the single word element ‘VIENTY’ displayed on a black standard typeface. This word conveys no meaning for the relevant public and it is therefore distinctive.

Visually, the signs coincide in the string of letters ‘VI*ENTY’. However, they differ in the third letter ‘V’ of the earlier mark’s element ‘VIVENTY’, which has no counterpart in the contested sign. They further differ in the elements ‘BY BERND BERGER’ of the earlier mark, which have no counterpart in the contested sign, as well as in their specific graphical representation.

Taking account of its position in the middle of the earlier mark’s element ‘VIVENTY’, the absence of the letter ‘V’ in the contested sign’s single element ‘VIENTY’ could be overlooked by the relevant public. Besides, due to their secondary position within the earlier mark, the elements ‘BY BERND BERGER’ do not completely offset the similarity provided by the common string of letters ‘VI*ENTY’. Finally, the difference in graphical representation is even less relevant since, on the one hand, the typefaces used in each mark are very similar to each other and on the other hand, the line separating the elements ‘VIVENTY’ and ‘BY BERND BERGER’ in the earlier mark, lacks any distinctive character.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘VI*ENTY’ present identically in both signs. The pronunciation differs in the sound of the letter ‘V’ of the earlier mark which has no counterpart in the contested sign. Taking into account, on the one hand, that the differing letter ‘V’ is placed in the middle of the earlier mark’s element ‘VIVENTY’ and, on the other hand, that the elements ‘VIVENTY’ and ‘VIENTY’ produce the same rhythm and sound, it has to be considered that the pronunciation of such elements will be almost identical. The signs differ in the elements ‘BY BERND BERGER’ which have no counterpart in the contested sign.

As it is likely to be perceived as the designer’s name and due to its secondary position, not as much relevance will be given to it than to the other element ‘VIVENTY’.

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

Conceptually, the public in the relevant territory will probably perceive the elements ‘BERND BERGER’ as a German name and surname, corresponding to the designer of the goods in question. However, it does not convey any specific concept beyond that of the names of a designer. Besides, the elements ‘VIVENTY’ and ‘VIENTY’ do not have any meaning 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, assessment of the likelihood of confusion will proceed.  

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal despite the presence of a non-distinctive element as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the signs coincide in the string of letters ‘VI*ENTY’ and the additional and differing elements are not sufficient to exclude any likelihood of confusion between the marks. Indeed, as explained above, the absence of the letter ‘V’ in the contested sign’s single element ‘VIENTY’ could be overlooked by the relevant public. Moreover, the fact that the elements ‘BY BERND BERGER’ are not reproduced in the contested sign is not sufficient to avoid a likelihood of confusion between those marks.

Indeed, in the clothing sector, the public is accustomed to the fact that the same mark is presented in different configurations depending on the type of goods it designates, or that the same undertaking uses sub-trade marks derived from the main trade mark and sharing a common element with it to distinguish its various production lines (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49; 17/02/2011, T-385/09, ANN TAYLOR LOFT, EU:T:2011:49, § 45).

It is therefore likely that they confuse the marks in question in the present case.

Moreover, such conclusion is not called into question by the applicant’s argument that it owns a trade mark registration with the word ‘VIENTY’ in the European Union, which coexists with the opponent’s earlier mark.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T 31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard, it should be noted that formal coexistence on national or Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office is in principle restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the register) on a Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark that might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist, e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved.

In the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the French-speaking public in the European Union for the contested goods found to be identical or similar to the goods covered by the earlier mark. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

Moreover, the same holds true for the contested services which were found similar to a low degree to the opponent’s clothing; the similarity between the signs is sufficient to compensate the low degree of similarity between these goods and services.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 84 871.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods 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

Carmen SÁNCHEZ PALOMARES

Marine DARTEYRE

Julie GOUTARD

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.