OPPOSITION DIVISION
OPPOSITION No B 2 481 177
Anywind – Energias Renováveis, Lda., Cabril, 3320-011 Cabril Pps, Portugal
(opponent), represented by J. Pereira da Cruz, S.A., Rua Victor Cordon, 14, 1249-
103 Lisboa, Portugal (professional representative)
a g a i n s t
NWind GmbH, Haltenhoffstraße 50, 30167 Hannover, Germany (applicant),
represented by Brandi Rechtsanwälte Partnerschaft mbB, Adenauerallee 12,
30175 Hannover, Germany (professional representative).
On 10/01/2018, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 481 177 is partially upheld, namely for the following
contested goods:
Class 19: Concrete building elements, towers and shuttering; refractory
materials; posts, masts and fences, not of metal; rigid pipes for building;
cladding parts for buildings, all the aforesaid goods included in class 19.
2. European Union trade mark application No 13 225 578 is rejected for all the
above goods. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
Preliminary remark
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
REASONS
The opponent filed an opposition against all the goods and services of European
Union trade mark application No 13 225 578 for the word mark ‘NWind’. The
opposition is based on Portuguese trade mark registrations No 430 884 and
No 515 924, both for the word mark ‘ANYWIND’. The opponent invoked Article 8(1)
(b) EUTMR.
Decision on Opposition No B 2 481 177 page: 2 of 12
SUBSTANTIATION — Portuguese trade mark registration No 430 884
According to Article 76(1) EUTMR (in the version in force at the time of
commencement of the adversarial part, now Article 95(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 submitted 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 (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to submit 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 (in the version in force at the time of
commencement of the adversarial part), within the period referred to above, the
opposing party must also file evidence 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 the notice of opposition filed on 23/02/2015, the opponent identified itself as
‘Anywind – Energias Renováveis, Lda.’. According to the information provided in the
opposition notice form, the opponent identified itself as the owner/co-owner/licensee
of both earlier rights on which the opposition is based. On the same day the
opponent submitted evidence in support of its opposition, including certified copies of
registration from the Portuguese Institute of Industrial Property and translations into
English.
On 11/03/2015, the opponent was given two months, commencing after the ending of
the cooling-off period, to submit further material in order to substantiate the earlier
rights. This was extended at the request of both parties. However, the opponent did
not file any further documents.
According to the evidence submitted, the opponent in the current proceedings is not
the owner of the earlier Portuguese trade mark No 430 884. The owner of the earlier
mark as evidenced by the opponent’s documents is ‘José Alberto Antunes Almeida’,
or ‘José Alberto Nunes Almeida’ according to the translation submitted, which, in
either case, does not coincide with the name of the identified opponent. The Office
was not informed of any transfer of the abovementioned trade mark nor did it receive
evidence thereof, such as a deed of transfer, a copy of the transfer request or any
other evidence showing the change of ownership of the registration. Moreover, it
should be highlighted that the opponent did not claim or show evidence that it was
acting as a licensee or person authorised by the proprietor.
Consequently, the opponent has not shown that it owns, co-owns or acts as licensee
in relation to Portuguese trade mark No 430 884 on which the opposition is based.
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 shall be rejected as unfounded.
Decision on Opposition No B 2 481 177 page: 3 of 12
The opposition must therefore be rejected as unfounded as far as it is based on
Portuguese trade mark No 430 884.
LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR – Portuguese trade
mark registration No 515 924
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.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 7: Machines and machine tools; motors and engines (except for land vehicles);
machine coupling and transmission components (except for land vehicles);
agricultural implements other than hand-operated; incubators for eggs; automatic
vending machines.
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life-saving and teaching
apparatus and instruments; apparatus and instruments for conducting, switching,
transforming, accumulating, regulating or controlling electricity; apparatus for
recording, transmission or reproduction of sound or images; magnetic data carriers,
recording discs; compact discs, dvds and other digital recording media; mechanisms
for coin-operated apparatus; cash registers, calculating machines, data processing
equipment; computers; computer software; fire-extinguishing apparatus.
Class 19: Building materials (non-metallic); non-metallic rigid pipes for building;
asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of
metal.
Class 35: Advertising; business management; business administration; office
functions.
Class 37: Building construction; repair; installation services.
Class 39: Transport; packaging and storage of goods; travel arrangement.
Class 40: Treatment of materials.
Class 42: Scientific and technological services and research and design relating
thereto; industrial analysis and research services; design and development of
computer hardware and software.
The contested goods and services are the following:
Class 7: Power stations, In particular wind energy installations.
Decision on Opposition No B 2 481 177 page: 4 of 12
Class 19: Concrete building elements, towers and shuttering; Refractory materials;
Posts, Masts and Fences, Not of metal; Rigid pipes for building; Cladding parts for
buildings, All the aforesaid goods included in class 19; Components for power
stations, wind energy installations, included in class 19.
Class 35: Professional business and organisational consultancy for businesses in the
field of regenerative energy production, in particular for wind energy installations and
wind farms; Professional business services for businesses in the field of regenerative
energy production, in particular location analysis, logistics, grid connection and mains
operation.
Class 36: Financial planning for wind energy installations and wind farms, financial
consultancy for consultancy in the field of regenerative energy production, in
particular financial planning, leasing, investments and creation of funds; Leasing of
real estate, in particular wind energy installations.
Class 37: Construction of wind energy installations and wind farms; Servicing and
repair of wind energy installations and wind parks.
Class 39: Distribution of energy from renewable sources, In particular wind energy.
Class 40: Generation of energy from renewable energy sources.
Class 42: Technical consultancy in the energy sector relating to wind energy
installations and wind parks; Construction planning and technical planning of wind
energy installations and wind farms; Development of usage concepts for wind energy
installations and wind farms with regard to technical matters (facility management).
An interpretation of the wording of the list of goods and services is required to
determine the scope of protection of these goods and services.
The term ‘in particular’, used in the applicant’s list of goods and services, indicates
that the specific goods and services are only examples of items included in the
category and that protection is not restricted to them. In other words, it introduces a
non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
This is of specific importance in the current case because the applicant in its
observations dated 11/07/2017 believes the term ‘in particular’ concretises the
generic term. The Opposition Division reiterates that it disagrees with the applicant’s
interpretation, and instead views the term ‘in particular’ as stated in the previous
paragraph which is in line with the Nu-Tride decision of the Court, namely that it
introduces a non-exhaustive list of examples.
As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR,
goods or services are not regarded as being similar to or dissimilar from each other
on the ground that they appear in the same or different classes under the Nice
Classification.
The relevant factors relating to the comparison of the goods or services include, inter
alia, the nature and purpose of the goods or services, the distribution channels, the
sales outlets, the producers, the method of use and whether they are in competition
with each other or complementary to each other.
Decision on Opposition No B 2 481 177 page: 5 of 12
Contested goods in Class 7
The contested power stations, in particular wind energy installations refer to industrial
bases or complexes used to generate electricity from some other source of energy,
for example from fossils fuels, from the action of water or wind, or from the
conversion of sunlight.
The opponent’s initial arguments regarding the similarity of goods and services were
limited to the statement: ‘The goods and services applied for are identical or similar
to all the goods and services covered by the earlier trademark registrations’.
However, in its subsequent reply to the applicant’s observations the opponent did
provide further arguments, which in the case of the contested Class 7 goods were:
‘because these installations [the contested power stations] are essentially machines
they are clearly provided for as services for which the Opponent’s mark is intended
for example in Class 37, namely “installation services”’.
The Opposition Division disagrees with this argument. The English word ‘installation’
used in the applicant’s list refers to an industrial facility, base, or complex and in the
opponent’s Class 37 list it refers to the action of setting up or fixing in position for
service or use (machinery, apparatus, or the like); a mechanical apparatus set up or
put in position for use (both definitions taken from the Oxford English Dictionary
online, oed.com). Therefore, the opponent’s Class 37 service refers to the setting up
or fixing in position of some goods, but this is not the meaning of the applicant’s
Class 7 goods. Therefore, these goods and services are dissimilar.
Furthermore, the remaining goods and services of the opponent are also dissimilar. It
is true that some of them, for example building materials in Class 19 may be used in
the final power station, but this is an insufficient link compared to the otherwise very
dissimilar nature, purpose, method of use, origin, end users and distribution
channels. Likewise, other goods and services, for example automatic vending
machines in Class 7 and advertising in Class 35, clearly have no points of contact
whatsoever.
In summary, therefore, the contested goods in Class 7 are dissimilar to all the goods
and services of the opponent.
Contested goods in Class 19
The contested concrete building elements, towers and shuttering; refractory
materials; posts, masts and fences, not of metal; rigid pipes for building; cladding
parts for buildings, all the aforesaid goods included in class 19; components for
power stations, wind energy installations, included in class 19 are included in the
broad category of, or overlap with, the opponent’s Class 19 goods building materials
(non-metallic). Therefore, they are identical.
Contested services in Class 35
The contested professional business and organisational consultancy for businesses
in the field of regenerative energy production, in particular for wind energy
installations and wind farms; professional business services for businesses in the
field of regenerative energy production, in particular location analysis, logistics, grid
connection and mains operation overlap with the broad category of the opponent’s
Class 35 services of business management. Therefore, they are identical.
Decision on Opposition No B 2 481 177 page: 6 of 12
Contested services in Class 36
The contested services in Class 36, namely financial planning for wind energy
installations and wind farms, financial consultancy for consultancy in the field of
regenerative energy production, in particular financial planning, leasing, investments
and creation of funds; leasing of real estate, in particular wind energy installations are
either financial services (financial planning and financial consultancy) linked to
renewable energy or leasing of real estate.
The opponent argues that these contested services are support services to the main
services for which the contested sign is to be registered, namely wind energy
installations. Furthermore, it alleges they are similar to various goods and services of
the earlier mark, namely the construction of wind energy installations services, the
materials used for this purpose and the consultancy or advisory services in respect of
the construction of the aforesaid wind energy installations.
The Opposition Division does not agree with this line of reasoning. Firstly, there is
nothing in an EUTMA that implies ‘main services’; one applies for goods and services
for which protection is sought, and they are treated equally and as specified.
Secondly, the financial and real estate leasing services, of which the financial
services are directed at renewable energy, have a specific nature and are commonly
provided by financial institutions or real estate providers. This is not the same nature
as the opponent’s goods and services, which can be summarised as coming from
producers of building materials, machines, motors, scientific, nautical, surveying,
photographic, cinematographic, optical, weighing, measuring, signalling, checking,
life saving and teaching apparatus, apparatus for use with electricity, apparatus for
use with sound or images, data processing apparatus and software, providers of
advertising services, business management and administration services, office
functions, construction, repair, installation services, transport, packaging, storage,
arranging travel, treatment of materials, scientific, technological and industrial
services and design and development of computer hardware and software. These
producers and providers do not usually provide financial services or lease real estate.
Likewise, these goods and services do not target the same end users via the same
distribution channels and they are neither in competition with one another or
complementary. Furthermore, the opponent provided no evidence to support its
arguments for similarity. Put simply, if a bank provides specific financial services to,
for example clothing manufacturers, this does not make those services similar to
clothing. Therefore, these services are considered dissimilar to the opponent’s goods
and services.
Contested services in Class 37
The contested construction of wind energy installations and wind farms is included in
the broad category of the opponent’s Class 37 services of building construction.
Therefore, they are identical.
Furthermore, the opponent’s repair services and the contested servicing and repair
of wind energy installations and wind parks services coincide in their nature. Their
purpose, in the broadest sense, may also be the same in that they are for
repair/servicing/maintenance. To that extent these services are similar to a low
degree. However, in the absence of an express limitation by the opponent in order to
clarify its services, it cannot be assumed that they coincide in other criteria.
Decision on Opposition No B 2 481 177 page: 7 of 12
Contested services in Class 39
The contested distribution of energy from renewable sources, In particular wind
energy are dissimilar to the opponent’s goods and services. These services are very
specific and regulated electricity distribution services and they are clearly different
from the usual meanings of the opponent’s transport and packaging and storage of
goods in the same class. Equally for all the opponent’s goods and services, they
have different purpose and methods of use. Furthermore, the producers and
providers do not usually provide financial services or lease real estate. Likewise,
these goods and services do not target the same end users via the same distribution
channels and they are neither in competition with one another or complementary.
Therefore, these services are considered dissimilar to all the opponent’s goods and
services.
Contested services in Class 40
The contested generation of energy from renewable energy sources is dissimilar to
the opponent’s goods and services. The opponent’s Class 40 services of treatment
of materials are not the same as producing electrical energy from renewable sources
(for example from the action of water, wind and/or solar). As is clear from the NICE
Classification, the treatment of materials covers services such as treatment of waste
hazards, treatment of plastics, treatment of textiles, etc.; it does not cover the
generation of electricity, which is also a service which is usually highly regulated. The
treatment of materials and the opponent’s other goods and services, do not have the
same nature and they satisfy different needs. They do not have the same origin and
they are usually offered by specialised companies in their corresponding fields.
Furthermore, they are generally offered to different relevant publics through separate
distribution channels. Furthermore, they are neither complementary nor in
competition.
Contested services in Class 42
The opponent’s technological services and research and design relating thereto and
the contested technical consultancy in the energy sector relating to wind energy
installations and wind parks and development of usage concepts for wind energy
installations and wind farms with regard to technical matters (facility management)
services coincide in their nature. Their purpose, in the broadest sense, may also be
the same in that they are for technological, research and design services or the
provision of consultancy on such issues. To that extent these services are similar to a
low degree.
The opponent’s industrial analysis and research services and the contested
construction planning and technical planning of wind energy installations and wind
farms services coincide in their nature. To that extent these services are similar to a
low degree.
b) 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.
Decision on Opposition No B 2 481 177 page: 8 of 12
In the present case, the contested goods and services in Classes 19, 35 and a part
of Class 37 were found to be identical to the opponent’s goods and services, the
services in Class 42 and a part of Class 37 were found to be similar to a low degree
and the goods and services in Classes 7, 36, 39 and 40 were found to be dissimilar.
The goods and services found to be identical or similar to a low degree are directed
in part at the public at large, including professionals, namely the following goods in
Class 19: concrete building elements, towers and shuttering; refractory materials;
posts, masts and fences, not of metal; rigid pipes for building; cladding parts for
buildings, all the aforesaid goods included in class 19. However, the majority of the
goods and services are only directed at professionals with specific knowledge and
expertise, namely components for power stations, wind energy installations, included
in class 19 and all the services in Classes 35, 37 and 42.
The degree of attention varies between average and high for the public at large
depending on the specialisation or sophistication of the specific goods, but is high for
the professionals given the areas covered by the goods and services and the
infrequency of purchase and their price.
c) The signs
ANYWIND NWind
Earlier trade mark Contested sign
The relevant territory is Portugal.
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).
When assessing the similarity of the signs, an analysis of whether the coinciding
components are descriptive, allusive or otherwise weak is carried out to assess the
extent to which these coinciding components have a lesser or greater capacity to
indicate commercial origin. It may be more difficult to establish that the public may be
confused about origin due to similarities that pertain solely to non-distinctive
elements.
Both signs are word marks and in the case of word marks it is the word or words as
such which are protected and not its written form. Consequently, the difference in the
signs under comparison in this regard is immaterial. Furthermore, word marks do not
have dominant elements.
For the general public, the signs will have no meaning, and are, therefore, of normal
distinctiveness.
For the professional public, the English words present in them, namely ‘ANY’ and
‘WIND’, will be understood. This part of the public will understand ‘ANY’ as an
indeterminate derivative of one, or rather of its weakened adjective form a, an, in
which the idea of unity is subordinated to that of indifference as to the particular one
or ones that may be selected, and ‘WIND’ as air in motion; a state of movement in
the air; a current of air, of any degree of force perceptible to the senses, occurring
Decision on Opposition No B 2 481 177 page: 9 of 12
naturally in the atmosphere, usually parallel to the surface of the ground (both
definitions taken from the online Oxford English Dictionary, oed.com).
The earlier sign as a whole will, therefore, be understood as ‘whichever wind’ (given
that it complies with English grammar rules) by this part of the public. As a whole it
has no particular meaning in relation to goods and services. However, the shared
element ‘WIND’ will, as mentioned above, be associated with air in motion; a state of
movement in the air; a current of air, etc. Bearing in mind that some of the goods and
all the services are either directly related to wind energy or more generally related to
renewable energy, this element is weak for these goods and services, namely for
components for power stations, wind energy installations, included in class 19 and all
the services in Classes 35, 37 and 42.
However, for the remaining goods in Class 19, namely concrete building elements,
towers and shuttering; refractory materials; posts, masts and fences, not of metal;
rigid pipes for building; cladding parts for buildings, all the aforesaid goods included
in class 19, ‘WIND’ has no meaning and is, therefore, of normal distinctiveness.
The letter ‘N’ could be understood in many ways, for example it is the chemical
symbol for the element Nitrogen; in mathematics, the set of natural numbers or the
size of a statistical sample; as the symbol for the International Standard for force
called a newton, in electrical systems; the connection to neutral and one of the
cardinal directions of the compass, namely North. There is, however, no clearly
obvious manner in which the relevant consumers will view this element and,
therefore, the Opposition Division will assume that the majority will view it merely as
the letter ‘N’. As such it has no particular meaning with respect to the relevant goods
and services, and is therefore, of normal distinctiveness.
Visually, the signs are similar to the extent that they share the four letter sequence
‘WIND’ which is located at the end of the signs. Furthermore, they both have another
letter ‘N’ although positioned differently in the signs, namely as the second letter in
the earlier mark and the first letter in the contested sign. They differ in the two
additional letters present in the earlier mark, namely the first and third letters, ‘A’ and
‘Y’.
Bearing in mind what has been said about the distinctiveness of the shared element
‘WIND’, for the contested goods and services where it is weak, the signs are visually
similar to a low degree for these goods and services, but for those goods where it is
of normal distinctiveness the signs are visually similar to an average degree.
Aurally, the pronunciation of the earlier sign will be /EH/NI/WIND/ whilst the
contested sign will be pronounced as /AN/WIND/. Therefore, whilst the pronunciation
is the same in the ending syllable /WIND/, it is different in the beginning sounds, with
two syllables in the earlier mark and one different syllable in the contested sign.
Bearing in mind what has been said about the distinctiveness of the shared element
‘WIND’, for the contested goods and services where it is weak, the signs are aurally
similar to a low degree for these goods and service, but for those goods where it is of
normal distinctiveness the signs are aurally similar to an average degree.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. The earlier mark will be understood as referring to
‘whichever wind’ (given that it complies with English grammar rules), whilst the
contested sign has no meaning as a whole. The marks are conceptually similar as far
as they share the word ‘WIND’, although whilst this element is of normal
Decision on Opposition No B 2 481 177 page: 10 of 12
distinctiveness for some goods, it is weak for a part of the goods and services (see
above).
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the goods and services in question from the perspective of the
public in the relevant territory. Therefore, the distinctiveness of the earlier mark must
be seen as normal despite the presence of a weak word for a part of the goods and
services, as stated above in section c) of this decision.
e) Global assessment, other arguments and conclusion
A likelihood of confusion (including a likelihood of association) 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.
A part of the goods and services have been found to be identical, another part is
similar to a low degree and another part is dissimilar.
Firstly, 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 those
goods and service found to be dissimilar, namely goods and services in Classes 7,
36, 39 and 40, cannot be successful.
Secondly, some of the goods and services are directed, inter alia, at the public at
large, namely some of the goods in Class 19, whilst the remaining goods and
services are only directed at professionals. As mentioned in section b) above, the
degree of attention varies between average and high for the public at large, and high
for the professionals.
Thirdly, the signs have been found similar primarily because they share the word
‘WIND’. However, for some of the goods and services the shared word, ‘WIND’ is
weak, namely for components for power stations, wind energy installations, included
in class 19 and all the services in Classes 35, 37 and 42, although it is of normal
distinctiveness for the remaining goods in Class 19, namely concrete building
elements, towers and shuttering; refractory materials; posts, masts and fences, not
of metal; rigid pipes for building; cladding parts for buildings, all the aforesaid goods
included in class 19.
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
Decision on Opposition No B 2 481 177 page: 11 of 12
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).
Those goods which are directed, inter alia, at the public at large, namely concrete
building elements, towers and shuttering; refractory materials; posts, masts and
fences, not of metal; rigid pipes for building; cladding parts for buildings, all the
aforesaid goods included in class 19, are also those goods where the shared word
‘WIND’ is of normal distinctiveness. Furthermore, these goods are identical. For
these goods the differences between the signs are not capable of counteracting the
similarities between them arising from their commonalities, with the result that the
relevant public may believe that the identical goods come from the same undertaking
or economically-linked undertakings.
Consequently, with respect to these goods in Class 19 the Opposition Division finds
that there is a likelihood of confusion on the part of the relevant public and, therefore,
the opposition is partly well-founded on the basis of the opponent’s Portuguese trade
mark registration No 515 924.
However, the remaining goods and services, namely the goods components for
power stations, wind energy installations, included in class 19 and all the services in
Classes 35, 37 and 42, which are in part identical and in part similar to a low degree,
are all only directed at a professional public with a higher degree of awareness, and
the element ‘WIND’ is weak. For these goods and services the distinctive differences
between the signs are sufficient to counteract the similarities between them, with the
result that the relevant public will not believe that even the identical goods come from
the same undertaking or economically-linked undertakings.
Consequently for these goods and services there is no likelihood of confusion.
The opponent refers to previous decisions of the Office to support its arguments.
However, the Office is not bound by its previous decisions, as each case has to be
dealt with separately and with regard to its particularities.
This practice has been fully supported by the General Court, which stated that,
according to settled case-law, the legality of decisions is to be assessed purely with
reference to the EUTMR, and not to the Office’s practice in earlier decisions
(30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).
Even though previous decisions of the Office are not binding, their reasoning and
outcome should still be duly considered when deciding upon a particular case.
The previous cases referred to by the opponent are not relevant to the present
proceedings. This is because in both the previous cases, Opposition Decisions
No B 593 708 of 05/06/2017 and No B 2 485 947 of 18/11/2015, the shared element
is of normal distinctiveness. In the present case, where the shared element is of
normal distinctiveness there is a likelihood of confusion, but where the shared
element is of weak distinctiveness there is no likelihood of confusion, and, therefore,
these previous cases are not relevant.
COSTS
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
Decision on Opposition No B 2 481 177 page: 12 of 12
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 for only some 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
Denitza
STOYANOVA-
VALCHANOVA
Ric
WASLEY
Eva Inés
PÉREZ
SANTONJA
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 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 for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.