OPPOSITION No B 2 634 296

Acciona, S.A., Avenida de Europa, 18, P.E. La Moraleja, 28100 Alcobendas (Madrid), Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)

a g a i n s t

Shenzhen Senji Electronics Technology Co., Ltd, Unit 3 building B, 1floor A3, element lamp kang lndustrial Zone, Ma mountain community, Guangming, New District Office of Gongming, Shenzhen, People's Republic of China (applicant), represented by Horak Rechtsanwälte, Georgstr. 48, 30159 Hannover, Germany (professional representative).

On 13/04/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 634 296 is partially upheld, namely for the following contested goods and services:

Class 9:                Data processing apparatus; radios; materials for electricity mains [wires, cables]; couplers [data processing equipment]; precision measuring apparatus; acoustic couplers; battery chargers; computer memory devices; connectors [electricity].

Class 35:        Outdoor advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; administration (commercial -) of the licensing of the goods and services of others; marketing; import-export agencies; sponsorship search; personnel recruitment; web site traffic optimization; sales promotion for others.

Class 42:        Technical research; research and development for others; testing (material -); surveying; scientific research; quality control; computer software consultancy; information technology consultancy; design services (packaging -); industrial design.

2.        European Union trade mark application No 14 562 995 is rejected for all the above goods and services. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 562 995. The opposition is based on, inter alia, European Union trade mark registrations No 4 644 704, No 12 654 489 and Spanish trade mark registration No 2 756 473. The opponent invoked Article 8(1)(b) EUTMR for all of them and Article 8(5) EUTMR for European Union trade mark registration No 4 644 704 and Spanish trade mark registration No 2 756 473.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 4 644 704 and No 12 654 489.

1. The goods and services

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

1. European Union trade mark registration No 4 644 704

Class 16:        Paper and goods made from paper, not included in other classes, cardboard and goods made from cardboard, not included in other classes; printed matter; publications (periodicals, magazines or books), bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus), printers' type and printing blocks, plastic materials for packaging (not included in other classes).

Class 35:        Advertising, commercial or industrial management assistance; import-export agencies; sole distribution and commercial representation for building materials, tools, machinery and vehicles of all kinds; commercial retailing of building materials, tools, machinery and vehicles of all kinds; retailing via global computer networks of building materials, tools, machinery and vehicles of all kinds.

Class 36:        Insurance, financial and monetary affairs, banking, real estate affairs.

Class 37:        Building construction, repair, installation services.

Class 39:        Services for the transport, packaging, storage and distribution of all types of goods; travel arrangement.

Class 40:        Material treatment services.

Class 42:        Scientific and technological services and research and design relating thereto; industrial or scientific analysis and research for medical purposes; design and development of computers and software; legal services; consultancy provided by professionals in the chemical field; physicists, engineers, computer technicians; services of engineers.

2. European Union trade mark registration No 12 654 489

Class 7:        Pumps, compressors and fans; moving and handling equipment; agricultural, earthmoving, construction, oil and gas extraction and mining equipment; engines, powertrains, and generic machine parts; dispensing machines; sweeping, cleaning, washing and laundering machines; machines and machine tools for treatment of materials and for manufacturing; robots; generators of electricity; wind-powered electricity generators; wind turbines; generators for wind turbines; turbines for power generation; turbine blades for power generation; hydraulic turbines; waste management and recycling machines; sewage treatment machines; sewage disposal installations; electrical generators using solar cells; reverse osmosis pumps; generating plant.

Class 9:        Navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus, educational apparatus and simulators; optical devices, enhancers and correctors; safety, security, protection and signalling devices; information technology and audiovisual equipment; diving equipment; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers; devices for treatment using electricity; apparatus, instruments and cables for electricity; power regulating apparatus; electric power analyzers; electric power controllers; regulated power supply apparatus; electric power supply sockets; measuring instruments; electric power units; control stations (remote, electric or electronic -); energy control devices; electrical power adaptors; electrical power adaptors; electrical power adaptors; electrical power adaptors; photovoltaic cells; photovoltaics; solar energy collectors for electricity generation; solar modules; electrical receivers; solar batteries; photovoltaic solar modules; water contamination level indicators; repeaters; electrical signalling apparatus.

Class 11:        Heating, ventilating, and air conditioning and purification equipment (ambient); regulating and safety accessories for water and gas installations; filters for industrial and household use; industrial treatment installations; sanitary installations, water supply and sanitation equipment; sewage disposal plants; water purification installations; water purification installations; desalination apparatus; desalination plants; water desalinating apparatus; water purification, desalination and conditioning installations; purification installations for sewage; purification installations for sewage; settler apparatus for sewage; purification installations for sewage; industrial waste water purification plants; transportable instruments for processing sewage; water purification installations; purification installations for sewage; water filters; filters for water purifiers; filters for water purifiers; water treatment filters; water desalinating apparatus utilizing reverse osmosis; solar thermal collectors [heating]; water treatment equipment, namely, reverse osmosis filtration units.

The contested goods and services are the following:

Class 9:        Data processing apparatus; radios; materials for electricity mains [wires, cables]; couplers [data processing equipment]; cell phone straps; precision measuring apparatus; acoustic couplers; battery chargers; computer memory devices; connectors [electricity].

Class 35:        Outdoor advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; administration (commercial -) of the licensing of the goods and services of others; marketing; import-export agencies; sponsorship search; personnel recruitment; web site traffic optimization; sales promotion for others.

Class 42:        Technical research; research and development for others; testing (material -); surveying; scientific research; quality control; computer software consultancy; information technology consultancy; design services (packaging -); industrial design.

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 data processing apparatus; couplers [data processing equipment]; computer memory devices are included in the broad category of information technology equipment in Class 9 of earlier EUTM No 12 654 489. Therefore, they are identical.

The contested radios and acoustic couplers are included in the broad category of audiovisual equipment in Class 9 of earlier EUTM No 12 654 489. Therefore, they are identical.

The contested materials for electricity mains [wires, cables]; battery chargers and connectors [electricity] are included in the broad category of apparatus, instruments and cables for electricity in Class 9 of earlier EUTM No 12 654 489. Therefore, they are identical.

The contested precision measuring apparatus are included in the broad category of, or overlap with, measuring, detecting and monitoring instruments, indicators and controllers in Class 9 of earlier EUTM No 12 654 489. Therefore, they are identical.

The contested cell phone straps are strips of leather or other flexible material, used to carry mobile phones. These very specific goods have no connection with the opponent’s goods and services which are mainly machines and machine tools or motors and engines (except for land vehicles) in Class 7; paper, cardboard and certain goods made of those materials, as well as office requisites in Class 16; different devices including high technology in relation to informatics or electricity in Class 9; installations for heating, steam generating, ventilating, water supply and sanitary purposes in Class 11; advertising, commercial and business management services, import-export services as well as retailing services in Class 35; insurance; financial and monetary affairs, real estate affairs in Class 36; services for the transport of people and goods from one place to another as well as the packaging, storage and distribution of all types of goods in Class 39; material treatment services in Class 40 and services in Class 42 in relation to the theoretical and practical aspects of complex fields of activities provided by members of professions such as chemists, physicists, engineers, computer programmers and technicians. As regards the opponent’s advertising and retailing services, it must be noted that retail services of particular goods are not similar to other specific goods that can be sold at retail. Advertising services are also fundamentally different in nature and purpose from the manufacture of goods. The fact that some goods may appear in advertisements is insufficient for finding similarity. Consequently, these goods and services have different nature, purpose and method of use. They do not coincide in producer/provider and distribution channels. They are neither complementary nor in competition. Therefore, they are considered dissimilar.

Contested services in Class 35

The contested outdoor advertising; presentation of goods on communication media, for retail purposes; on-line advertising on a computer network; marketing; sponsorship search; sales promotion for others are included in the broad category of, or overlap with, advertising in Class 35 of earlier EUTM No 4 644 704. Therefore, they are identical.

The contested administration (commercial -) of the licensing of the goods and services of others are included in the broad category of, or overlap with, commercial or industrial management assistance in Class 35 of earlier EUTM No 4 644 704. Therefore, they are identical.

The contested import-export agencies are identically protected in Class 35 of earlier EUTM No 4 644 704.

The contested personnel recruitment is a core function of human resource management. Recruitment refers to the overall process of attracting, selecting and appointing suitable candidates for jobs (either permanent or temporary) within an organisation. They are at least similar to the commercial […] management assistance in Class 35 of earlier EUTM No 4 644 704 as all those services aim to assist third parties with the operation and administration of their businesses, they belong to the same market sector and they may be provided by the same undertakings.

The contested web site traffic optimization is the process of improving the visibility of a website in search engines. These services must be considered similar to advertising in Class 35 of earlier EUTM No 4 644 704, since they can have the same purpose (to promote goods and services). They can also be provided by the same undertakings and directed at the same end users through the same distribution channels.

Contested services in Class 42

The contested technical research; research and development for others; scientific research are identical to the scientific and technological services and research and design relating thereto in Class 42 of earlier EUTM No 4 644 704, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested testing (material -) is intended to determine the properties of various kinds of material in a variety of areas. These services overlap with the scientific and technological services and research and design relating thereto in Class 42 of earlier EUTM No 4 644 704, which could also include testing processes. The services are considered identical.

The contested information technology consultancy overlap with the consultancy provided by […] computer technicians in Class 42 of earlier EUTM No 4 644 704. Therefore, they are identical.

The contested computer software consultancy is at least similar to the design and development of […] software in Class 42 of earlier EUTM No 4 644 704 because at least they coincide in purpose and end users. They are also complementary.

The contested quality control is a service involving reviewing the quality of all factors involved in a certain process or production, rendered in various fields. Therefore, it is applicable during and after the process of developing and producing a number of goods and services. It could be provided by the same provider and through the same distribution channels as the design and development of computers and software in Class 42 of earlier EUTM No 4 644 704 and could also target the same end user. Therefore, these services are considered similar.

The contested surveying is the technique, profession, and science of determining the terrestrial or three-dimensional position of points and the distances and angles between them. These services are closely related to the broad category of scientific and technological services and research and design relating thereto in Class 42 of earlier EUTM No 4 644 704. These services may coincide in the providers, end users and distribution channels. They are found to be at least similar.

The contested design services (packaging -) are services provided by engineers. Package engineering includes industry-specific aspects of industrial engineering, marketing, materials science, industrial design and logistics. The package must sell and protect the product, while maintaining an efficient, cost-effective process cycle. The contested industrial design is a process of design applied to products that are to be manufactured through techniques of mass production. These services are closely related to the broad category of scientific and technological services and research and design relating thereto in Class 42 of earlier EUTM No 4 644 704. These services may coincide in the providers, end users and distribution channels. They are found to be at least similar.

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 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, the specialised nature, or terms and conditions of the purchased goods and services.

3. The signs

Earlier trade marks	Contested sign

The relevant territory is the European Union.

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.

The element ‘acciona’ is meaningless in certain territories, for example, in those countries where Spanish is not understood. As it cannot be excluded that this Spanish word may be understood by other consumers speaking Romance languages, namely Portuguese−, Italian−, French− and Romanian−speaking parts, the Opposition Division finds it appropriate to focus the comparison of the signs on consumers of the relevant territory who do not speak a Romance language.

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). In this respect it must be mentioned that the earlier marks consist of two elements of comparable size and that none of them has a meaning in relation to the relevant goods and services. As the contested sign is made of only one meaningless and indivisible element, the assessment of its distinctive and dominant components is irrelevant.

Visually, the signs coincide in five out of their seven letters, namely in ‘acci*n*’. The signs have also the same number of letters and, therefore, share a similar structure although the earlier marks contain an additional figurative element in the form of a stylised tree leaf. As regards this figurative element, it must be pointed out that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (judgment of 14/07/2005, T-312/03 Selenium-Ace, EU:T:2005:289, § 37; decisions of 19/12/2011, R 233/2011-4, Best Tone, § 24; and 13/12/2011, R 53/2011-5, Jumbo, § 59). The signs also differ in their fifth and last letters, namely ‘o’ and ‘a’ in the earlier marks versus ‘n’ and ‘o’ in the contested sign. Therefore, the signs are visually similar to an average degree.

Aurally, reference is made to the previous assertions concerning the visual coincidences as the sound of the letters in the signs coincides to the same extent. However, the aural degree of similarity is considered higher, namely above average, because the additional figurative element of the earlier marks is not subject to a phonetic assessment.

Conceptually, although the public in the relevant territory will perceive the meaning of a tree leaf in the earlier marks, as explained above, the other sign has no meaning for the consumers in question. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier 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 earlier EUTM No 12 654 489 is particularly distinctive by virtue of intensive use or reputation as regards the goods and services it protects.

According to the opponent, earlier EUTM No 4 644 704 has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

5. Global assessment, other arguments and conclusion

Article 8(1)(b) EUTMR states that, upon opposition, a EUTM application shall not be registered if because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected; the likelihood of confusion includes the likelihood of association with the earlier trade mark.

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

As has been concluded above, the goods and services, found partly identical or similar and partly dissimilar, are directed at the public at large and/or at professionals, whose level of attention may vary from average to high. Furthermore, the earlier marks have been considered to enjoy a normal degree of distinctiveness and the signs are visually similar to an average degree and aurally similar to an above average degree. Conceptually, the earlier marks convey a meaning not present in the contested sign but this difference lies in a figurative component with less impact than its verbal element.

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). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54).

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 and services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier marks, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public of the European Union speaking other languages than those from the Romance group and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 4 644 704 and No 12 654 489. 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 those of the earlier trade marks.

The contested cell phone straps are dissimilar to the opponent’s goods and services. 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.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier trade marks, there is no need to assess the enhanced degree of distinctiveness of EU registration No 4 644 704 due to its extensive use/reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if this earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing EU registration No 4 644 704 in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• Spanish trade mark registration No 3 501 020 for the figurative mark ;

• Spanish trade mark registration No 2 675 781 for the figurative mark ;

• Spanish trade mark registration No 2 756 473 for the word mark ‘ACCIONA’.

These marks cover a similar scope of goods and services. Although the scope of protection of retail services of the earlier Spanish trade mark No 2 675 781 is broader to the extent that they are not limited to particular goods as it is the case for EUTM No 4 644 704, retailing services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail (see Communication No 7/05 of the President of the Office of 31/10/2005 concerning the registration of European Union trade marks for retail services). Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor necessarily complementary. Therefore, the contested cell phone straps are dissimilar to the opponent’s retailing; retailing via global computer networks in Class 35 and to the other earlier goods and services. As regards hotel services, services of places destined to satisfy individual needs protected by Spanish trade mark registration No 2 756 473, these services are also clearly different from the contested cell phone straps. None of relevant factors relating to the comparison of the goods or services leads to a finding of similarity.

Therefore, the outcome cannot be different with respect to goods for which the opposition has already been rejected. No likelihood of confusion exists with respect to those goods.

For the same reasons explained above, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing Spanish trade mark registration No 2 756 473 in relation to dissimilar goods and services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The Opposition Division will further examine the ground of Article 8(5) EUTMR with respect to the contested cell phone straps for which there is no likelihood of confusion.

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 applicant establishes due cause for the use of the contested trade mark.

The opponent invoked Article 8(5) EUTMR as regards European Union trade mark registration No 4 644 704 and Spanish trade mark registration No 2 756 473.

1. The signs

The contested sign has already been compared above to the earlier figurative sign  under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

As regards Spanish trade mark registration No 2 756 473, reference is also made to the previous comparison with the following differences: This earlier sign consists of the sole word ‘ACCIONA’ without any figurative element. The degree of visual similarity is therefore considered higher, namely above average. It must be pointed out that Spanish consumers understand the distinctive Spanish word ‘acciona’ as the third-person conjugation of ‘operate’, ‘activate’ or ‘actuate’. This term is distinctive as it is not descriptive of the qualities or characteristics of the services for which the opponent has claimed reputation. Therefore, from one side the earlier Spanish word mark has a higher degree of visual similarity but the concept of the word ‘acciona’ for Spanish consumers adds a conceptual difference between the signs.

2. The ‘link’ between the signs

For reasons of procedural economy, the evidence of reputation will not be examined and it will be assumed that the earlier marks enjoy the highest level of reputation for the services for which reputation is claimed by the opponent:

European Union trade mark registration No 4 644 704

Class 37:        Building construction.

Class 42:        Technological services and research and design relating thereto; industrial or scientific analysis; engineers; services of engineers.

Spanish trade mark registration No 2 756 473

Class 42:        Services of engineers or professionals with University education; research services, projects, evaluations and legal and technical reports, services rendered by organizations to their own members.

It must be noted that the translation from Spanish into English provided by the opponent had some imperfections that have been corrected by the Office in order to improve the understanding without any modification of the content.

It has been assessed that the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙        the degree of similarity between the signs;

∙        the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙        the strength of the earlier mark’s reputation;

∙        the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙        the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

When analysing whether a link exists, consideration must be given to the fact that the goods and services in question constitute completely distinct market sectors that have no material overlap and, in essence, have nothing whatsoever in common. The goods and services covered by the trade marks in conflict are of different natures and have different purposes. They have completely divergent distribution channels, target consumers with different needs and are offered by different companies or suppliers. It is unlikely that, when intending to purchase the contested cell phone straps in Class 9, the relevant public will link them to trade marks that have a reputation essentially for construction services, for technological, research and design services, for industrial or scientific analysis, for services of engineers or for legal services.

The goods and services at issue have nothing whatsoever in common and this large gap makes it unlikely that the contested mark would remind the relevant consumer of the earlier marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and 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. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Sandra IBAÑEZ

Benoit VLEMINCQ

Boyana NAYDENOVA

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 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). In this respect it must be mentioned that the earlier mark consists of two elements of comparable size and that none of them has a meaning in relation to the relevant goods and services. As the contested sign is made of only one meaningless and indivisible element, the assessment of its distinctive and dominant components is irrelevant.