OPPOSITION DIVISION
OPPOSITION No B 2 589 805
Kompan A/S, C.F. Tietgens Boulevard 32 C, Over Holluf, 5220 Odense SØ,
Denmark (opponent), represented by Plesner, Amerika Plads 37, 2100 Copenhagen
Ø, Denmark (professional representative)
a g a i n s t
Eldorado A/S, Ole Rømers Vej 31-35, 6100 Haderslev, Denmark (applicant),
represented by LS-IP Loth & Spuhler Intellectual Property Law Partnerschaft
von Rechtsanwälten mbB, Alpha-Haus, Garmischer Strasse 35, 81373 Munich,
Germany (professional representative).
On 14/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 589 805 is partially upheld, namely for the following
contested goods and services:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, and teaching apparatus and instruments;
Apparatus for recording, transmission or reproduction of sound or
images; Magnetic data carriers, recording discs; Cash registers,
calculating machines, data processing equipment, computers.
Class 16: Paper, cardboard and goods made from these materials, namely
flyers, posters, envelopes, writing paper, notepads and notebooks,
labels, exercise books, folders, brochures, magazines, journals,
user guides, leaflets, packaging materials, booklets; Printed matter;
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); Plastic materials for
packaging, included in this class; Printers’ type; Printing blocks.
Class 28: Games and playthings; Gymnastic and sporting articles not included
in other classes; Decorations for Christmas trees; Card games.
Class 35: Retailing and wholesaling of photographic, cinematographic,
measuring, and teaching apparatus and instruments; Retailing and
wholesaling of apparatus for recording, transmission or
reproduction of sound or images, cash registers, calculating
machines, data processing equipment, computers; Retailing and
wholesaling of paper, note pads and books, labels, exercise books,
periodicals, magazines, directions for use, packaging materials,
booklets, printed matter, photographs, stationery, typewriters and
office requisites (except furniture), instructional and teaching
material (except apparatus); Retailing and wholesaling of games
and playthings, gymnastic and sporting articles, playing cards.
Decision on Opposition No B 2 589 805 page: 2 of 12
2. European Union trade mark application No 14 293 881 is rejected for all the
above goods and services. It may proceed for the remaining goods and
services.
3. Each party bears its own costs.
REASONS
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.
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 14 293 881 ‘Companion’, namely against
all the goods and services in Classes 9, 16, 28 and 35. The opposition is based on
Danish trade mark registration No VR 2015 01255 for the word mark ‘KOMPAN’ and
international trade mark registration No 1 268 602 designating the European Union
for the word mark ‘KOMPAN’. The opponent invoked Article 8(1)(b) EUTMR.
SUBSTANTIATION
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 particular, if the opposition is based on a registered trade mark that is not a
European Union trade mark, the opposing party must submit 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
Decision on Opposition No B 2 589 805 page: 3 of 12
emanating from the administration by which the trade mark was registered –
Rule 19(2)(a)(ii) EUTMIR (in the version in force at the time of commencement of the
adversarial part).
In the present case, the notice of opposition was not accompanied by any evidence
as regards earlier international trade mark registration No 1 268 602, on which, inter
alia, the opposition is based.
On 14/10/2015 the opponent was given two months, commencing after the ending of
the cooling-off period, to submit the abovementioned material. This time limit expired
on 19/02/2016.
The opponent did not submit any evidence concerning the substantiation of the
earlier trade mark.
According to Rule 20(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), if until expiry of the period referred to in
Rule 19(1) EUTMIR (in the version in force at the time of commencement of the
adversarial part), 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 right.
In relation to the earlier Danish trade mark registration, the evidence submitted by the
opponent consists of a registration certificate together with a translation into English.
However, the original registration certificate in Danish does not contain the list of
services in Class 35 and contains only an asterisk. Due to this, Class 35 cannot be
taken into account. However, as the translation is acceptable for all other classes, the
opposition can be considered partially founded insofar as it is based on this earlier
mark.
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.
a) The goods and services
The goods on which the opposition is based are the following:
Class 9: Computer software; computer software applications, mobile phones, tablets
and other computer hardware; computer software applications in the form of games
for computers, mobile phones, tablets and other computer hardware; computer
games; computer programs for entertainment; computer software downloadable from
a global computer network; electronic software manuals; electronic games for
Decision on Opposition No B 2 589 805 page: 4 of 12
handheld units for playing video games; electronic games for game consoles; games
downloadable from global computer networks for game consoles and handheld units
for playing video games; measuring rulers.
Class 16: Address books, photographic albums, transfers, appointment books, note
books, drafting rulers, autograph books, baby books, paper bags for special
occasions, rollerball pens, ring binders, book ends, book markers, books, paper gift
wrap bows, cake decorations made of paper, calendars, greeting cards, boxes of
card board or paper, drawings, pen cases, decorative paper centerpieces, chalks,
children’s activity books in the form of exercise booklets, coloring booklets and play
booklets, modeling clay, table cloths of paper, painting and coloring books, comic
strips, paper decorations for special occasions, diaries, gift wrap paper, magazines,
paper hats (for special occasions), periodicals, napkins made of paper, pencils, office
requisites and accessories (not included in other classes) for desks, stickers of paper
and labels of paper; software manuals; instructional and teaching material (except
apparatus), educational books, printed guides.
Class 28: Sports and play facilities (sporting articles and playthings); gymnastic and
sporting articles not included in other classes; multiple sports courts made of wood
and steel (sporting articles and playthings); obstacle courses (sporting articles and
playthings); basketball baskets; goals; play equipment for playgrounds; playground
equipment and play equipment; outdoor play equipment; parts, accessories and
fittings for the aforesaid goods (not included in other classes); play equipment in the
form of play tables, play benches, play towers, play fortresses, play houses, play
ships, play cabins, play castles, play forts, play strongholds, play wagons, play fire
stations, play police stations, play construction sites, play stands, play figures and
playground figures, balance seesaws, balance swings, balance stands, balance
boards, seesaws and swings and frames therefor, spinning racks and spinning
instruments, play and climbing webs, climbing frames, climbing walls, sand boxes,
seesaw animals (equipment for playgrounds), roundabouts (equipment for
playgrounds), horizontal bars (equipment for playgrounds), balance beams
(equipment for playgrounds), soccer goals, sand box tables (equipment for
playgrounds), slides (playthings), scooters (playthings), sand box toys, pedal-
propelled wheeled toy cars, tricycles (playthings), balance bikes (playthings), trailers
(parts for playthings); exercise bicycles; playing cards.
The contested goods and services are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking (supervision), life saving and teaching
apparatus and instruments; Apparatus and instruments for the supply, distribution,
transformation, storage, regulation or control of electric current; Apparatus for
recording, transmission or reproduction of sound or images; Magnetic data carriers,
recording discs; Mechanisms for coin-operated apparatus; Cash registers,
calculating machines, data processing equipment, computers; Fire-extinguishing
apparatus.
Class 16: Paper, cardboard and goods made from these materials, namely flyers,
posters, transparencies, advertising signs, business cards, envelopes, writing paper,
notepads and notebooks, labels, exercise books, folders, brochures, magazines,
journals, user guides, leaflets, packaging materials, booklets; Printed matter;
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);
Plastic materials for packaging, included in this class; Printers’ type; Printing blocks.
Decision on Opposition No B 2 589 805 page: 5 of 12
Class 28: Games and playthings; Gymnastic and sporting articles not included in
other classes; Decorations for Christmas trees; Card games.
Class 35: Advertising; Business management; Business administration; Office
functions; Retailing and wholesaling of 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; Retailing and wholesaling of apparatus for recording, transmission or
reproduction of sound or images, magnetic data carriers, recording discs,
mechanisms for coin-operated apparatus, cash registers, calculating machines, data
processing equipment, computers, fire-extinguishing apparatus; Retailing and
wholesaling of paper, cardboard and goods made from these materials, namely
flyers, posters, placards, transparencies, advertising signs, business cards,
envelopes, writing paper, note pads and books, labels, exercise books, folders,
pamphlets, periodicals, magazines, directions for use, fact sheets, packaging
materials, booklets, printed matter, 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); Retailing and wholesaling of plastic materials for packaging,
printers’ type, printing blocks, leather and imitations of leather, and goods made of
these materials, namely harness, saddlery, saddles, bridles and breastplates for
horses, and parts and fittings for the aforesaid goods; Retailing and wholesaling of
animal skins, hides, trunks and travelling bags, umbrellas and parasols, walking
sticks, whips, harness, horse blankets and riding blankets, textiles and textile goods;
Retailing and wholesaling of bed covers, table covers, clothing, in particular riding
jackets, jodhpurs, riding waistcoats, footwear, in particular half-boots for riding, riding
boots and shoe soles, headgear; Retailing and wholesaling of games and playthings,
gymnastic and sporting articles, decorations for Christmas trees, playing cards,
grains and agricultural, horticultural and forestry products, live animals, fresh fruits
and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt.
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 ‘namely’, used in the applicant’s list of goods and services to show the
relationship of individual goods and services with a broader category, is exclusive
and restricts the scope of protection only to the goods and services specifically listed.
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 photographic, cinematographic, teaching apparatus and instruments;
apparatus for recording, transmission or reproduction of sound or images; cash
registers, calculating machines overlap with the opponent’s computer hardware
(other than tablets). Therefore, they are identical.
The contested measuring apparatus and instruments include as a broader category
the opponent’s measuring rulers. Since the Opposition Division cannot dissect ex
Decision on Opposition No B 2 589 805 page: 6 of 12
officio the broad category of the contested goods, they are considered identical to the
opponent’s goods.
The contested data processing equipment, computers are identical to the opponent’s
tablets and other computer hardware.
The contested magnetic data carriers, recording discs are highly similar to the
opponent’s tablets and other computer hardware. They can have the same
producers, end users and distribution channels. Furthermore, they are
complementary.
The contested scientific, nautical, surveying, optical, weighing, apparatus and
instruments are similar to the opponent’s measuring rulers. They can have the same
end users and distribution channels.
The contested signalling, checking (supervision), life saving apparatus and
instruments; apparatus and instruments for the supply, distribution, transformation,
storage, regulation or control of electric current; mechanisms for coin-operated
apparatus; fire-extinguishing apparatus are dissimilar to the opponent’s goods. They
differ in nature, method of use and purpose. Furthermore, they do not have the same
distribution channels, end users or producers, and they are neither complementary to
nor in competition with each other.
Contested goods in Class 16
The contested printed matter includes as a broader category the opponent’s
magazines. Since the Opposition Division cannot dissect ex officio the broad
category of the contested goods, they are considered identical to the opponent’s
goods.
The contested magazines; office requisites (except furniture); instructional and
teaching material (except apparatus) are identically contained in both lists of goods.
Typewriters are included in the opponent’s broader category of office requisites.
Therefore, they are identical.
The contested labels include as a broader category the opponent’s labels of paper.
Since the Opposition Division cannot dissect ex officio the broad category of the
contested goods, they are considered identical to the opponent’s goods.
The contested exercise books overlap with the opponent’s educational books. Since
the Opposition Division cannot dissect ex officio the broad category of the contested
goods, they are considered identical to the opponent’s goods.
The contested user guides overlap with the opponent’s printed guides. Since the
Opposition Division cannot dissect ex officio the broad category of the contested
goods, they are considered identical to the opponent’s goods.
The contested paper includes as a broader category the opponent’s gift wrap paper.
Since the Opposition Division cannot dissect ex officio the broad category of the
contested goods, they are considered identical to the opponent’s goods.
The contested booklets include as a broader category the opponent’s coloring
booklets and play booklets. Since the Opposition Division cannot dissect ex officio
Decision on Opposition No B 2 589 805 page: 7 of 12
the broad category of the contested goods, they are considered identical to the
opponent’s goods.
The contested notepads and notebooks are identically contained in both lists of
goods (including synonyms).
The contested stationery includes as a broader category the opponent’s pencils.
Since the Opposition Division cannot dissect ex officio the broad category of the
contested goods, they are considered identical to the opponent’s goods.
The contested packaging materials include as a broader category or overlap with the
opponent’s boxes of card board or paper. Since the Opposition Division cannot
dissect ex officio the broad category of the contested goods, they are considered
identical to the opponent’s goods.
The contested bookbinding material includes as a broader category the opponent’s
ring binders. Since the Opposition Division cannot dissect ex officio the broad
category of the contested goods, they are considered identical to the opponent’s
goods.
The contested posters are similar to the opponent’s calendars. They have a similar
nature. Furthermore, they can coincide in distribution channels and commercial
origin.
The contested plastic materials for packaging, included in this class are similar to the
opponent’s boxes of card board or paper. They can have similar purposes.
Furthermore, they can have the same end users and distribution channels.
The contested writing paper, folders, transparencies are similar to the opponent’s
pencils. They can have the same end users, distribution channels and producers.
The contested cardboard is similar to the opponent’s boxes of card board. They can
have the same nature, purpose, distribution channels and end users.
The contested envelopes are similar to the opponent’s paper bags for special
occasions. They have similar purposes. Furthermore, they can have the same
distribution channels and end users.
The contested photographs are similar to the opponent’s photographic albums. They
can have the same commercial origin, relevant public and distribution channels.
Furthermore, they are complementary.
The contested flyers, brochures, leaflets are similar to the opponent’s printed guides.
They can have the same distribution channels, end users and producers.
The contested artists’ materials are similar to the opponent’s modelling clay. They
can have the same distribution channels and end users.
The contested paint brushes are similar to the opponent’s painting and coloring
books. They can have the same distribution channels and end users.
The contested printers’ type; printing blocks are similar to the opponent’s office
requisites. They can have the same producers and distribution channels.
Decision on Opposition No B 2 589 805 page: 8 of 12
The contested adhesives for stationery or household purposes are similar to a low
degree to the opponent’s pencils. They can have the same end users and distribution
channels.
The contested advertising signs; business cards are dissimilar to the opponent’s
goods. They have different natures. Furthermore, they differ in end users and
distribution channels and they are neither complementary nor in competition.
Contested goods in Class 28
Gymnastic and sporting articles not included in other classes are identically
contained in both lists of goods.
The contested playthings include as a broader category the opponent’s tricycles
(playthings). Since the Opposition Division cannot dissect ex officio the broad
category of the contested goods, they are considered identical to the opponent’s
goods.
Games; card games overlap with the opponent’s playing cards. Since the Opposition
Division cannot dissect ex officio the broad category of the contested goods, they are
considered identical to the opponent’s goods.
The contested decorations for Christmas trees are similar to the opponent’s paper
decorations for special occasions. They can have the same end users, distribution
channels and producers.
Contested services in Class 35
Retail services concerning the sale of particular goods are similar to a low degree to
those particular goods. Although the nature, purpose and method of use of these
goods and services are not the same, they have some similarities, as they are
complementary and the services are generally offered in the same places where the
goods are offered for sale. Furthermore, they target the same public.
Therefore, the contested retailing and wholesaling of photographic, cinematographic,
measuring, and teaching apparatus and instruments; retailing and wholesaling of
apparatus for recording, transmission or reproduction of sound or images, cash
registers, calculating machines, data processing equipment, computers; retailing and
wholesaling of paper, note pads and books, labels, exercise books, periodicals,
magazines, directions for use, packaging materials, booklets, printed matter,
photographs, stationery, typewriters and office requisites (except furniture),
instructional and teaching material (except apparatus); retailing and wholesaling of
games and playthings, gymnastic and sporting articles, playing cards are similar to a
low degree to the opponent’s tablets and other computer hardware; measuring
rulers; magazines; office requisites (except furniture); instructional and teaching
material (except apparatus); typewriters; photographic albums; notepads and
notebooks; boxes of card board or paper; pencils; coloring booklets and play
booklets; periodicals; gymnastic and sporting articles not included in other classes;
playing cards.
The contested advertising; business management; business administration; office
functions; retailing and wholesaling of scientific, nautical, surveying, optical,
weighing, signalling, checking (supervision), life-saving, apparatus and instruments
Decision on Opposition No B 2 589 805 page: 9 of 12
for conducting, switching, transforming, accumulating, regulating or controlling
electricity; retailing and wholesaling of magnetic data carriers, recording discs,
mechanisms for coin-operated apparatus, fire-extinguishing apparatus; retailing and
wholesaling of paper, cardboard and goods made from these materials, namely
flyers, posters, placards, transparencies, advertising signs, business cards,
envelopes, writing paper, folders, pamphlets, fact sheets, bookbinding material,
adhesives for stationery or household purposes, artists’ materials, paint brushes,
retailing and wholesaling of plastic materials for packaging, printers’ type, printing
blocks, leather and imitations of leather, and goods made of these materials, namely
harness, saddlery, saddles, bridles and breastplates for horses, and parts and fittings
for the aforesaid goods; retailing and wholesaling of animal skins, hides, trunks and
travelling bags, umbrellas and parasols, walking sticks, whips, harness, horse
blankets and riding blankets, textiles and textile goods; retailing and wholesaling of
bed covers, table covers, clothing, in particular riding jackets, jodhpurs, riding
waistcoats, footwear, in particular half-boots for riding, riding boots and shoe soles,
headgear; retailing and wholesaling of decorations for Christmas trees, grains and
agricultural, horticultural and forestry products, live animals, fresh fruits and
vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt are
dissimilar to the opponent’s goods. 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
products, 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 complementary.
Similarity between retail services of specific goods covered by one mark and specific
goods covered by another mark can only be found where the goods involved in the
retail services and the specific goods covered by the other mark are identical. This
condition is not fulfilled in the present case, since the goods at issue are not identical.
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.
In the present case, the goods and services found to be identical or similar to various
degrees are directed at the public at large as well as at business customers with
specific professional knowledge or expertise.
The degree of attention may vary from average to high depending on the nature of
the goods and services, and whether they are specialised or not.
c) The signs
KOMPAN Companion
Earlier trade mark Contested sign
Decision on Opposition No B 2 589 805 page: 10 of 12
The relevant territory is Denmark.
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).
Both marks are word marks. In the case of word marks, the word as such is
protected, not its written form. Therefore, it is irrelevant whether a word mark is
depicted in lower or upper case letters, or in a combination thereof.
The contested sign, ‘COMPANION’, is the English word for ‘friend or mate’. This
concept will be perceived by the relevant part of the public because it is familiar with
English. As the contested sign is not descriptive, allusive or otherwise weak for the
relevant goods, it is distinctive.
The earlier mark, ‘KOMPAN’, is very similar to the Danish word ‘KUMPAN’, meaning
‘dubious friend or mate’. As the earlier mark is not descriptive, allusive or otherwise
weak for the relevant goods and services, it is distinctive.
The beginnings of the conflicting marks are visually very similar and aurally identical.
Consumers generally tend to focus on the first element of a sign when being
confronted with a trade mark. This is justified by the fact that the public reads from
left to right, which makes the part placed at the left of the sign (the initial part) the one
that first catches the attention of the reader.
Consumers generally tend to focus on the beginning of a sign when they encounter a
trade mark. This is because the public reads from left to right, which makes the part
placed at the left of the sign (the initial part) the one that first catches the attention of
the reader.
Visually, the signs coincide in the letters ‘OMPAN’. However, they differ in the first
letter, ‘K’, of the earlier mark and the letters ‘C*ION’ of the contested sign.
Therefore, the signs are visually similar to an average degree.
Aurally, in Danish the letters ‘C’ and ‘K’ will be pronounced identically. The
pronunciation of the signs coincides in the sound of the letters ‛K/COMPAN’, present
in both signs. The pronunciation differs in the sound of the letters ‛ION’ of the
contested sign.
Therefore, 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. As the signs will be associated with similar
meanings, they are conceptually similar to an average degree.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
Decision on Opposition No B 2 589 805 page: 11 of 12
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 in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) Global assessment, other arguments and conclusion
The goods and services are partly identical, partly similar to various degrees and
partly dissimilar.
The marks are visually, aurally and conceptually similar to an average degree. In
particular, their beginnings are very similar from a visual point of view and identical
from an aural point of view. Conceptually, they will be associated with similar
meanings.
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).
Evaluating likelihood of confusion implies some interdependence between the
relevant factors and, in particular, a similarity between the marks and between the
goods or services. Therefore, a lesser degree of similarity between goods and
services may be offset by a greater degree of similarity between the marks and vice
versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested
mark as a sub-brand, a variation of the earlier mark, 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 and therefore the opposition is partly well founded
on the basis of the opponent’s Danish trade mark registration.
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 various degrees (including
Decision on Opposition No B 2 589 805 page: 12 of 12
those found to be similar to a low degree, because it is considered that the
similarities between the marks are sufficient to compensate for the low degree of
similarity between some of the goods and services) to those of the earlier trade mark.
The rest of the contested goods and services are dissimilar. As similarity of goods
and services is a necessary condition for the application of Article 8(1) EUTMR, the
opposition based on this article and directed at these goods and services cannot be
successful.
COSTS
According to Article 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) 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 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
Birgit FILTENBORG Francesca CANGERI
SERRANO
Erkki MÜNTER
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.