OPPOSITION No B 2 295 437

Impossible b.v., Hoge Bothofstraat 45, 7511ZA Enschede, The Netherlands (opponent), represented by Lubberger Lehment – Kanzlei Für Gewerblichen Rechtsschutz, Meinekestr. 4, 10719 Berlin, Germany (professional representative)

a g a i n s t

MDR Group Modern Dispute Resolution ApS, Skolevej 4 E, 8250  Egå, Denmark (applicant), represented by Chas. Hude A/S, H. C. Andersens Boulevard 33, 1780  København V, Denmark (professional representative).

On 06/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 295 437 is partially upheld, namely for the following contested goods and services:

Class 9: 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; recording discs; compact discs, DVDs and other digital recording media; computer software; acoustic couplers; apertometers [optics]; portable media players; portable telephones; exposure meters [light meters]; photometers; phototelegraphy apparatus; diaphragms [photography]; anti-glare glasses; flash-bulbs [photography]; camcorders; centring apparatus for photographic transparencies; compact discs (read-only memory); compact discs [audio-video]; computer software, recorded; computer programmes [programs], recorded; densitometers; slides [photography]; digital photo frames; downloadable image files; computer programs [downloadable software]; films, exposed; cinematographic film, exposed; electronic publications, downloadable; cases especially made for photographic apparatus and instruments; speed; spools [photography]; filters [photography]; flashlights (photography); [electricity]; lens hoods; enlarging apparatus [photography]; magnifying glasses [optics]; photovoltaic cells; cameras [photography]; carriers for dark plates [photography]; photocopiers [photographic, electrostatic, thermic]; slide projectors; surveying apparatus and instruments; glazing apparatus for photographic prints; speed measuring apparatus [photography]; heliographic apparatus; holograms; apparatus for editing cinematographic film; cinematographic cameras; lenses for astrophotography; shutters [photography]; sound recording strips; sound recording carriers; sound reproduction apparatus; sound locating instruments; sound recording apparatus; sound transmitting apparatus; magnetic tapes; magnetic data media; measuring apparatus; measuring devices, electric; plane tables (surveying instruments); graduated glassware; measuring instruments; light-emitting electronic pointers; diaphragms for scientific apparatus; micrometer screws for optical instruments; micrometers; microscopes; darkroom lamps [photography]; darkrooms [photography]; objectives [lenses] [optics]; eyepieces; instruments containing eyepieces; optical glass; optical apparatus and instruments; optical data media; optical discs; optical condensers; optical lamps; optical lenses; periscopes; petri dishes; pipettes; prisms [optics]; projection apparatus; projection screens; audio- and video-receivers; frames for photographic transparencies; screens for photoengraving; film cutting apparatus; screens [photography]; correcting lenses [optics]; washing trays [photography]; viewfinders, photographic; sunglasses; mirrors [optics]; stands for photographic apparatus; tripods for cameras; animated cartoons; drying apparatus for photographic prints; drying racks [photography]; photographic racks; shutter releases [photography]; filters for ultraviolet rays, for photography; teaching apparatus; heat regulating apparatus; weighing apparatus and instruments; videotapes; video cassettes; video screens; video game cartridges; recorded dvds and recorded compact discs containing instructional guides for use with professional and personal development training programmes, educational software (recorded or downloadable) for personal and career-related development training programmes; cassette players; light conducting filaments [optical fibers [fibres]]; fibre [fiber (am.)] optic cables; magnetic tape units for computers; optical character readers.

Class 16: Printed matter; bookbinding material; photographs; albums; gummed tape [stationery]; pictures; bookbinding material; apparatus for mounting photographs; photograph stands; photo-engravings; graphic reproductions; decalcomanias; stationery; photographs [printed].

Class 41: Film production, other than advertising films; photography; microfilming; photographic reporting; videotape film production; videotape editing.

2.        European Union trade mark application No 12 108 941 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 12 108 941 namely against some of the goods and services in Classes 9, 16 and 41. The opposition is based on European Union trade mark registration No 8 997 322. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

In its communication received on 20/06/2016, the applicant mentions: ‘The applicant is invited to show actual and concurrent use for the registered goods and services’. This request refers to the applicant itself and the Opposition Division considers that it cannot be accepted as a valid request for proof of use since it is ambiguous.

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:

Class 1: Reducing agents for use in photography; photography (chemical preparations for use in photography); photographic emulsions; photographic paper; photographic sensitizers; photometric paper; gelatine for photographic purposes; sensitized photographic plates; pectin [photography]; cinematographic film, sensitized but not exposed; sensitized films, unexposed; flashlight preparations; photographic developers; ferrotype plates [photography]; fixing baths [photography]; fixing solutions [photography]; self-toning paper [photography]; toning salts [photography]; toning baths [photography].

Class 9: Drainers for use in photography; films, exposed; cinematographic film, exposed; editing appliances for cinematographic films; sound recording strips; shutter releases [photography]; diaphragms [photography]; flashlights [photography]; flash-bulbs [photography]; darkroom lamps [photography]; darkrooms [photography]; cinematographic cameras; tripods for cameras; camcorders; filters [photography]; speed measuring apparatus [photography]; cameras [photography]; photovoltaic cells; photocopiers [photographic, electrostatic, thermic]; photometers; carriers for dark plates [photography]; screens [photography]; cases especially made for photographic apparatus and instruments; spools [photography]; stands for photographic apparatus; viewfinders, photographic; drying apparatus for photographic prints; drying racks [photography]; filters for ultraviolet rays, for photography; shutters [photography]; enlarging apparatus [photography]; shutters [photography]; washing trays [photography]; scientific, nautical, surveying, photo, film, optical, weighing, measuring, signalling, controlling, rescuing and instructional apparatus, electrotechnical apparatus; cinematographic cameras; film cutting apparatus; cameras [photography]; transparencies [photography]; slide projectors; frames for photographic transparencies; centering apparatus for photographic transparencies; lenses for astrophotography; objectives [lenses] [optics]; cases especially made for photographic apparatus and instruments; bags for mobile telephones; sunglasses; digital picture frames.

Class 16: Transfers [decalcomanias]; albums; photographs; photo-engravings; mounting photographs (apparatus for); photograph stands; graphic reproductions.

Class 20: Picture frames.

Class 40: Photographic film development; photogravure; photographic printing; photocomposing services; cinematographic films (processing of -).

The contested goods and services are the following:

Class 9: 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; recording discs; compact discs, DVDs and other digital recording media; computer software; acoustic couplers; apertometers [optics]; portable media players; portable telephones; exposure meters [light meters]; photometers; phototelegraphy apparatus; diaphragms [photography]; anti-glare glasses; flash-bulbs [photography]; camcorders; centring apparatus for photographic transparencies; compact discs (read-only memory); compact discs [audio-video]; computer software, recorded; computer programmes [programs], recorded; densitometers; slides [photography]; digital photo frames; downloadable image files; computer programs [downloadable software]; films, exposed; cinematographic film, exposed; electronic publications, downloadable; cases especially made for photographic apparatus and instruments; speed; spools [photography]; filters [photography]; flashlights (photography); [electricity]; lens hoods; enlarging apparatus [photography]; magnifying glasses [optics]; photovoltaic cells; cameras [photography]; carriers for dark plates [photography]; photocopiers [photographic, electrostatic, thermic]; slide projectors; surveying apparatus and instruments; glazing apparatus for photographic prints; speed measuring apparatus [photography]; heliographic apparatus; holograms; interfaces for computers; cassette players; apparatus for editing cinematographic film; cinematographic cameras; lenses for astrophotography; shutters [photography]; sound recording strips; sound recording carriers; sound reproduction apparatus; sound locating instruments; sound recording apparatus; sound transmitting apparatus; blueprint apparatus; light conducting filaments [optical fibers [fibres]]; fibre [fiber (am.)] optic cables; magnetic tapes; magnetic tape units for computers; magnetic data media; measuring apparatus; measuring devices, electric; plane tables (surveying instruments); graduated glassware; measuring instruments; light-emitting electronic pointers; megaphones; diaphragms [acoustics]; diaphragms for scientific apparatus; balloons; microphones; micrometer screws for optical instruments; micrometers; microprocessors; microscopes; darkroom lamps [photography]; darkrooms [photography]; accidents; objectives [lenses] [optics]; eyepieces; instruments containing eyepieces; optical glass; optical apparatus and instruments; optical data media; optical discs; optical condensers; optical lamps; optical character readers; optical lenses; periscopes; petri dishes; pipettes; players; prisms [optics]; projection apparatus; projection screens; audio- and video-receivers; frames for photographic transparencies; screens for photoengraving; couplers (data processing equipment); film cutting apparatus; screens [photography]; anti-dazzle shades; correcting lenses [optics]; washing trays [photography]; viewfinders, photographic; sunglasses; mirrors [optics]; stands for photographic apparatus; tripods for cameras; animated cartoons; drying apparatus for photographic prints; drying racks [photography]; photographic racks; shutter releases [photography]; filters for ultraviolet rays, for photography; teaching apparatus; heat regulating apparatus; weighing apparatus and instruments; videotapes; video recorders; video cassettes; video screens; video game cartridges; video telephones; recorded dvds and recorded compact discs containing instructional guides for use with professional and personal development training programmes, educational software (recorded or downloadable) for personal and career-related development training programmes.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; albums; bookbinding apparatus and machines (office equipment); gummed tape [stationery]; pictures; bookbinding material; apparatus for mounting photographs; photograph stands; photo-engravings; graphic reproductions; decalcomanias; paper; stationery; photographs [printed].

Class 41: Film production, other than advertising films; movie studios; rental of cine-films; cinema presentations; photography; microfilming; photographic reporting; videotape film production; videotape editing; rental of camcorders; rental of movie projectors and accessories; rental of audio equipment.

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

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

Contested goods in Class 9

The contested scientific, nautical, surveying (mentioned twice), photographic, cinematographic, optical (mentioned twice), weighing (mentioned twice), measuring, signalling, checking (supervision), life-saving and teaching apparatus (mentioned twice) and instruments; diaphragms [photography]; flash-bulbs [photography]; camcorders; centring apparatus for photographic transparencies; films, exposed; cinematographic film, exposed; cases especially made for photographic apparatus and instruments; spools [photography]; filters [photography]; flashlights (photography); enlarging apparatus [photography]; photovoltaic cells; cameras [photography]; carriers for dark plates [photography]; photocopiers [photographic, electrostatic, thermic]; slide projectors; speed measuring apparatus [photography]; cinematographic cameras; lenses for astrophotography; shutters [photography]; sound recording strips; measuring apparatus; measuring instruments; darkroom lamps [photography]; darkrooms [photography]; film cutting apparatus; screens [photography]; washing trays [photography]; viewfinders, photographic; sunglasses; stands for photographic apparatus; tripods for cameras; drying apparatus for photographic prints; drying racks [photography]; shutter releases [photography]; filters for ultraviolet rays, for photography; apparatus for editing cinematographic film; digital photo frames; frames for photographic transparencies  are identically contained in both lists of goods (including synonyms).

The contested apparatus for recording, transmission or reproduction of sound or images include, as a broader category, the opponent’s cinematographic cameras. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apertometers [optics]; magnifying glasses [optics] are included in the broad category of the opponent’s optical apparatus. Therefore, they are identical.

The contested exposure meters [light meters]; photometers; densitometers are included in the broad category of the opponent’s measuring apparatus. Therefore, they are identical.

The contested anti-glare glasses are included in the broad category, or overlap with the opponent’s sunglasses. Therefore, they are identical.

The contested holograms are included in the broad category of the opponent’s photo apparatus. Therefore, they are identical.

The contested sound recording carriers include, as a broader category, the opponent’s sound recording strips. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sound locating instruments; optical lamps are included in the broad category of the opponent’s signalling apparatus. Therefore, they are identical.

The contested sound recording apparatus; sound transmitting apparatus; audio- and video-receivers; cassette players include, as broader categories, or overlap with, the opponent’s cinematographic cameras. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested glazing apparatus for photographic prints; phototelegraphy apparatus are included in the broad category of the opponent’s photo apparatus. Therefore, they are identical.

The contested measuring devices, electric; graduated glassware; micrometers are included in the broad category of the opponent’s measuring apparatus. Therefore, they are identical.

The contested plane tables (surveying instruments) are included in the broad category of the opponent’s surveying apparatus. Therefore, they are identical.

The contested light-emitting electronic pointers; microscopes; objectives [lenses] [optics]; eyepieces; instruments containing eyepieces; optical glass; periscopes; prisms [optics]; optical condensers; optical lenses; correcting lenses [optics]; mirrors [optics]; light conducting filaments [optical fibers [fibres]]; fibre [fiber (am.)] optic cables; optical character readers; are included in the broad category of the opponent’s optical apparatus. Therefore, they are identical.

The contested diaphragms for scientific apparatus; petri dishes; pipettes; heliographic apparatus are included in the broad category of the opponent’s scientific apparatus. Therefore, they are identical.

The contested projection apparatus include, as broader category, the opponent’s slide projectors. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested projection screens; screens for photoengraving; video screens include, are included in or overlap with the opponent’s screens [photography]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested animated cartoons are included in the broad category of the opponent’s films, exposed. Therefore, they are identical.

The contested photographic racks include, as a broader category, the opponent’s drying racks [photography]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested heat regulating apparatus is included in the broad category of the opponent’s controlling apparatus. Therefore, they are identical.

The contested slides [photography] is highly similar to the opponent transparencies [photography] because their nature is very similar, they are both made of a thin and transparent sheet and they both need of an apparatus to be shown and viewed by an attendance. Therefore, they also share their method of use and their purpose. Additionally, they can be goods in competition and can also be acquired at the same points of sale. Furthermore, manufacturers and final consumers will most likely coincide as well.

The contested lens hoods are similar to the opponent’s objectives [lenses] [optics] because a lens hood can only be used in combination with an objective, therefore they are complementary to each other. Furthermore, manufacturers and distribution channels are likely to be the same and final consumers will also coincide.

The contested sound reproduction apparatus; magnetic tape units for computers are similar to the opponent’s sound recording strips because they can be complementary between each other and manufacturers and end public can coincide. Furthermore, they can also be found at the same points of sale.

The contested micrometer screws for optical instruments are similar to the opponent’s optical apparatus since they are complementary goods and their producers can coincide. Furthermore, they target the same consumers and are likely to be found at the same points of sale.

The contested magnetic tapes; magnetic data media; recording discs; compact discs, DVDs and other digital recording media; compact discs (read-only memory); compact discs [audio-video]; optical data media; optical discs; recorded DVDs and recorded compact discs containing instructional guides for use with professional and personal development training programmes, educational software (recorded or downloadable) for personal and career-related development training programmes; videotapes; video cassettes; video game cartridges are similar to a low degree to the opponent’s sound recording strips. They are all support where data can be stored and read or reproduced from. Therefore they have a similar nature, their method of use is similar and they can also be found at the same points of sale.

The rest of the contested goods, namely, interfaces for computers; blueprint apparatus; megaphones; diaphragms [acoustics]; balloons; microphones; microprocessors; accidents; players; couplers (data processing equipment); anti-dazzle shades; video recorders; video telephones are considered dissimilar to any of the opponent’s goods in Class 9 because they are goods of different nature and purpose. They are not complementary to each other, neither in competition, and manufacturers and final consumer do not necessarily coincide. For the same reasons they are also considered dissimilar to the goods and services of Classes 16, 20 and 40 which are all chemicals, instruments, apparatus and services closely and directly related to the photography and cinematographic industry, contrary to the aforementioned contested goods.

Contested goods in Class 16

The contested photographs; albums; pictures; apparatus for mounting photographs; photograph stands; photo-engravings; graphic reproductions; decalcomanias; photographs [printed] are identically contained in both lists of goods.

The contested printed matter includes, as a broader category, or overlap with the opponent’s photographs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested stationery includes, as a broader category, the opponent’s albums. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested gummed tape [stationery]; bookbinding material are similar to the opponent’s albums since they have the same nature, they are stationeries, and they can be manufactured by the same producers and sold through the same points of sale.  

The contested paper (mentioned twice), cardboard and goods made from these materials, not included in other classes and the bookbinding apparatus and machines (office equipment) are dissimilar to any of the opponent’s goods and services in Classes 1, 9, 16, 20 and 40. Contrary to the opponent’s argument, no criteria of similarity could be established between the bookbinding apparatus and machines (office equipment), used to fasten books together and put covers on them, and the opponent’s mounting photographs, (apparatus for). The Opposition Division considers that they have different nature and purpose. They are not complementary to each other neither in competition and manufacturers and final consumer do not necessarily coincide.

Contested goods in Class 41

The contested photography; photographic reporting are similar to the opponent’s photographic film development in Class 40 since they have a very similar purpose or at least a close relation between each other. Furthermore, they are services that are often provided by the same service provider and through the same distribution channels.

The contested film production, other than advertising films; videotape film production; videotape editing; microfilming are similar to the opponent’s cinematographic films (processing of-) to the extent that they belong to the same industry and that they are complementary. They can also be delivered by the same provider and through the same distribution channels. Finally, the relevant public can also be the same.

The rest of the contested services, namely, movie studios; rental of cine-films; cinema presentations; rental of camcorders; rental of movie projectors and accessories; rental of audio equipment are considered dissimilar to any of the opponent’s goods and services in Classes 1, 9, 16, 20 and 40. Here, although the contested services may belong to the same very broad cinematography industry of the opponent and that they can be used in combination, and not necessarily complementary or essential in the sense given by the Office  as mentioned by the opponent, this is considered not sufficient to establish a clear link of similarity because their purpose and method of use are different and because both service providers and distribution channels usually do not coincide.

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 or similar to several degree are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, and specialised nature of the purchased goods and services.

Given that the general public is more prone to confusion, the examination will proceed on this basis.

3. The signs

	I’MPOSSIBLE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

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

The word ‘IMPOSSIBLE’ is meaningful in certain territories, for example, in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier mark is a figurative mark consisting of the words ‘IMPOSSIBLE’ written in black upper case standard letters. The letter ‘P’ is reversed.

The contested sign consists of the word mark ‘I’MPOSSIBLE’. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess.

The marks have no elements that could be considered clearly more distinctive or more dominant, (visually) eye-catching.

Conceptually, the contested sign ‘I’MPOSSIBLE’ does not have any meaning as such however due to the fact that it is extremely close to an existing word or expression, consumers will naturally try to find the better way to pronounce it and part of them will read it as ‘I AM POSSIBLE’ and the rest as ‘IMPOSSIBLE’, since the apostrophe is clearly showing that the way it is written is a play on words between these two expressions.

For the part of the public that will recognize the word ‘IMPOSSIBLE’ in the contested sign, the signs are conceptually identical.

For the part of the public that will read ‘I’M POSSIBLE’, the signs will be associated with dissimilar meanings. Therefore, they are not conceptually similar.

Visually and aurally, the signs coincide in the letters ‘IMPOSSIBLE’ that constitute the earlier mark in its entirety. The only visual differences are the letter ‘P’ in the earlier mark that is reversed, yet clearly perceivable, and the apostrophe after the letter ‘I’ in the contested sign which will lead to a different lecture depending on the part of the relevant public as already mentioned. Therefore, the signs are visually highly similar and aurally identical for the part of the public that will read the contested sign as ‘IMPOSSIBLE’ and highly similar for the rest of the public that will make a natural break after the letter ‘M’ and will read ‘I M POSSIBLE’, in such a case, the sound of the letter ‘I’ will also slightly vary.

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 and services 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

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison “must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components” (see judgment of 11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 22 et seq.).

In the present case, the contested goods and services are partly identical, partly similar to several degrees and partly dissimilar to the opponent’s goods and services. The comparison of the signs has established that they are visually highly similar and aurally and conceptually identical for a part of the public and aurally highly similar and conceptually not similar for the rest of the public. The only differences between the signs are the reversed letter ‘P’ in the earlier mark and the apostrophe and the slight variation of the sound of the letter ‘I’ for a part of the public in the contested sign. However, despite the fact that the latter might lead to different interpretations as already mentioned, the Opposition Division considers that this is not sufficient to differentiate the signs since coincidences are overwhelming and enough to create confusion in consumer’s mind.

Indeed, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Therefore, the differences already established may go unnoticed by consumers.

In its observations, the applicant argues that the word ‘IMPOSSIBLE has a low distinctive character, however, no argument showing that consumers have been exposed to widespread use of, and have become accustomed to this word were provided. 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 English-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

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

The rest of the contested goods and 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 goods and 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 shall 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

Benoit VLEMINCQ

Sandra IBAÑEZ

Begoña URIARTE VALIENTE

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.