OPPOSITION No B 2 345 364

MO Streetwear GmbH, Sorbenstr. 22, 20537 Hamburg, Germany (opponent), represented by Preu Bohlig & Partner, Tesdorpfstrasse 8, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Fashion Division, S.A., Lugar do Espido, Via Norte, 4470-177 Maia, Portugal (applicant), represented by J. Pereira Da Cruz, S.A., Rua Victor Cordon 14, 1249-103 Lisbon, Portugal (professional representative).

On 11/05/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 345 364 is partially upheld, namely for the following contested goods and services:

Class 25:        Clothing, footwear, headgear.

Class 35: Retailing and wholesaling, in shops and via global computer networks, of clothing and headgear, including stoles, neckerchiefs, caps, scarves, gloves, belts (clothing), ties, socks, tights, pyjamas, dressing gowns, underpants, boxer shorts (underpants), briefs, bras, undershirts, baby bodysuits and girdles

2.        European Union trade mark application No 12 209 888 is rejected for all the above goods and services. It may proceed for the remaining 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 12 209 888, namely against all the goods in Class 25 and some of the services in Class 35. The opposition is based on German trade mark registration No 39 939 194. The opponent invoked Article 8(1)(b) EUTMR.

On 16/12/2015 the Opposition Division rendered a decision which resulted in the rejection of the opposition on the grounds that there was no likelihood of confusion. Given that the opposition was considered not well founded under Article 8(1) EUTMR, the evidence of use filed by the opponent was not assessed.

The decision was appealed and the Board of Appeal decided in case R 209/2016-2 on 29/08/2016. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the Opposition Division did not give enough weight to the presence of the component ‘BY MO’ at the end of the contested sign and that the targeted German consumers will perceive that component as an indication that the ‘CONCEITO HIPER’ branded products and services originate from an entity named ‘MO’.

Therefore, according to the Board the marks are globally similar in view of the common distinctive element ‘MO’ to such an extent that a likelihood of confusion may not be ruled out without a proper assessment of the relevant conflicting goods and services. It is only in case where a likelihood of confusion can be excluded without comparing the goods and services, in particular when the signs are sufficiently dissimilar, that the requirement to review the proof of use can be omitted. As according to the Board this is not the case here, the case must be remitted to the Opposition Division for re-examination of that evidence. In the event that the Opposition Division comes to the conclusion that the earlier mark has been genuinely used, then the reasoning outlined in the decision of the Board should be taken into account.

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 German trade mark No 39 939 194.

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 27/01/2014. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Germany from 27/01/2009 to 26/01/2014 inclusive.

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

Class 18:        Leather and imitation leather and goods made thereof (as far as included in class 18), bags made of textile, leather and materials similar to leather, purses, rucksacks, traveling trunks, traveling bags, umbrellas, briefcases, pocket wallets, college cases, beauty cases.

Class 25:        Clothing, namely women’s and men’s outer garment, blouses, suites, dresses, skirts, jackets, trousers, shirts, pullovers, neckties, coats, scarves, gloves, stockings, t-shirts, polo shirts, sportswear, swimwear, leatherwear, headgear, shoes, boots, belts.

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 30/01/2015, according to Rule 22(2) EUTMIR, the Office gave the opponent until 04/04/2015 to submit evidence of use of the earlier trade mark. On 01/04/2015, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Annex 1: Document made up by the opponent containing minimum turnover figures of the opponent and its sales company ‘Motion Fashion Network Europe GmbH’ (the exact numbers are not submitted for reasons of confidentialaty) in relation to the sale of bags, clothing, headgear and shoes in Germany, from 2009 to 2013 with a yearly minimum of EUR 1,000,000.

Annex 2: 15 invoices dated 2009-2013 (2 in 2009, 3 in 2010, 5 in 2011, 3 in 2012 and 2 in 2013) issued to retailers in Germany, in German and English. The opponent translated the main products referred to in the invoices in German into English (gloves, hat, hoody, jacket, scarf, trousers, coat, skirt). Although not all items in the invoices refer individually to the earlier mark it is clear that all invoices refer to the earlier mark ‘MO’. For example, the invoices dated 09/11/2009 and 16/11/2009 mentioning ‘Mo KW 45’ and ‘Mo KW 46’ for a total amount of EUR 981.77 and EUR 1934 respectively; other invoices – for example the invoice dated 28/10/2011 for a total amount of EUR 14,329.55, the invoice dated 27/08/2012 for a total amount of EUR 9077.94; the invoice dated 15/01/2013 for a total amount of EUR 72,568.79 – refer in their subject line to the earlier mark in the following terms ‘Brand: myMo HW + MO’, ‘Brand: Aktion myMo + MO’, ‘Aktion myMo (Damen) + MO (Herren)’ and mention articles such as t-shirt, longsleeve, cardigan, sweatshirt, dress, blouse, trouser, jacket, hat, sweater, pullover.

Annex 3: Pictures of goods (clothing articles, belts, bags, flip-flops, hats) sold under the ‘MO’ trade mark, some containing a product label or price tag with the trade mark ‘MO’, for example   .

Annex 4: Extracts from product catalogues distributed to German customers between 2009 and 2014 showing clothing articles alongside the stylised version of the trade mark ‘MO’ shown above.

Annex 5: Extracts from internet sites in German (customers and retailers) dated 2011-2013 with reproductions of the trade mark ‘MO’ (as registered and the stylised version shown above) in relation to clothing articles, such as jackets, shirts and trousers, and bags.

Annex 6: Affidavit by the business manager of the opponent confirming that the trade mark ‘MO’ is since 1999 in permanent use in different countries of the European Union, especially in Germany, in relation to bags, clothing and headgear. Furthermore, it is stated that the minimum annual turnovers in Germany exceed EUR 1,000,000.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company.

According to Article 15(2) EUTMR, use of the European Union trade mark with the consent of the proprietor is deemed to constitute use by the proprietor. Although this provision covers EUTMs, it can be applied by analogy to earlier marks registered in Member States.

The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225).

Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded.

To this extent, and in accordance with Article 15(2) EUTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

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 applicant argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

The invoices and internet extracts show that the place of use is Germany. This can be inferred from the language of the documents (German) and addresses in Germany. Therefore, the evidence relates to the relevant territory. The opponent argues that the earlier mark is not mentioned in most of the invoices, however as mentioned above, the earlier mark is mentioned as ‘brand’ in the subject line of the invoices. Furthermore, the number of invoices submitted is sufficient as there are in total 15 invoices that cover the full 5-year period, some of which contain considerable amounts.

The evidence is dated within the relevant period.

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

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

The documents filed, namely the invoices and internet extracts in combination with the turnover figures as confirmed in the affidavit, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

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

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

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

In the present case, the mark ‘MO’ is used on the invoices as registered. On the catalogues, labels and price tags it is used in a figurative form containing a slight stylisation. However, being the earlier mark a word mark, it is considered that the slight stylisation of the word does not affect the distinctive character of the mark.

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

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

Taking into account the evidence in its entirety, 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.

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 will, 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 the evidence shows genuine use of the trade mark for the following goods:

Class 25:        Clothing, namely women’s and men’s outer garment, blouses, dresses, skirts, jackets, trousers, shirts, pullovers, coats, scarves, gloves, t-shirts, headgear.

Although some of the pictures submitted by the opponent (Annexes 3 and 5) suggest that the opponent also used the mark for goods such as belts, bags and flip-flops, it cannot be determined to which extent the earlier mark has been used in relation to these goods as these goods are not, or not sufficiently, reflected in the invoices submitted and no specific sales figures or given with respect to these goods. Moreover, these goods do not appear in the catalogues submitted as Annex 4.

Therefore, the Opposition Division will only consider the abovementioned goods in Class 25 in its further examination of the opposition.

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

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

1. The goods and services

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

Class 25:        Clothing, namely women’s and men’s outer garment, blouses, dresses, skirts, jackets, trousers, shirts, pullovers, coats, scarves, gloves, t-shirts, headgear.

The contested goods are the following:

Class 25: Clothing, footwear, headgear.

Class 35: Retailing and wholesaling, in shops and via global computer networks, of clothing, footwear and headgear, including stoles, neckerchiefs, caps, scarves, gloves, belts (clothing), ties, socks, tights, pyjamas, dressing gowns, underpants, boxer shorts (underpants), briefs, bras, undershirts, baby bodysuits and girdles, leatherware including bags, rucksacks, purses, suitcases.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the applicant’s list of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, ‘Nu-Tride’).

However, the term ‘namely’, used in the opponent’s list of goods to show the relationship of individual goods with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

As a preliminary remark, it is to be noted that according to Rule 2(4) EUTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 includes, as a broader category, the opponent’s clothing, namely trousers. It is impossible for the Opposition Division to filter these goods from the abovementioned category. Since the Opposition Division cannot dissect ex officio the broad category of the applicant’s goods, they are considered identical to the opponent’s goods.

The contested headgear is identically contained in both lists of goods.

The contested footwear serves the same purpose as the opponents clothing, namely trousers: 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 these 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 and wholesaling, in shops and via global computer networks, of clothing and headgear, including stoles, neckerchiefs, caps, scarves, gloves, belts (clothing), ties, socks, tights, pyjamas, dressing gowns, underpants, boxer shorts (underpants), briefs, bras, undershirts, baby bodysuits and girdles are similar to a low degree to the opponent’s clothing, namely women’s and men’s outer garment, blouses, dresses, skirts, jackets, trousers, shirts, pullovers, coats, scarves, gloves, t-shirts, headgear in Class 25.

The contested retailing and wholesaling, in shops and via global computer networks, of footwear, leatherware including bags, rucksacks, purses, suitcases and the opponent’s clothing, namely women’s and men’s outer garment, blouses, dresses, skirts, jackets, trousers, shirts, pullovers, coats, scarves, gloves, t-shirts, headgear in Class 25 are dissimilar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

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 the goods at issue are not identical.

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) are partly directed at the public at large and partly at a professional public (i.e. wholesaling services). The degree of attention is considered to be average.

3. The signs

MO	CONCEITO HIPER BY MO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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

The common element ‘MO’ and the words ‘CONCEITO HIPER’ will not be associated with a specific meaning and are therefore distinctive.

As stated by the Board of Appeal in its decision R 209/2016-2, even if placed at the end of the contested sign, the element ‘BY MO’ (which has the same size as the remaining word elements of the mark), should not be underestimated. The English expression formed by the preposition ‘BY’ followed by the name of an entity, such as the one at hand, is commonly and frequently used on a worldwide basis in the most disparate trade sectors, and specifically in the clothing field, to indicate the commercial origin of the goods and services at issue (04/02/2015, T-372/12, APRO, EU:T:2015:70, § 38). This is precisely the way the German consumers targeted will perceive the expression ‘BY MO’ at the end of the contested sign, i.e. as an indication that the (‘CONCEITO HIPER’) branded products and services originate from an entity named ‘MO’. Therefore, the element ‘BY MO’ represents an important portion of the contested sign in terms of its commercial identification power and, thus, its distinctive force.

Visually, the signs coincide in the word ‘MO’, which constitutes the full earlier mark and the last word of the contested sign. However, they differ in the first three words ‘CONCEITO HIPER BY’ of the contested sign, and in their length as the earlier mark is composed of one two-letter word and the contested sign contains four words and a total of 17 letters.

Taking into account that the earlier mark is fully reproduced in the contested sign and represents an important portion of the contested sign, the signs are visually similar to a certain degree as established in the aforementioned decision of the second Board.

Aurally, the pronunciation of the signs coincides in the syllable /MO/, present identically in both signs. The pronunciation differs in the sound of the words /CONCEITO HIPER BY/ of the contested sign, which have no counterparts in the earlier mark.

For the reasons mentioned above, the marks are aurally similar to a certain degree as established in the aforementioned decision of the second Board.

Conceptually, as mentioned above, the expression ‘BY MO’ at the end of the contested sign will be understood by the majority of the relevant public as indicating that the goods and services at issue originate from a particular entity called ‘MO’. To the (limited) extent that the expression ‘BY MO’ suggests a commercial origin identical to that of the ‘MO’ products, the signs can be associated conceptually (04/02/2015, T-372/12, APRO, EU:T:2015:70, § 38). Therefore, the marks are conceptually similar to a certain degree as established in the aforementioned decision of the second Board.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the 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.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital 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).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

The conflicting goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar.

The signs are visually, aurally and conceptually similar to a certain extent. The common element ‘MO’ constitutes the full earlier mark and its distinctive power in the contested sign is highlighted by the fact that it is preceded by the preposition ‘BY’ which indicates commercial origin (§24, R 209/2016-2). Despite being located at the end of the contested sign, the word ‘MO’ cannot be neglected as it is preceded by the word ‘BY’ which creates a conceptual link between the marks and will therefore be perceived as an indication that the identical and similar (to varying degrees) goods and services applied for originate from an entity called ‘MO’.

Consequently, even if the average consumer is capable of detecting certain visual and aural differences between the two conflicting signs and although the coincidences in the signs are less obvious than the differences, there exists a likelihood that he might associate the signs with each. Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

While it is true that the initial part of word marks may be liable to attract the consumer’s attention more than the following parts (see, to that effect, judgments of 17 March 2004, T-183/02 and T-184/02, ‘Mundicor’, para. 81, and of 16 March 2005, T-112/03, ‘Flexi Air’, paras 64 and 65), the difference at the beginning of the mark applied for is not enough in the present case to counteract the similarity arising from the presence in both of the term ‘MO’. Therefore, a likelihood of confusion cannot be excluded.

In its observations, the applicant argues that several trade mark registrations ‘MO’ co-exist with the opponent’s earlier mark so that it would be possible for the conflicting marks to also peacefully co-exist in the market.

The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include ‘MO’. Under these circumstances, the applicant’s claims must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s German trade mark registration.

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 varying degrees) to those of the earlier trade mark.

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) EUTMR, the opposition based on this article and directed at these services cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS

Saida CRABBE

Ric WASLEY

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.