OPPOSITION No B 2 430 505

Border I.P. Limited, Unit A, Queens Drive, Kingmoor Park South, Carlisle CA6 4SB, United Kingdom (opponent), represented by Page White & Farrer, Bedford House, John Street, London WC1N 2BF, United Kingdom (professional representative)

a g a i n s t

Gioielleria Curnis S.r.l., Via Zambonate 55/57, 24122 Bergamo, Italy (applicant), represented by Biesse S.R.L., Via Corfù 71, 25124 Brescia, Italy (professional representative).

On 17/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 430 505 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 12 995 411. The opposition is based on United Kingdom trade mark registrations No 2 376 910 and No 2 383 647 and European Union trade mark registrations No 4 522 082 and No 4 867 776, in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR. The opposition is also based on the non-registered trade mark  used in the course of trade in the United Kingdom, in relation to which the opponent invoked Article 8(4) 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:

UK No 2 376 910, UK No 2 383 647 and EUTM No 4 522 082

Class 25: Articles of clothing, footwear and headgear, belts.

Class 35: The bringing together, for the benefit of others, of a variety of goods, namely, clothing, footwear and headgear, belts, that enable customers to conveniently view and purchase these goods in a store, catalogue, via an Internet website by mail order or by means of telecommunications.

EUTM No 4 867 776

Class 9: Sunglasses, spectacle frames and chains for spectacles and sunglasses.

Class 18: Leather and imitation leather, and goods made from these materials; animal skins; trunks and travelling bags; umbrellas, parasols and walking sticks; luggage, bags and cases; shooting sticks; briefcases, attache cases, document holders and cases, holdalls, pochettes, suit-carriers, credit card cases and holders, key cases, wallets, coin purses, wallets incorporating chequebook holders, leather key fobs.

The contested goods are the following:

Class 14: Jewellery; Ornaments, made of or coated with precious or semi-precious metals or stones, or imitations thereof; Precious jewellery; Costume jewellery; Ornaments [jewellery, jewelry (Am.)]; Jewelry findings; Jewellery; Time instruments; Jewellery boxes and watch boxes; Costume jewellery; Costume jewellery; Imitation jewellery ornaments; Semi-precious articles of bijouterie.

Class 18: Luggage, bags, wallets and other carriers; Leather and imitation leather; Briefcases [leather goods]; Leather purses; Briefcases [leather goods]; Briefcases [leather goods]; Briefcases [leather goods]; Briefcases [leather goods]; Boxes made of leather; Briefcases [leather goods].

Class 25: Clothing; Headgear; Footwear; Casualwear; Weather resistant outer clothing; Knitted underwear; Leisurewear; Sportswear; Waist belts; Headgear; Gloves; Sashes for wear; Footwear for women; Swim wear for gentlemen and ladies.

Some of the contested goods are identical to goods 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 goods were identical to those of the earlier marks.

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 assumed to be identical are all directed at the public at large, whose degree of attention is average, except leather and imitation leather in Class 18, which are directed at professionals, whose degree of attention may be higher than average.

3. The signs

UK No 2 376 910              CC UK No 2 383 647 and EUTM No 4 522 082               EUTM No 4 867 776
Earlier trade marks	Contested sign

The relevant territory is the United Kingdom (earlier marks 1 and 2) and the European Union (earlier marks 2 and 3).

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).

Earlier mark 1 is the word mark ‘CC’. Earlier marks 2 and 3 are figurative marks consisting of the overlapping upper case letters ‘CC’ in a serif typeface with accentuated serifs and thickened backs of the curves. These letters are black in earlier mark 2 and grey in earlier mark 3. Since the letters ‘CC’ have no meaning in relation to the relevant goods and services, they are distinctive to an average degree.

The contested figurative sign contains a figurative element, which will be perceived as two stylised bold overlapping letters, ‘CC’, depicted one above the other. The expression ‘Capitan Chrome’ is written underneath and all these elements are depicted inside a grey square label. Although the expression ‘Capitan Chrome’ is clearly visible within the sign and cannot be ignored, the letters ‘C’ are more dominant (eye-catching) due to their position and size. On account of the presence of the verbal element ‘Capitan Chrome’, written in title case, it is reasonable to assume that the relevant public will perceive the stylised overlapping letters ‘CC’ depicted above as the initial letters of the expression ‘Capitan Chrome’. ‘Capitan’ refers to the person in command of a ship, the pilot in command of a civil aircraft, a naval officer of high rank, an army officer of high rank, a police officer or a leader of a team. This word exists in Spanish and will be understood by the vast majority of the public because there are very similar equivalents in their national languages (‘captain’ in English and Dutch, ‘capitaine’ in French, ‘capitano’ in Italian, ‘căpitan’ in Romanian, ‘kapitan’ in Polish, ‘kapitán’ in Czech and Slovak, etc.). ‘Chrome’ is a French word referring to a white metal used for making alloys and it will also be understood by a vast majority of the public because there are very similar equivalents in their national languages (‘chromium’ in English and Dutch, ‘Chrom’ in German, ‘chrom’ in Polish, ‘Chróm’ in Czech and Slovak, ‘krom’ in Danish, Slovenian, Swedish, etc.). These elements are distinctive, since they have no meaning in relation to the contested goods. However, when preceded by the title ‘Capitan’, ‘Chrome’ will be perceived, at least by a large part of the public, as a name rather than as having the meaning indicated.

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

Visually, the signs coincide in the letters ‘CC’ and, as far as earlier marks 2 and 3 are concerned, in the fact that these overlap. However, the type of overlap is clearly different, since it is horizontal in the earlier marks and vertical in the contested sign. Furthermore, the stylisation of the letters ‘C’ clearly differs. The overlapping upper case letters ‘C’ in earlier marks 2 and 3 are in a serif typeface with accentuated serifs and thickened backs of the curves. In the contested sign, the letters ‘C’ are depicted in bold with an irregular outline and they do not end in serifs. Earlier mark 3 is depicted in grey whereas the contested sign is depicted in black. The contested sign further differs in the distinctive expression ‘Capitan Chrome’ and in the non-distinctive grey background. Taking into account the above considerations regarding the distinctive and dominant elements of the signs, the signs are considered visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier marks will be pronounced /c-c/. The contested sign will be pronounced /c-c/ /ca-pi-tan/ /chrom/ or /c-c/ /ca-pi-tan/ /chro-me/ or only /ca-pi-tan/ /chrom/ or /chro-me/, since part of the public will perceive the stylised letters ‘CC’ as a mere reference to the initial letters of the verbal element ‘Capitan Chrome’ and will therefore not pronounce them. For that part of the public, the signs are aurally dissimilar. For the part of the public that will pronounce the letters ‘CC’ of the contested sign, the pronunciation of the signs coincides in the sound of the letters ‛CC’ and differs in the pronunciation of the words ‘Capitan Chrome’, which have no counterparts in the earlier marks. The signs therefore have different lengths, rhythms and intonations. Therefore, the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The earlier marks will be perceived as containing the double letter ‘C’. These two letters do not evoke any particular concept in relation to the goods and services at issue. As a whole, the expression ‘Capitan Chrome’ of the contested sign will be perceived, by at least a large part of the public, as referring to a captain called Chrome or as the mere sum of its parts ‘Capitan’ and ‘Chrome’. The letters ‘CC’ of the contested sign will be perceived as the initial letters of the expression ‘Capitan Chrome’. Therefore, the signs are not conceptually similar.

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 enjoy a high degree of distinctiveness as result of their long-standing and intensive use in the United Kingdom (for the earlier UK trade marks) and in the United Kingdom and Ireland (for the earlier European Union trade marks) in connection with all the goods and services for which they are registered in Classes 25 and 35 for earlier marks 1 and 2 and in connection with sunglasses in Class 9 and hand bags in Class 18 for earlier mark 3.

This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the 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 opponent submitted the following evidence:

• A witness statement by the opponent’s Company Secretary, dated 22/12/2016. According to this statement, the earlier marks have been used in the UK and Ireland since at least 1998 for clothing, footwear, headgear and accessories such as bags, jewellery and glasses frames. Sales have been made through branded stores and concessions throughout the UK and Ireland and online from the website www.ccfashion.co.uk. It is specified that in 2014 the total sales figures were GBP 22.5 million for the UK and GBP 994 000 for Ireland. In relation to advertising, it is stated that the earlier marks are promoted on Facebook and Twitter and that the actress Jane Seymour was the ambassador for the ‘CC’ brand from 2008 to 2013. The following documents are annexed to the witness statement:

• Annex 1: photographs of products and labels bearing the earlier figurative marks.

• Annexes 2 and 3: a list of stores in the UK and Ireland and photographs of some branded stores.

• Annexes 4 and 5: extracts from the opponent’s website www.ccfashion.co.uk, obtained from the Internet Archive website, and extracts from the website www.houseoffraser.co.uk (a high street retailer), also obtained from the Internet Archive website.

• Annex 6: reports and financial statements for the financial years ended 31/01/2011, 31/01/2012 and 31/01/2013.

• Annex 7: press articles referring to Jane Seymour’s association with the ‘CC’ brand.

• Annexes 8 and 9: extracts from the opponent’s Facebook page, some of which refer to the promotion of the opponent’s goods in newspapers and magazines, and information about the circulation of these newspapers and magazines.

• Annex 10: extracts from the Twitter page www.twitter.com/ccfashion.

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 their use.

As far as the witness statement 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.

Despite showing use of the trade marks, the evidence does not provide sufficient information regarding the degree of recognition of the trade marks by the relevant public. The opponent has submitted no evidence of the amount it has invested in promoting the marks, or of the proportion of the relevant section of the public that, because of the marks, identifies the goods as originating from the opponent. The opponent could have submitted the results of opinion polls or statements from relevant chambers of commerce and industry or other trade and professional associations.

Moreover, the evidence does not indicate the market share of the trade marks, and the sales figures mentioned in the witness statement and in the financial reports are general and do not indicate the specific goods concerned.

Furthermore, the documents relating to the collaboration with Jane Seymour merely indicate that the opponent has been active in promoting its earlier marks; however, this needs to be corroborated by other evidence, such as evidence of intensive promotional activity, opinion polls, etc. Finally, even though some extracts from the opponent’s Facebook page seem to indicate that the opponent’s goods have been advertised in magazines, the opponent has not submitted copies of advertisements or press articles.

Since the evidence does not demonstrate that the trade marks are known by a significant part of the relevant public, the Opposition Division concludes that the opponent has failed to prove that its trade marks enjoy a high degree of distinctiveness as result of their long-standing and intensive use.

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

5. Global assessment, other arguments and conclusion

The inherent distinctiveness of the earlier marks is normal and the consumer’s degree of attention is average or higher than average, as explained above.

The signs are visually and aurally similar to a low degree and conceptually not similar. The similarities lie in the two letters ‘CC’ and in the fact that these letters overlap in some of the marks. However, as explained above, there are many differences resulting from the graphic depictions and positions of these letters. Furthermore, the contested sign contains the additional verbal element ‘Capitan Chrome’. Although this element is visually less eye-catching than the letters ‘CC’, it is clearly perceptible and has a significant impact on the visual, aural and conceptual perceptions of the sign.

Furthermore, for instance in the case of clothing and related accessories, the visual aspect plays a greater role in the global assessment of the likelihood of confusion. Consumers often encounter a trade mark on the label and choose the product upon seeing a trade mark (06/10/2004, T-117/03 – T-119/03 & T-171/03, NL, EU:T:2004:293, § 50). In the present case, the signs are visually similar only to a low degree, which means that there are important visual differences between them, which are particularly relevant when assessing the likelihood of confusion between them.

Taking into account all the above, the Opposition Division considers that the differences between the signs are clearly perceptible and sufficient to exclude any likelihood of confusion between the signs, since they prevail over the similarities.

Therefore, even assuming that the contested goods are identical to the opponent’s goods and services, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected insofar as it is based on Article 8(1)(b) 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 above mentioned 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. Reputation of the earlier trade marks

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade marks has already been examined above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

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

In any case, the Opposition Division also notes that the opponent did not provide facts, arguments or evidence which could support the conclusion that 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 marks.

The opponent’s arguments are rather general statements about the existence of a risk of injury. The opponent should have submitted evidence, or at least put forward a coherent line of argument, demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

This is confirmed by Rule 19(2)(c) EUTMIR, which establishes that if the opposition is based on a mark with a reputation within the meaning of Article 8(5) EUTMR, the opponent must submit evidence showing that the mark has a reputation, as well as evidence or arguments demonstrating that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

In the present case, the Opposition Division does not find it self-evident that the use of the contested sign would be likely to bring to mind the earlier marks and take unfair advantage of the distinctive character or the repute of the earlier marks and/or be detrimental to their repute or distinctiveness.

NON-REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE – ARTICLE 8(4) EUTMR

ADMISSIBILITY

According to Article 41(1) EUTMR, the notice of opposition must be filed within a period of three months following the publication of the EU trade mark application.

According to Rule 15(2)(b) EUTMIR, the notice of opposition must contain a clear identification of the earlier mark or earlier right on which the opposition is based, namely:

iii) where the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, an indication of its kind or nature, a representation of the earlier right, and an indication of whether this earlier right exists in the whole Union or in one or more Member States, and if so, an indication of the Member States [emphasis added].

According to Rule 17(2) EUTMIR, if the notice of opposition does not clearly identify the earlier mark or the earlier right on which the opposition is based in accordance with Rule 15(2)(b) EUTMIR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

On 27/10/2014, the opponent filed notice of opposition against the contested application. It indicated that the opposition is based on the non-registered trade mark used in the course of trade in the United Kingdom. However, on 23/12/2016 (after the three-month period), it indicated that by virtue of the tort of passing off it has rights in the United Kingdom and Ireland.

Since Ireland was not invoked within the period of three months following the publication of the EU trade mark application, the opposition is inadmissible insofar as it is based on the earlier non-registered trade mark depicted above used in the course of trade in Ireland.

The opposition proceeds on the basis of the abovementioned earlier right used in the course of trade in the United Kingdom.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non-registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a)        rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b)        that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

• the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

• pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

• the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non-registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The right under the applicable law

According to Article 76(1) EUTMR, the Office will examine the facts of its own motion in proceedings before it; however, in proceedings relating to relative grounds for refusal of registration, the Office will restrict this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

According to Rule 19(2)(d) EUTMIR, if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C-263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). As the opponent is required to prove the content of the applicable law, it must provide the applicable law in the original language. If that language is not the language of the proceedings, the opponent must also provide a complete translation of the legal provisions invoked in accordance with the standard rules of substantiation.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the United Kingdom non-registered trade mark  under the tort of passing off. It made some references in its observations to case-law deriving from English and Irish courts. However, the opponent did not furnish any copies of the decisions to which it refers.

In this respect, it should be recalled that, where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature. The proof of the source, namely the applicable law or indeed relevant case-law, is all the more important in a case of passing off given that it is a common-law tort. Moreover, treating the national legal situation as an issue of fact, which is subject to proof by the party alleging such a right, is also justified by the fact that the Opposition Division is not always in a position to, in particular, monitor changes to legislation or the development of case-law in all the Member States.

In the present case, the opponent did not submit sufficient information on the legal protection granted to the type of trade sign invoked. Therefore, the opposition is not well founded under Article 8(4) EUTMR.

In any case, for the sake of completeness, the Opposition Division notes that, even if it were admitted that the opponent submitted sufficient information on the legal protection granted to the United Kingdom non-registered trade mark and proved that the earlier sign was used in the course of trade of more than local significance in connection with all the goods and services on which the opposition was based, the opposition would still fail on the ground of Article 8(4) EUTMR, since there is no misrepresentation. As seen in the comparison of the signs under the ground of Article 8(1)(b) EUTMR, the contested trade mark has no features or similarities that could lead the opponent’s clientele to believe that the goods to be marketed under the contested trade mark were the opponent’s.

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

Catherine MEDINA

Frédérique SULPICE

Pedro JURADO MONTEJANO

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.