OPPOSITION No B 2 568 627

Maximo (Société par Actions Simplifiée), 8, avenue Pierre Goubet, 55840 Thierville sur Meuse, France (opponent), represented by Cabinet Boettcher, 16 rue Médéric, 75017 Paris, France (professional representative)

a g a i n s t

Franmax UAB, Kirtimų g. 47, 02244 Vilnius, Lithuania (applicant), represented by Metida Law Firm Žaboliené and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 31/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 568 627 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 13 848 718. The opposition is based on French trade mark registration No 99 798 490 and on French trade mark registration No 63 419 856. The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

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

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

1. The goods and services

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

French trade mark registration No 99 798 490

Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 38, 39:        Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry. raw natural resins; metals in foil and powder form for printers. Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting. Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes and for personal hygiene; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings (except instruments); material for stopping teeth, dental wax; disinfectants for medical purposes and hygienical purposes (other than soap); preparations for destroying vermin; fungicides, herbicides. Common metals and their alloys; metal building material$; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; sales; ores. Machines and machine tools; agricultural implements other than hand-operated; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); incubators for eggs. Hand tools and implements (hand-operated); cutlery other than for fishing and for medicine; side arms; razors, Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; fire-extinguishing apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; electrical apparatus for cleaning for household use; computer software; computer peripheral devices, computer program. Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes. Vehicles; apparatus for locomotion by land, air or water. firearms; ammunition and projectiles; explosives; fireworks. Precious metals and their alloys other than for dental use; jewellery, precious stones; horological and chronometric instruments. Musical instruments. Paper, cardboard (raw, semi-processed or for stationery); printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); playing cards; printers' type; printing blocks. Rubber, gutta-percha, gurn, asbestos, mica; flexible pipes, not of metal. Leather and imitations of leather, and goods made of these materials (except cases, gloves and belts); animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whip, harness and saddlery, non-metallic rigid pipes for building; non-metallic transportable buildings; monuments, not of metal. Furniture, mirrors, picture frames (except those for construction). Household or kitchen utensils and containers (not in precious metal, not coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware. Ropes (not in rubber, not for rackets or musical instruments), string, nets for fishing, nets for camouflage, tents, awnings, tarpaulins, sails, sacks (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials. Yarns and threads, for textile use. Textiles and textile goods; bed covers; table covers. Clothing, footwear, headgear. Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile). Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees. Meat and meat extracts, fish, poultry and game; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats. Coffee and artificial coffee, tea, cocoa; sugar, rice; tapioca and sago; flour and preparations made from cereals; bread, pastry, yeast, baking-powder, confectionery; ices, honey, treacle; salt; mustard; vinegar, sauces (condiments); spices, ice. Grains and agricultural, horticultural and forestry products; seeds; fresh fruits and vegetables; live animals; foodstuffs for animals; natural plants and flowers, non-alcoholic beverages and preparations for making beverages (except those based on coffee, tea or cocoa, milk beverages); beers; mineral and aerated waters and other; fruit beverages and fruit juices; syrups. Alcoholic beverages (except beers).Tobacco; matches. Communications, namely transmission of information through Internet network and telematics. Transport; packaging storage and delivery of goods.

French trade mark registration No 63 419 856

Class 35:        Retail services of meat and meat extracts, fish and fish extracts, poultry and poultry extracts and game and game extracts, of cooked meals made of meat and meat extracts, fish, poultry and game, preserved, dried and cooked fruits and vegetables, of cooked meals made of preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee and artificial coffee, tea, cocoa, rice; tapioca and sago, flour and preparations made from cereals, bread, pastry, yeast, baking-powder, confectionery, chocolates, ices, honey, golden syrup, salt; mustard; vinegar, sauces (condiments), spices; Ice, alcoholic and non-alcoholic beverages, dressings, deodorants, sanitary tampons, feminine sanitary protections, toilet wipes, shaving razors, baby's diapers, nail brushes, soaps; perfumery, essential oils, cosmetics, hair lotions, shampoo, dentifrices, tooth brush, nail files, nail clippers, clothing and footwear, abrasive, polishing, cleaning products, solvents, scouring preparations, sponges, wood for barbecue, hand-operated cleaning instruments, household utensils and containers, tableware, kitchen utensils, cooking instruments, hoovers, irons, bread toasters, coffee machines, kettles, robots, pressure cooking saucepans, deep fryers, choppers, grills, electric knives, hair dryers, household linen, data processing apparatus, computers, apparatus for recording, transmission or reproduction of sound or images; recording discs; magnetic data carriers, televisions, radios, electronic games, weighing apparatus, stationery, printed matter, artists' materials, games, playthings, sporting articles, luggage, bags, household goods and utensils, deodorants, other than for human beings or for animals, goods for repairing houses, garden goods. garden products (seeds) in a sale point, in a general catalogue of goods, on a website or on any form of electronic media of communication.

After a limitation following a partial refusal of the trade mark application in decision B 2 539 180 rendered on 09/06/2016, the contested services are the following:

Class 35:        Publicity and sales promotion services; Dissemination of advertising matter; Presentation of goods; Sample distribution; Shop window dressing; Marketing analysis; Marketing services; Product marketing; Marketing by telephone; Advertising and marketing; Provision of business information; Business management planning; Business management supervision; Management of customer loyalty, promotional and advertising and advertising systems; Promoting the goods and services of others; Development and implementation of customer attraction and customer loyalty schemes; Commercial administration of the licensing of the goods and services of others; Assistance and advice regarding business management; Inventorying of goods; Commercial information and consumer consultancy; Import-export agency services; Administrative processing of purchase orders; Wholesaling and retailing in the fields of foodstuffs and beverages; Wholesaling and retailing of chemicals, adhesives, paints, varnishes, lacquers, preservatives against rust, mordants; Wholesaling and retailing of bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; Wholesaling and retailing of soaps, perfumery, essential oils, cosmetics, dentifrices; Wholesaling and retailing of industrial oils and greases, lubricants, illuminants; Wholesaling and retailing of dietary supplements, sanitary preparations, dietetic substances, food for babies; Wholesaling and retailing of disinfectants, preparations for destroying vermin; Wholesaling and retailing of building materials, cables and wires, ironmongery, small items of metal hardware, safes, hand tools and implements (hand-operated); Wholesaling and retailing of photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Wholesaling and retailing of electric and electronic instruments and apparatus, recording discs, data processing equipment, computers, fire-extinguishing apparatus; Wholesaling and retailing of orthopaedic articles; Wholesaling and retailing of apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; Wholesaling and retailing of bicycles, parts and fittings for vehicles; Wholesaling and retailing of jewellery, horological and chronometric instruments, musical instruments; Wholesaling and retailing of bags for packaging, printed matter, books, napkins and tablecloths of paper, handkerchiefs of paper, toilet paper, printed matter, stationery, artists' materials, office requisites, instructional and teaching material; Wholesaling and retailing of packaging materials, building materials and pipes; Wholesaling and retailing of travelling bags of leather, trunks, belts, pocket wallets, handbags, briefcases, bags, backpacks, vanity cases, bags, umbrellas; Wholesaling and retailing of sporting articles, furniture and interior fittings; Wholesaling and retailing of cooking appliances, dishes, cutlery, mixers, moulds of aluminium, pots, grills, light bulbs, watches and clocks, sewing accessories, tablecloths, coat hangers, towels, cloths, vases, brooms, scissors, candlesticks, combs and sponges, brushes; Wholesaling and retailing of articles for cleaning purposes, glass, porcelain and earthenware; Wholesaling and retailing of ropes, strings, nets, tents, awnings, tarpaulins, sacks and bags; Wholesaling and retailing of yarns, textiles and textile goods, bed covers, table covers, clothing, footwear, headgear, sewing articles, sewing accessories and materials; Wholesaling and retailing of carpets, floor and wall coverings, games and playthings, gymnastic and sporting articles; Wholesaling and retailing of decorations for Christmas trees; Wholesaling and retailing of gardening utensils, agricultural, horticultural and forestry products and grains, vegetables, seeds, plants, foodstuffs for animals, malt; Wholesaling and retailing of tobacco, smokers' articles, articles for parties and celebrations, decorative articles of porcelain, napkin holders, candles, carnival costumes, masks; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies.

Some of the contested services are identical to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

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 assumed to be identical are directed at the public at large and also at business customers with specific professional knowledge or expertise.

The degree of attention is expected to be average.

3. The signs

MAXIMO
Earlier trade marks	Contested sign

The relevant territory is France.

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

The earlier marks are word mark consisting of the word ‘MAXIMO’.

The contested sign is a figurative mark containing the word ‘MAXIMA’ depicted in ordinary black capital letters and followed by a full stop sign (.), which is a negligible element, and by the words ‘Чтобы всего хватало’ depicted using black Cyrillic characters.

The marks refer to the same concept as far as the words ‘maximo’ and ‘maxima’, deriving from the Latin word ‘maximus’, are concerned. ‘Maximo’ and ‘maxima’ will be understood as indicating the greatest quantity, number, or degree possible or permissible. These elements only indicate a positive characteristic of virtually any kind of good or service, transmitting simple information on the fact that the goods or services are, for instance, at their best or rendered in the greatest quantity. Therefore, these words are, from the perspective of the French consumers, weak elements.

The figurative element consisting of the word in Cyrillic of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The contested sign has no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the letters ‘MAXIM-‘ of the words ‘MAXIMO’ and ‘MAXIMA’, which, as seen above, are weak. However, they differ in the last letter of the aforesaid words, namely ‘-O’ and ‘-A’. Also, they differ in the additional words ‘Чтобы всего хватало’ of the contested mark.

Considering that the signs do coincide in elements which are weak, the Opposition Division deemed that they are visually similar to a low degree.

Aurally, since the words in Cyrillic characters are not likely to be pronounced by the French-speaking consumers, the signs are similar to a low degree, as their only and common pronounceable elements, namely the letters ‘MAXIM-’ pertain to weak elements.

Conceptually, the element ‘MAXIMO’ and ‘MAXIMA’ will be associated to the same meaning, which also partly coincide with what pointed out by the opponent’s in its observations 03/2/2017, in which it has defined the elements ‘MAXIMO/MAXIMA as referring to “the idea of big”. The marks have the same concept as far as the elements ‘maximo’/‘maxima’ are concerned.

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

4. Distinctiveness of the earlier marks

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 trade marks have a reputation in France in connection with all the goods and services for which they are registered. This claim must be properly considered given that the distinctiveness of the earlier trade marks must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier marks, 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).

On 03/02/2017 the opponent submitted the following evidence:

• Annex 1: Two articles in French language, taken form the webpage ‘L’Usine Nouvelle’ and from the webpage ‘Regionsjob’, dated respectively 05/04/2006 and 18/10/2013, containing information about the construction of a logistic centre dedicated to frozen goods (and the related financial investments) and an interview related to the job offers and career opportunities offered by the opponent.

• Annex 2: Document in French language, titled ‘LE MARCHÉ DU SURGELÉ’ and dated for the year 2013 in which a short description of the history and activity of ‘MAXIMO’ is rendered together with a graphic depiction of the market share for the so called ‘home service’ for which the opponent is depicted to have a 15% share. The document is originated from ‘Toupargel Groupe’ and the source of the data on the market shares is qualified as ‘interne’ (internal).

• Annex 3: Extract taken from the webpage ‘Les echos.fr’ concerning an article in French, dated 14/04/2006, containing information about the investment operated by the opponent on a logistic platform in France. A translation in to English is also part of this Annex.

 

• Annex 4: Copy of the article taken from the webpage ‘Regionsjob’, identically submitted within Annex 1.

Firstly account must be taken on the fact that enhanced distinctiveness requires recognition of the marks by the relevant public. This recognition may enhance the distinctiveness of marks with little or no inherent distinctiveness or those that are inherently distinctive.

The Court has given some guidance in respect of the evaluation of distinctiveness acquired through use of the earlier mark and provided a non-exhaustive list of factors:

In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations.  

(Judgment of 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 23)

Most of the evidence submitted by the opponent are articles taken from online magazines (annexes 1, 3 and 4) which give specific information about particular issues regarding the opponent’s economic activity, such as the construction of a logistic centre dedicated to frozen goods (and the related financial investments) and the existence of job offers and career opportunities rendered by the opponent. The opponent did not submit any information regarding, for instance, how many online, visitors these webpage have received, thus rendering impossible any evaluation of their the extent to which the public was aware of the mark. These documents do not provide any information regarding how intensive, geographically widespread and long-standing the use of the marks has been. Neither is possible to extrapolate the amount invested by the undertaking in promoting the mark or the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from the opponent.

Even considering that some information in Annex 2 has been provided about the market share held by the opponent, this is certainly not enough to acknowledge that   the earlier trade marks acquired a high degree of distinctiveness or reputation through their use. In fact, the data contained in Annex 2 are not supported by any other document. The only clear information that can be extracted by this document is that “Maximo” in 2013 held a 15% share of the French market of the also rather undefined “home service” related to the distribution of frozen foodstuff.

All the abovementioned information provided by the opponent is not convincing, in the sense that are manifestly lacking facts necessary to safely conclude that the marks ‘MAXIMO’ are known by a significant part of the public. The reputation of the earlier mark must be established to the satisfaction of the Office and not merely assumed.

Having examined the material listed above, the Opposition Division concludes that the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a high degree of distinctiveness through its use.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated above in section c) of this decision as regards the weakness of the element ‘MAXIMO’, the distinctiveness of the earlier marks must be seen as low for all of the goods and services in question.

5. Global assessment, other arguments and conclusion

According to settled case-law, the risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 29).

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

EU:C:1999:323, § 18; 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22). The more distinctive the earlier mark, the greater the risk of confusion, and marks with a highly distinctive character, either per se or because of the reputation 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 contested services are assumed to be identical to the opponent’s goods and services. The degree of attention is expected to be average and the distinctiveness of the earlier marks is low.

The signs coincide to the extent that they all contain the letters element ‘MAXIM-’, which form part of the elements ‘MAXIMO’ and ‘MAXIMA’, the distinctiveness of which must be seen as weak in relation to the goods and services. The contested sign contains additional elements the distinctiveness of which is normal. In fact, the differing elements of the contested sign constitute the most distinctive elements, as they have an average degree of distinctiveness. The Opposition Division finds that the additional elements of the signs are sufficient to exclude any likelihood of confusion between the signs, bearing in mind the low distinguishing power of the element in common.

Although a company is certainly free to choose a trade mark with a low degree of distinctiveness, and use it on the market, it must accept, however, in so doing, that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011-5, 4REFUEL (fig.) / REFUEL, § 15; and 18/09/2013, R 1462/2012-G, ULTIMATE GREENS / ULTIMATE NUTRITION (fig.) et al., § 59).

The opponent also refers to the principle of interdependence, which implies that a lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the signs and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion; the fact that the designated goods and services are assumed to be identical cannot, in the present case, compensate for the differences identified between the signs.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Since the opposition is not successful on the basis of Article 8(1)(b) EUTMR, the Opposition Division will examine below the other grounds of the opposition, namely

Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

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.

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in France.

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 18/03/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in France, prior to that date. The evidence must also show that the reputation was acquired for the all the goods and services for which the opponent has claimed reputation, which are all the goods and services on which the opposition is based.

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.

On 03/02/2017, the opponent submitted the evidence mentioned above, which has already been assessed in section d), Distinctiveness of the earlier marks. Those findings are equally valid here. The Opposition Division finds that, for the reasons explained above, the evidence submitted by the opponent does not demonstrate that the earlier trade marks acquired a reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that the earlier trade mark has a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected also insofar as it is based on this ground.

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

Angela DI BLASIO

Andrea VALISA

Janja FELC

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.