OPPOSITION No B 2 544 719

Voestalpine Aktiengesellschaft, Voest-Alpine Str. 1, 4020 Linz, Austria (opponent), represented by Clarke, Modet y Cía. S.L., Rambla de Méndez Núñez, 12 – 1º Puerta 2 bis, 03002 Alicante, Spain (professional representative)

a g a i n s t

Vitaminhaus Pty Ltd, SE7 400 Canterbury Rd, Surrey Hills,  VIC 3127, Australia (holder), represented by Briffa, Business Design Centre 52 Upper Street, Islington, London  N1 0QH, United Kingdom, (professional representative).

On 01/08/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 544 719 is rejected in its entirety.

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

REASONS:

The opponent filed an opposition against all the goods of the figurative European Union trade mark application No 1 217 407 . The opposition is based on;

• Well-known trade marks ‘voest’ and ‘voestalpine’ in Austria and Germany for which Article 8(1)(b) in conjunction with Article 8(2)(c) EUTMR was invoked; 
• International trade mark registration No 979 613 designating the European Union, for the word mark, ‘VOEST;
• European trade mark registration No 2 970 143, for the figurative mark,

The opponent invoked Article 8(1)(b) and 8(5) EUTMR for the two latter rights.

1.  Oral Hearing

Further to the closure of the proceedings on 21/04/2017, the opponent filed a request for oral proceedings according to Article 77 of the EUTMR. The opponent’s justification was to clarify evidence submitted, explain in detail all arguments submitted as well as to have both parties present and as such protect the rights of the clients involved.

In this regard, the Office will hold oral proceedings either on its own initiative or at the request of any party to the proceedings only when it considers these to be absolutely necessary. This is at the discretion of the Office (judgments of 20/02/2013, T-378/11, Medinet, EU:T:2013:83, § 72 and the case-law cited therein; and 16/07/2014, T-66/13,  Flasche, EU:T:2014:681, § 88). However, in the vast majority of cases it is considered sufficient for the parties to present their observations in writing.

In the case at issue, the Opposition Division does not consider the arranging of oral proceedings to be expedient. It is not clear what arguments, facts or evidence could be presented in oral proceedings which could not have already been presented in the written proceedings. 

In the present case, the Opposition Division considers that it is in possession of all the necessary elements to come to a decision. Further, the opponent had ample opportunity to present all its legal and factual arguments in writing. Even if the opponent stated that it wished to clarify the evidence submitted it did not offer any further, more tangible details and the evidence furnished is clear and self-explanatory. Whether or not the materials are sufficient to support the opponent’s claims is, however, another matter which will be examined further on. Nonetheless and more importantly, an oral hearing cannot be considered as a further opportunity to submit additional evidence since its purpose is to clarify outstanding points before a final decision is taken.  

The Opposition Division therefore does not consider oral proceedings to be expedient.

2. SUBSTANTIATION

International trade mark registration No 979 613 designating the European Union, for the word mark, ‘VOEST

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the notice of opposition was not accompanied by any evidence as regards the aforementioned earlier international trade mark registration on which the opposition is based.

The opponent was set a deadline of 16/02/2017 by which to submit evidence proving the validity of the mark.

The opponent did not submit any evidence concerning the substantiation of the earlier trade mark at any time during the proceedings.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

Given that this earlier mark is rejected and the proof of use only concerned this mark, this issue is no longer relevant and can be set aside. Moreover, as will be explained further on, this evidence cannot be taken as constituting proof of reputation according to Article 8(5) EUTMR.

3. LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR based on European trade mark registration No 2 970 143

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: Benzol and homologues, phenol and homologues, tars and tar distillates, tar for steel making, naphthalene, electrode pitch, liquid resin.

Class 4: Coal, coke, broken coke, blast furnace lump coke, foundry coke, small coke, oils.

Class 6: Unwrought and partly wrought common metals and their alloys; ores, pig iron, steel, cast iron; castings and forgings for steel making, mechanical engineering and apparatus construction, iron slabs, blocks, billets, cast, rolled and forged components; cold-rolled and hot-rolled thin, medium and heavy sheets and plates of steel, cold-rolled and hot-rolled bands of steel; surface treated and refined sheets and plates, sheet metal blanks; sheet metal pressings and stampings, forged sheet metal; surface treated, refined and welded sheet bars; precision pipes and special-purpose pipes for use in the automobile and construction industries, plastic-coated steel pipes, helically wound pipes, pipe fittings and junctions, fittings, steel pipe joints, manifolds, flanges; wire and wire goods, rolled and drawn steel wire, surface treated, refined and galvanised steel wire, screws, nuts, nails, pins, ropes, rivets, bolts, rings, chains, discs, shims, clips; metal rails; rail and switch point fixing material of metal; switch point constructions and switch point equipment, switch point bolts and switch point nuts, shaped steel bars for permanent way accessories, sleepers for railway tracks of metal, cold-rolled and hot-rolled pipes of metal, seamless pipes; sectional steel, light and special-purpose profiles, hot-rolled and cold-rolled profiles, profiles of metal, rod steel, round bar steel, reinforcing mesh, reinforcing steel, ribbed reinforcing steel, steel sections, cold-rolled and hot-rolled beams, rings of steel; masts and scaffolding of metal; steel pipe culverts; fence posts and railings, trellis posts; safety rails for roads, overhead direction signs; structural parts for buildings of all kinds, sheet metal constructions of steel; doors of metal and frames for doors, portals of metal, steel frame profiles; building elements of light metal and steel; sound insulating walls, partitions, sheet piling; facade claddings.

Class 9: Chemical apparatus and instruments, distillation apparatus, apparatus for dosing and sampling flowable substances; electronic monitoring installations and instruments; measuring and control equipment; gauges; weighing, measuring, signalling and checking (supervision) apparatus for machines and machine tools, hoisting magnets; temperature measuring lances for steel works; cutting torches and welding torches; computer software.

Class 12: Railway rolling stock and parts and fittings therefor (not included in other classes);automobiles, parts and fittings therefor (not included in other classes).

Class 17: Plastic and plastic-coated objects, foils, plates, rods and pipes of plastic, automobile parts and fittings of plastic and rubber, track sleepers of plastic.

Class 19: Building and road building materials; building materials, hardening substances and recyclings for iron and steel works; lime, limestone; sleepers of concrete.

Class 20: Racks of all kinds.

Class 35: Business consultancy, management and monitoring; operational and organisational consultancy, project management in the field of building construction, metallurgy, the railway and automobile industries.

Class 37: Building, construction, assembly, maintenance and repair of machinery and installations; planning, design, construction, assembly, commissioning, repair and maintenance of iron and steel works installations and railway installations; high-bay and high-bay warehouse buildings, servicing and maintenance of computer software.

Class 39: Transport and logistics for goods of all kinds.

Class 40: Mechanical and thermo-mechanical treatment of metals and metal parts; forging, stamping, pressing, cutting and welding of parts for vehicle bodies, forging, cutting and welding of profiles and rails, manufacture of vehicle bodies and parts for vehicle bodies.

Class 42: Technological consultancy and planning; project studies and efficiency studies for the iron and steel industry, the automobile industry, the railway and construction industries; engineering, research and development for the iron and steel industry, the automobile industry, the railway and construction industries, development, programming, servicing and maintenance of computer software; planning and design of computer hardware and computer software.

The contested goods are the following:

Class 5: Effervescent vitamin tablets; vitamin preparations; vitamin supplements; vitamin tablets; vitamins; dietary supplements; fibre supplements; nutritional supplements

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.

The goods and services in question are dissimilar. The contested goods are made up of preparations that are intended to improve health, diet and general well-being. Vitamins, aside from giving additional energy boosts, make up for deficiencies that may impede normal growth and development, for example. Supplements also compensate dietary or nutritional shortcomings, and all in all, these goods are used for health purposes.

The goods and services from the earlier right however, are completely disparate. Firstly, when looking at the services protected by the earlier mark they cover business, building, repair, installation, planning, design, transport, mechanical and thermo treatment of materials as well as factory related services and technical, research and development services. By their nature, goods are generally dissimilar to services. This is because goods are articles of trade, wares, merchandise, or real estate. Their sale usually entails the transfer of title in something physical, i.e. movables or real estate. Services, on the other hand, consist of the provision of intangible activities. Even if sometimes a complementary relationship may exist, this is not the case at hand as there is no material nexus whatsoever.

As to the goods, these are also far-removed given that those from the earlier mark refer to racks, a selection of building materials, plastic articles and vehicle related pieces of equipment as well as chemical, distillation and measuring apparatus and software in Class 9 and also metallic objects, chemicals and fuels. The fact that the goods in Class 5 may be composed of combinations of various chemicals does not automatically imply any degree of similarity. The goods in Class 5 are finished products whilst those in Class 1 are raw, unfinished goods. Indeed, the mere fact that one product is used for the manufacture of another will not be sufficient in itself to show similarity as their nature, purpose, relevant public and distribution channels may be different (judgment of 13/04/2011, T-98/09, T Tumesa Tubos del Mediterráneo S.A. EU:T:2011:167, § 49-51). This is applicable to the current scenario. When considering all of the goods and services in dispute, none of them coincide in any relevant points of contact, their nature and purpose differ as do their producers, consumers and distribution channels. Furthermore they do not share a complementary nature nor are they in competition with one another.

The opponent has argued that there is similarity between the steel products covered by the earlier mark and the goods in Class 5 as both bring to mind an image of ‘strength’ given that vitamins have a ‘steel-yourself’ function. The opponent submitted an extract from the internet showing that vitamins are frequently referred to as having ‘extra strength’. However this argument cannot be upheld within the context of Article 8(1)(b) EUTMR and the comparison of goods and services but would rather appear to be an argument applicable under Article 8(5) EUTMR.

As such, the Opposition Division reiterates its finding that the goods and services are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the goods and services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

This finding would still be valid even if the earlier trade mark were to be considered as enjoying a high degree of distinctiveness. Given that the dissimilarity of the goods and services cannot be overcome by the highly distinctive character of the earlier trade mark the evidence submitted by the opponent in this respect does not alter the outcome reached above.

4. WELL-KNOWN TRADE MARKS – ARTICLE 8(1)(b) IN CONJUNCTION WITH ARTICLE 8(2)(C) EUTMR

The goods and services of the well-known trade marks are identically contained in the list above, with the exception of:

Class 6 which also includes high bay and high-bay warehouse buildings made of metal.

Class 19 which also includes tars and tar distillates, tar for steel making; high-bay and high-bay warehouse buildings not made of metal.

In the context of Article 8(2)(c) EUTMR, the requirements for applying Article 6bis of
the Paris Convention and Article 8(1)(a)/(b) EUTMR are the same, insofar as both provisions require, inter alia, similarity or identity between the
goods or services. In this regard therefore and to succeed on this count, there must be at least some similarity between the goods and services.  Reference is made to the previous assertions which are directly applicable here as concerns the dissimilarity of the goods and services. The well-known marks do not cover any additional goods and services that would lead to a different finding.

Given that the goods and services are dissimilar and that this is a necessary condition of the relevant provisions, the opposition must be rejected as far as based on these well known marks. Consequently it is not necessary to enter into any further detail on this point.

5. REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient.

The opposition may still fail if the holder establishes due cause for the use of the contested trade mark. In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in Germany and Austria.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the EU was designated in the contested international registration on 20/11/2013. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Germany and Austria prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation which are all the goods and services as registered and as listed in section (III)(a) of this decision.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 16/02/2016, within the deadline, the opponent submitted the evidence listed below. For the sake of completeness, the evidence sent to constitute proof of genuine use of the international trade mark registration No 979 613 was received after this date and as such cannot be taken into account. Indeed, the evidence to prove reputation is a question of substantiation and according to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

Further, according to Rule 19(2)(c) EUTMIR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

As set out in the proceedings and further to an extension request that was granted, the opponent had until 16/02/2016 to submit evidence to support its claims. According to Rule 19(4) EUTMIR, the Office will not take into account written submissions or documents, or parts thereof, that have not been submitted, or that have not been translated into the language of the proceedings, within the time limit set by the Office. Consequently, only the evidence filed in the deadline will be considered, which is as follows;

Exhibit A: A document originating from www.voestalpine.com entitled ‘What drives us’, which is a presentation of the business year 2014-2015. The document sets out that the opponent is a steel-based technology and industrial company and a leading supplier in the manufacture, processing and enhancement of exacting steel products. The document sets out that the company went public in 1995 and gives general key figures for 2014/2015 and reference is made to its work in relation to high-speed railway systems and innovative technologies for wind and solar power.

Annex 1: Affidavit by the ‘Head of Corporate Legal’ of the opponent company which briefly outlines the company activities and revenue but in general terms with the exception of the comment that since 2007/2008, around 10% of revenue is generated in Austria. The affidavit refers to Annex 2 and submits that 42% of the Austrian population know about ‘voest’ and 23% know about ‘voestalpine’.

Annex 2: Surveys by GfK dated 17/07/2014 containing information from 2012 in German and English with the following information; Question 1 ‘From which Austrian industrial companies, have you seen, heard or read any advertisements in recent weeks? Voest is the second company mentioned with 22% whilst ‘Voest Alpine, voestalpine’ account for 13%. Question 2 ‘When you think of Austrian industrial companies which ones do you think of?’ Voest is the first company with 47%. Question 3 ‘Here is a list of names of Austrian industrial companies. Please mark the names you recognise. Please also mark the companies that you have already mentioned’. A similar study for 2013 is enclosed. According to the back page of the report, the survey for 2013 was carried out between 24/06-05/07 whilst in 2012 it was between 19/09-08/10. Even though this part of the report is in German the wording ‘Computer Assisted Web Interviewing’ would appear to refer to how the survey was conducted whilst ‘2013:n=1.620, 2012:n=1620’ would seem to refer to the sample, i.e., 1620 people were interviewed.

Annex 3: A range of articles; (1) ‘Handelsblatt 12/11/2014’, in German entitled ‘Voest-Chef sorgt sich um Standorte in Europa’; (2) ‘Wirtschafts Blatt 02/07/2014 ‘Was wär, wenn di Voest nicht wär’. An English translation of (2) refers to the fact that the company ‘as a steel and technology group is highly profitable benefits the entire company’[sic]. (3) From an unknown source, the article refers to the company’s 20 years on the stock exchange. (4) Press release from the opponent dated 23/01/2015 referring to the ‘Global player’ in railway and turnout technology. (5) Press release dated 20/11/2013 entitled ‘voestalpine attracts interest with its unexpected brand platform. The remaining articles are all in German

Annex 4: Extract from www.forbes.com showing that ‘voestalpine’ is at number 938 (out of 2000) as of May 2015 and is a ‘steel technology company’.  Certificate from ‘Forbes’ for a ‘Superbrands business Austria 2015-2016’. There is also a supporting article concerning the opponent company.

Assessment of the evidence

The evidence is not convincing for the reasons sets forth.  Exhibit A, Annex 1 and most of Annex 3 emanate from the opponent itself and are of a low probative value due to their lack of independence and impartiality. Moreover, the presentation document clearly concerns the opponent company (its name being Voestalpine, formerly Voest), as evident from wording such as ‘voestalpine Group presentation’ and effectively the entire contents revolve around the company itself.

It is true that the contents of the statement should be verified against the remaining evidence but in any case, the Opposition Division undertakes an overall assessment of all the pieces of evidence in combination with each other to see whether or not they are indicative of reputation. As will be seen below, however, the Opposition Division finds that the opponent has not succeeded in proving this claim.

As to the surveys provided, these have been carried out by a company named ‘GFK’ on behalf of the opponent. Nonetheless, there is no information, for example about the position the earlier mark occupies on the market in relation to competitors’ goods or services. Moreover there is no information, at least not in English, concerning those interviewed (sex, age, occupation and background) to evaluate whether the results of the survey are representative of the relevant public. The probative value of market surveys is determined by the status and degree of independence of the entity conducting them, by the relevance and accuracy of the information provided and by the reliability of the method used. The information from the surveys is deficient in several ways; there is no mention of the goods and services, the online survey method is also dubious. Indeed, the Opposition Division notes that the evidence refers to the company. Though, depending on the circumstances, the use of a sign as a business or company name can also be regarded as trade mark use there must be a clear link to the goods and services, see in this vein, judgment of 11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21-23. Whilst a trade mark allows goods and services to be distinguished, a company name designates a business. The evidence does not relate to a trade mark but a company name and if there were any doubt, the evidence is also flawed as concerns the relevant goods and services and there is an absence of information in this regard.

Indeed, the only truly independent and reliable evidence that could support the opponent’s contention is Annex 4 but even this is seriously flawed. Firstly the accompanying write-up merely describes the company, not the trade mark; secondly, the ranking is not particularly high and thirdly, there is no information on how these awards are made or what criteria is used to determine the ranking and certification.

As mentioned above, an overall assessment of the evidence does not allow a solid conclusion to be reached. There is no concrete information on the market share, and even if from the surveys there is some kind of purported awareness it is rather abstract, the circumstances in which the surveys have been carried out are unclear. More importantly, the evidence refers to the company rather than the trade mark and as a whole the documentation is generally of a low probative value due to the lack of impartial information. Even if the ‘Superbrands’ information is independent there is an absence of any details that explain how the ranking and certification was awarded. Whilst it is true that the Annual Reports have an increased probative value when circulated to clients and other interested circles, the Opposition Division is not in a position to be able to determine whether or not this is the case because the opponent has not provided the necessary information. Further, there are still important deficiencies in the evidence when taken as a whole due to the company rather than trade mark focus.

Reputation requires recognition of the mark by a significant part of the relevant public. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or does not contain an element descriptive of the goods or services for which it has been registered; the market share held by the mark; how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (see, to that effect, 22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22).

Furthermore, it must be recalled that, as follows from Article 76(1) EUTMR, in inter partes proceedings the Office is restricted in its examination to the acts, evidence and arguments submitted by the parties. Therefore, in assessing whether the earlier mark enjoys reputation, the Office may neither take into account facts known to it as a result of its own private knowledge of the market, nor conduct an ex officio investigation, but should base its findings exclusively on the information and evidence submitted by the opponent. The evidence must be clear, convincing and ultimately reveal facts necessary to safely conclude that the mark is known by a significant part of the public (decision of the Boards of Appeal of 06/11/2014, R 0437/2014-1, SALSA/SALSA (fig.) et al.).

Under the circumstances described above and in the absence of any independent and objective evidence that would enable the Opposition Division to draw solid conclusions about the degree of recognition of the earlier mark by the relevant public at the relevant date, the market share held by the mark, the position it occupies in the market in relation to competitors’ goods and services, the duration, extent and geographical area of use or the extent to which it has been promoted, it is concluded that the evidence does not show the degree of recognition of the trade mark by the relevant public. Under these circumstances, the Opposition Division finds that the opponent failed to prove that its trade mark has a reputation.

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

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the holder in the course of these proceedings.

According to Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, the costs to be paid to the holder are the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Lucinda CARNEY

Vanessa PAGE

Richard BIANCHI

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and will be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.