OPPOSITION No B 2 688 193

Kandinsky Deutschland GmbH, Königsbergerstr. 100, 40231 Düsseldorf, Germany (opponent), represented by Preu Bohlig & Partner, Tesdorpfstrasse 8, 20148 Hamburg, Germany (professional representative)

a g a i n s t

Vincent Belorgey, 5 rue de Douai, 75009 Paris, France (applicant), represented by Claire de Chassey, 9 rue Saint Fiacre, 75002 Paris, France (professional representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 688 193 is partially upheld, namely for the following contested goods:

Class 9:         Spectacles [optics]; apparatus for recording, transmission or reproduction of sound or images, cartridges, cards and other carriers, all containing or for audio recordings; apparatus for recording, transmission or reproduction of sound and images, audio recordings, electrical circuits and CD-ROMs containing musical programmes, cinematographic films, recorded video tapes and video discs, recording or optical discs, video tapes; cinematographic film (apparatus for editing-); optical apparatus; optical appliances; spectacle cases; containers for contact lenses; sunglasses; spectacle frames; anti-dazzle shades; pouches for photographic apparatus; musical sound recording; audio recordings, audiovisual recordings of music and musical entertainment; sound, video and data recordings; theatrical, and video recordings, data, images, games, graphics, text, programs or information, all contained on magnetic or optical data carriers; magnetic data carriers, sound recordings; musical video recordings; video game cartridges; video cassettes; audio tapes; video films; cinematographic film, exposed; transparencies [photography]; compact discs, DVDs and other digital recording media, acoustic and optical discs, recording discs, recording discs, tapes, cassettes, customised floppy discs and CD-ROMs; digital video discs (DVDs); cinematographic and photographic films; electrical circuits and CD-ROMs containing musical programmes, cinematographic films, recorded video tapes and video discs, recording or optical discs, compact discs, DVDs and other digital recording media, recording or optical discs; computer firmware and computer software; software for mobile phones and mobile electronic devices; computer software; virtual reality game software; games software.

Class 16:        Stationery; paper; paperboard; scrapbooks; stickers [stationery]; blocks; writing or drawing books; agendas; calendars; notebooks; erasers, school supplies (stationery); fountain pens; pencils; document files (stationery); bookmarks; rub down transfers; adhesives for stationery; office requisites (except furniture); printed matter; newspapers; comic books; magazine supplements for newspapers; books; printed publications; magazines, printed sheet music; printed periodicals in the field of music; printed publications; artists’ materials; paint brushes.

Class 18:         Beach bags; bags for climbers; handbags, rucksacks; school book bags; wallets; umbrellas.

Class 25:         Bandanas [neckerchiefs]; headbands; bonnets, caps; scarves; hats; hats (paper); clothing, clothing of leather or imitations of leather; (clothing); waist belts; shirts; jackets [clothing]; tee-shirt; sashes for wear; clothing gloves; headgear; shoes, socks; slippers.

Class 28: Games and playthings; card games or board games; gaming balls.

2.        European Union trade mark application No 14 334 585 is rejected for all the above goods. 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 of European Union trade mark application No 14 334 585, namely against all the goods in Classes 9, 16, 18, 25 and 28. The opposition is based on European Union trade mark registration No 11 860 954 and German trade mark registrations No 30 470 482 and No 30 074 796. The opponent invoked Article 8(1)(b) 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

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

1. European Union trade mark registration No 11 860 954

Class 9:         USB flash drives, disposable cameras; eyeglass.

Class 14:         Ornaments [jewellery, jewelry (am.)], clocks and watches, key rings of metal; pin badges of metal for pinning on.

Class 18:         Leather and imitations of leather; bags, purses, suitcases, rucksacks.

Class 20:        Furniture, including in particular bean bags; seat cushions and hassocks.

Class 21:         Kitchen apparatus and accessories, in particular bar sieves, measuring jugs, cocktail shakers, bottle pourers, ice boxes, ice pails, pitchers, chopping boards, jars, bottle openers, corkscrews, flutes for sparkling wine, cocktail glasses, ice crushers, moka pots, non-electric fruit presses, decanters, milk frothers, champagne flutes, lemon squeezers, drinks mats, table plates, cups; articles of glassware; cleaning wipes; bottle openers of plastic with sound effects.

Class 24:         Textiles and textile goods, in particular plastics and textiles for upholstering furniture, beanbags, seat cushions and pouffes; pillow shams and covers, blankets and table linen; towels of textile, cleaning cloths, not included in other classes; key straps, not included in other classes.

Class 25:         Clothing, footwear, headgear for wear, barbecue aprons.

2. German trade mark registration No 30 470 482

Class 9:         Devices for recording, transference and reproduction of tone and picture; magnet recording bearer and records on subjects of the economy, the music, trade and the Internet.

Class 18:         Leather and imitation leathers as well as goods from it, as far as they are not included in other classes; suitcase and suitcase; umbrellas, sunshades.

Class 28:         Plays, toys; gymnastic article and sports article, as far as they are not included in other classes; Christmas tree decorations.

3. German trade mark registration No 30 074 796

Class 16:         Bookbinder’s article; stationery; pastes for stationery and stationery or for budgetary purposes; packaging material of plastic, as far as it is not included in other classes.        

Class 25:         Clothing pieces, footwear, headgears.

The contested goods are the following:

Class 9:         Musical sound recording; audio recordings, audiovisual recordings of music and musical entertainment; downloadable musical sound and downloadable audiovisual recordings featuring music and musical based entertainment; sound, video and data recordings; theatrical, and video recordings, data, images, games, graphics, text, programs or information, all contained on magnetic or optical data carriers or downloadable from the Internet or any other electronic means or network; video and audio recordings downloadable from the Internet; magnetic data carriers, sound recordings; musical video recordings; electrical communication apparatus, apparatus for recording, transmission or reproduction of sound or images, cartridges, cards and other carriers, all containing or for audio recordings; electrical communication apparatus, apparatus for recording, transmission or reproduction of sound and images, audio recordings, electrical circuits and CD-ROMs containing musical programmes, cinematographic films, recorded video tapes and video discs, recording or optical discs, video tapes; video game cartridges; video cassettes; audio tapes; cinematographic film (apparatus for editing-); video films; cinematographic film, exposed; animated cartoons; transparencies [photography]; compact discs, DVDs and other digital recording media, optical appliances, battery cells, acoustic and optical discs, recording discs, recording discs, tapes, cassettes, customised floppy discs and CD-ROMs; digital video discs (DVDs); cinematographic and photographic films; electrical circuits and CD-ROMs containing musical programmes, cinematographic films, recorded video tapes and video discs, recording or optical discs, compact discs, DVDs and other digital recording media, optical apparatus, batteries, recording or optical discs, downloadable ringtones; graphics and music via a global computer network and wireless devices; downloadable ring tones for mobile phones; downloadable music files; downloadable image files; downloadable video game programs; digital music; computer firmware and computer software; software for mobile phones and mobile electronic devices; computer software; virtual reality game software; games software; spectacle cases; containers for contact lenses; sunglasses; spectacles [optics]; spectacle frames; anti-dazzle shades; pouches for photographic apparatus.

Class 16:         Posters; scrapbooks; stickers [stationery]; blocks; writing or drawing books; paper; agendas; calendars; notebooks; erasers, school supplies (stationery); fountain pens; pencils; catalogues; document files (stationery); flyers, pictures; newspapers; comic books; magazine supplements for newspapers; books; bookmarks, stationery; postcards; printed publications; pamphlets, cards; rub down transfers; photographs; prospectuses; printed publications; magazines, printed sheet music; printed periodicals in the field of music; paper bags; paperboard; printed matter; stationery; adhesives for stationery, artists’ materials; paint brushes; typewriters and office requisites (except furniture); table linen of paper.

Class 18:         Beach bags; bags for climbers; handbags, rucksacks; school book bags; wallets; umbrellas.

Class 25:         Bandanas [neckerchiefs]; headbands; bonnets, caps; scarves; hats; hats (paper); clothing, clothing of leather or imitations of leather; (clothing); waist belts; shirts; jackets [clothing]; tee-shirt; sashes for wear; clothing gloves; headgear; shoes, socks; slippers.

Class 28:         Games and playthings; card games or board games; gaming balls.

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

The term ‘in particular’, used in the opponent’s list of goods, indicates that the specific goods 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, EU:T:2003:107).

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 spectacles [optics] and the opponent’s eyeglass covered by earlier mark (1) are synonymous. Therefore, these goods are identical.

The contested apparatus for recording, transmission or reproduction of sound or images, cartridges, cards and other carriers, all containing or for audio recordings; apparatus for recording, transmission or reproduction of sound and images, audio recordings, electrical circuits and CD-ROMs containing musical programmes, cinematographic films, recorded video tapes and video discs, recording or optical discs, video tapes; cinematographic film (apparatus for editing-) are included in, or overlap with, the broad category of the opponent’s devices for recording, transference and reproduction of tone and picture covered by earlier right (2). Therefore, they are identical.

The contested optical apparatus; optical appliances overlap with the opponent’s devices for recording, transference and reproduction of tone and picture covered by earlier right (2). Therefore, they are considered identical.

The contested sunglasses are included in the broad category of the opponent’s eyeglass covered by earlier mark (1). Therefore, they are identical.

The contested musical sound recording; audio recordings, audiovisual recordings of music and musical entertainment; sound, video and data recordings; theatrical, and video recordings, data, images, games, graphics, text, programs or information, all contained on magnetic carriers; magnetic data carriers, sound recordings; musical video recordings; video game cartridges; video cassettes; audio tapes; video films; cinematographic film, exposed; cinematographic and photographic films; transparencies [photography]; acoustic discs, recording discs, recording discs, tapes, cassettes, customised floppy discs are included in the broad category of the opponent’s magnet recording bearer and records on subjects of the economy, the music, trade and the Internet covered by earlier right (2). Therefore, they are identical.

The contested spectacle cases; containers for contact lenses; spectacle frames; anti-dazzle shades and the opponent’s eyeglass are all eye protection products and eye-related equipment for eye protection and/or eye correction, or cases/containers for use with them, and, therefore, these goods have similar natures and purposes. Moreover, they may have the same methods of use. They can have the same manufacturers and distribution channels; they also target the same consumers. Furthermore, some of these contested goods may be complementary to the opponent’s eyeglass covered by earlier right (1). Therefore, these goods are considered similar.

The contested pouches for photographic apparatus are used to protect and carry photographic equipment. Even taking into account the single-use nature of the opponent’s disposable cameras covered by earlier right (1), it cannot be excluded that there is a certain degree of complementarity between these goods, since disposable cameras can be protected against, for example, rain or water in waterproof pouches, or these pouches may be used by tourists for convenience. These goods can be manufactured by the same companies and distributed through the same channels. Moreover, they target the same consumers. Therefore, these goods are similar.

The contested musical sound recording; audio recordings, audiovisual recordings of music and musical entertainment; sound, video and data recordings; theatrical, and video recordings, data, images, games, graphics, text, programs or information, all contained on optical data carriers; compact discs, DVDs and other digital recording media; optical discs; CD-ROMs; digital video discs (DVDs); electrical circuits and CD-ROMs containing musical programmes, cinematographic films, recorded video tapes and video discs, recording or optical discs, compact discs, DVDs and other digital recording media, recording or optical discs all are various kinds of optical means containing data such as sound and/or images and, therefore, there is a link between these goods and the opponent’s devices for recording, transference and reproduction of tone and picture covered by earlier right (2). These goods are complementary to each other and usually have the same distribution channels, as they are offered in the same sales points; they may also target the same consumers. Therefore, all of the contested goods are similar to the opponent’s devices for recording, transference and reproduction of tone and picture in Class 9.

The contested computer firmware and computer software; software for mobile phones and mobile electronic devices; computer software and the opponent’s USB flash drives covered by earlier right (1), although they differ in their nature, purpose and methods of use, may be offered by the same companies. Moreover, they are complementary to each other. Therefore, these goods are considered similar to a low degree.

The contested virtual reality game software; games software and the opponent’s magnet recording bearer and records on subjects of the economy, the music, trade and the Internet covered by earlier right (2), although they differ in their nature, purpose and methods of use, may be complementary to each other and may be provided by the same producers. Therefore, they are considered similar to a low degree.

The contested animated cartoons and the opponent’s magnet recording bearer and records on subjects of the economy, the music, trade and the Internet covered by earlier right (2) and USB flash drives, disposable cameras; eyeglass covered by earlier right (1), both in Class 9, and all of the opponent’s remaining goods covered by earlier rights (1), (2) and (3) in Classes 14, 16, 18, 20, 21, 24, 25, and 28 have different natures, purposes and methods of use. None of the opponent’s goods has the same producers and distribution channels as the contested goods. The contested goods and the opponent’s goods target different consumers, are not in competition with each other and are not complementary to each other. Therefore, they are considered dissimilar.

The contested downloadable musical sound and downloadable audiovisual recordings featuring music and musical based entertainment; theatrical, and video recordings, data, images, games, graphics, text, programs or information, all downloadable from the Internet or any other electronic means or network; video and audio recordings downloadable from the Internet; downloadable ringtones; graphics and music via a global computer network and wireless devices; downloadable ring tones for mobile phones; downloadable music files; downloadable image files; downloadable video game programs; digital music have different natures and purposes from the opponent’s USB flash drives, disposable cameras; eyeglass covered by earlier right (1) and devices for recording, transference and reproduction of tone and picture; magnet recording bearer and records on subjects of the economy, the music, trade and the Internet covered by earlier right (2), all in Class 9. Similarly, the contested goods have very different natures and purposes from all the opponent’s remaining goods in Classes 14, 16, 18, 20, 21, 24, 25 and 28. The contested goods and the opponent’s goods do not target the same consumers and are not offered by the same undertakings through similar distribution channels. Moreover, they are neither complementary to nor in competition with each other. Therefore, the contested goods are dissimilar to all of the opponent’s goods covered by earlier rights (1), (2) and (3).

The contested electrical communication apparatus and the opponent’s devices for recording, transference and reproduction of tone and picture covered by earlier right (2), although they are all pieces of apparatus powered by electricity, are different as regards their purposes and methods of use, since the contested electrical communication apparatus is for communication through optical or radio signals, etc., or along a transmission line between communication equipment consisting of a transmitter and a receiver. Such equipment is used in wired or wireless communication systems and their subsystems (functional units). Even though these types of apparatus are used, generally speaking, for the transmission or reproduction of sound and/or images with the help of other pieces of apparatus, these goods do not have the same producers or distribution channels as the opponent’s devices for recording, transference and reproduction of tone and picture covered by earlier right (2), and they do not target the same consumers. Moreover, the contested goods differ in their nature, purpose and method of use from the opponent’s remaining goods covered by earlier rights (1), (2) and (3) in Classes 9, 14, 16, 18, 20, 21, 24, 25 and 28. These goods are not complementary to or in competition with each other. Furthermore, they are usually offered by different undertakings and through different distribution channels; moreover, they target different consumers. Therefore, the contested electrical communication apparatus and all of the opponent’s goods are considered dissimilar.

The remaining contested goods, such as battery cells; batteries in Class 9, are electric parts that transfer electric power to other electrical devices and, as such, do not have anything in common with any of the opponent’s goods in Class 9 covered by earlier rights (1) and (2) or with any of the opponent’s remaining goods covered by earlier rights (1), (2) and (3) in Classes 14, 16, 18, 20, 21, 24, 25 and 28. All of these goods differ from the contested goods in their natures, purposes and methods of use. These goods do not have the same producers or distribution channels and they target quite different consumers. The contested goods and the opponent’s goods are not complementary to, or in competition with, each other. Therefore, they are considered dissimilar.

Contested goods in Class 16

Stationery is identically contained in both the contested list of goods and the opponent’s list of goods of earlier right (3).

The contested scrapbooks; stickers [stationery]; blocks; writing or drawing books; paper; agendas; calendars; notebooks; erasers, school supplies (stationery); fountain pens; pencils; document files (stationery); bookmarks; rub down transfers; paperboard; adhesives for stationery; office requisites (except furniture) are included in the broad category of the opponent’s stationery covered by earlier right (3). Therefore, they are identical.

The contested printed matter; newspapers; comic books; magazine supplements for newspapers; books; printed publications; magazines, printed sheet music; printed periodicals in the field of music; printed publications and the opponent’s records on subjects of the economy, the music, trade and the Internet covered by earlier right (2) may have the same purpose and may be offered by the same companies. Moreover, they are in competition and they target the same public. Therefore, these goods are considered similar.

The contested artists’ materials; paint brushes and the opponent’s stationery covered by earlier right (3) may have the same purpose and the same distribution channels. Furthermore, the can be produced by the same companies. Therefore, they are considered similar to a low degree.

The contested posters; catalogues; flyers, pictures; photographs; prospectuses; pamphlets; cards; postcards; table linen of paper; paper bags; typewriters differ in nature from the opponent’s goods in Class 16 covered by earlier right (3), namely bookbinder’s article; stationery; pastes for stationery and stationery or for budgetary purposes; packaging material of plastic, as far as it is not included in other classes. These and the opponent’s remaining goods covered by earlier rights (1), (2) and (3) in Classes 9, 14, 18, 20, 21, 24, 25, and 28 have quite different purposes and methods of use. They do not have the same producers or distribution channels; moreover, they target different consumers. These goods are not in competition with, or complementary to, each other. Therefore, these goods are considered dissimilar.

Contested goods in Class 18

The contested handbags are included in the broad category of the opponent’s bags covered by earlier right (2). Therefore, they are identical.

Rucksacks are identically contained in both the contested list of goods and the opponent’s list of goods of earlier right (1).

Umbrellas are identically contained in the contested list of goods and the opponent’s list of goods of earlier right (2).

The contested beach bags; bags for climbers; school book bags are included in the broad category of the opponent’s bags covered by earlier right (1). Therefore, they are identical.

The contested wallets are included in the broad category of the opponent’s leather and imitation leathers as well as goods from it, as far as they are not included in other classes covered by earlier right (2). Therefore, they are identical.

Contested goods in Class 25

The contested bandanas [neckerchiefs]; headbands; bonnets, caps; scarves; hats; hats (paper); clothing, clothing of leather or imitations of leather; (clothing); waist belts; shirts; jackets [clothing]; tee-shirt; sashes for wear; clothing gloves; headgear; shoes, socks; slippers are included in the broad categories of the opponent’s clothing, footwear, headgear for wear covered by earlier right (1) and clothing pieces, footwear, headgears covered by earlier right (2). Therefore, they are identical.

Contested goods in Class 28

The contested games and playthings; card games or board games; gaming balls are included in the broad categories of, or overlap with, the opponent’s plays and toys covered by earlier right (2). Therefore, they are 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 found to be identical or similar to various degrees are directed at the public at large.

The degree of attention is considered average.

3. The signs

KANDINSKY	KAVINSKY
Earlier trade marks	Contested sign

The relevant territories are the European Union (European Union trade mark registration No 11 860 954) and Germany (German trade mark registrations No 30 470 482 and No 30 074 796).

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division, for reasons of procedural economy, finds it appropriate to focus the comparison on the German-speaking part of the relevant public also for what concerns the European Union trade mark registration on which the opposition is based.

The marks at issue might be perceived by the relevant public as surnames of Russian or, more generally, Eastern European or Slavic origin, particularly as regards the earlier trade marks, ‘KANDINSKY’, which are made up of the surname of the famous Russian abstract painter Wassily Kandinsky. In any case, the marks are distinctive, as neither ‘KANDINSKY’ nor ‘KAVINSKY’ is descriptive, allusive or otherwise weak for the relevant goods.

Visually, the signs coincide in the letters ‘KA**INSKY’, present in the same order in all of the signs. However, they differ in the letter ‘V’ of the contested sign and in the letters ‘ND’ together in the middle of the earlier trade marks.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘KA-**IN-SKY’, present identically in both signs. The pronunciation differs in the sound of the letters ‛V’ (of the contested sign) and ‘ND’ (of the earlier trade marks). However, the signs still coincide aurally in significant parts of the marks (their beginnings and endings).

Therefore, the signs are aurally highly similar.

Conceptually, the signs ‘KANDINSKY’ and ‘KAVINSKY’ may be perceived as surnames of Eastern European or Slavic origin. To this extent, the signs will be conceptually similar. However, it cannot be excluded, as noted above, that at least part of the relevant public will associate the earlier signs, ‘KANDINSKY’, with the surname of a famous Russian painter and will perceive the contested sign, ‘KAVINSKY’, only as a generic Eastern European surname. To this extent, the signs might be perceived as 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 marks 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 any of its marks are particularly distinctive by virtue of intensive use or reputation.

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 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

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.

The contested goods are partly identical or similar to various degrees and partly dissimilar to the opponent’s goods covered by earlier rights (1), (2) and (3). The earlier trade marks are deemed to have a normal degree of distinctiveness.

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

The earlier marks constitute the word ‘KANDINSKY’, which is aurally and visually highly similar to the contested sign, ‘KAVINSKY’. The contested sign may be associated with the earlier marks, since they coincide in seven out of the nine letters of the earlier trade marks. The significant parts of the marks, the beginning (‘KA’), and the ending (‘INSKY’), are identical and will influence consumers’ perception of the conflicting signs. Furthermore, as explained above, the words that constitute the marks ‘KANDINSKY’ and ‘KAVINSKY’ evoke similar concepts, as each could be perceived as a surname of Eastern European or Slavic origin.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-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 No 11 860 954 and German trade mark registrations No 30 470 482 and No 30 074 796. 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 found to be identical or similar to various degrees to those of the earlier trade marks.

The rest of the contested goods 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 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, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Andrea VALISA

José Antonio GARRIDO OTAOLA

Michele M. BENEDETTI-ALOISI

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.