OPPOSITION No B 2 732 009

Big Bang, trgovina in storitve, d.o.o., Šmartinska cesta 152, 1000 Ljubljana, Slovenia (opponent), represented by Marjan Delić, Grajska ulica 3, 3210 Slovenske Konjice, Slovenia (professional representative)

a g a i n s t

Aemin Human Capital, Calle Lucano 50 – 4º B, 28022 Madrid, Spain (applicant), represented by José Luis Donoso Romero, Avenida Isabel de Farnesio 30 A, 28660 Boadilla del Monte (Madrid), Spain (professional representative).

On 20/07/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 732 009 is partially upheld, namely for the following contested services:

Class 35: Commercial trading and consumer information services; business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises; recruitment consultants in the financial services field; financial marketing; advertising services relating to financial services.

Class 41: Arranging of contests; arranging of competitions via the internet; arranging of competitions for education or entertainment; organisation of competitions and awards; organisation of quizzes, games and competitions; coaching relating to finance; educational courses relating to finance; adult education services relating to finance; education, entertainment and sports; publishing and reporting.

2.        European Union trade mark application No 15 287 873 is rejected for all the above services. It may proceed for the remaining services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 15 287 873. The opposition is based on Slovenian trade mark registrations No 201 570 572 and No 200 871 942 and international trade mark registration No 1 028 069 designating Austria, Croatia, Germany and Italy. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION – INTERNATIONAL TRADE MARK REGISTRATION No 1 028 069 DESIGNATING AUSTRIA, CROATIA, GERMANY AND ITALY

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

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

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

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

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

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

On 15/07/2016, 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 20/11/2016.

The opponent did not submit any evidence concerning the substantiation of the above mentioned earlier trade mark.

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

The opposition must therefore be rejected as unfounded, as far as it is based on international trade mark registration No 1 028 069.

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 Slovenian trade mark registration No 201 570 572.

1. The goods and services

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

Class 7: Clippers [machines]; cutters [machines]; sharpening machines; shearing machines (hand-operated -); electric knives; bread cutting machines; electrical coffee grinders; mills and crushing machines; fruit presses, electric, for household purposes; electric kitchen tools; power operated tools; kitchen machines (electric -) for food preparation [other than cooking]; electric kitchen appliances for chopping, mixing, pressing; meat cutters [electric machines] for household use; power-operated meat mincers; garlic presses (electric -); kitchen machines, electric; mixers [machines]; kitchen grinders, electric; electric can openers; electric hand-held drills; drilling machines; beaters, electric; grain driers; electrical beaters for carpets; carpet shampooing (machines and apparatus for -), electric; wet vacuum cleaners; wet and dry vacuum cleaners; beverage preparation machines, electromechanical; electric mixers for household purposes; water heaters [parts of machines]; ironing machines; parquet wax-polishers, electric; corn and grain husking machines; filtering machines; dust exhausting installations for cleaning purposes; electric vacuum cleaners; robotic cleaning [vacuuming] machines for floors; vacuum cleaners for cars; vacuum cleaner attachments for disseminating perfumes and disinfectants; hoses for vacuum cleaners; suction nozzles for vacuum cleaners; brushes for vacuum cleaners; vacuum cleaner bags; washing machines incorporating drying facilities; dish washing machines for household purposes; ink jet printing machines; vacuum cleaners; cartridges for filtering machines; filters [parts of machines or engines]; portable filtration units [machines]; steam cleaning machines; multi-purpose steam cleaners.

Class 8: Depilation appliances, electric and non-electric; razors; electric shavers; shaving blades; flat irons; electric flat irons; electric hair straightening irons; electric irons for styling hair; electric hair curling irons; hair cutting scissors; electric hair clippers; manual clippers; tongs; nail clippers; hair clippers for personal use, electric and non-electric; food preparation implements, kitchen knives and cutlery; cutlery; table cutlery [knives, forks and spoons]; silver plate [knives, forks and spoons]; canteens of cutlery; disposable tableware [cutlery] made of plastics; knives; table knives; cutlery of precious metals; cutlery for use by children; household knives; kitchen knives; bread knives; bread slicers [hand-operated]; pasta cutters (hand operated -); cake cutters; fruit knives; chef knives; japanese chopping kitchen knives; slaughtering knives; butcher knives; hunting knives; peeling knives; cheese slicers [non-electric]; scaling knives; forks [cutlery]; ladles for wine; crowbars; can openers, non-electric; daggers; scissors for household use; scissors for kitchen use; bread tongs; knife holders; knife sharpeners; sharpening instruments; whetstones [sharpening stones]; files [hand-operated]; nutcrackers; stirrers [hand tools]; decanting liquids (Implements for -) [hand tools]; egg slicers; cherry pitters; hand-operated vegetable shredders; vegetable choppers; implements (hand operated -) for cracking lobsters; socket spanner; hex keys; tommy bars; fire tending implements; screwdrivers; hammers [hand-operated]; pliers; combination pliers; cutting, drilling, grinding, sharpening and surface treatment hand tools.

Class 9: Scientific apparatus and instruments; nautical apparatus and instruments; surveying apparatus and instruments; photographic apparatus and instruments; cinematographic machines and apparatus; optical apparatus and instruments; apparatus and instruments for weighing; measuring apparatus and instruments; signaling apparatus and instruments; checking (supervision) apparatus and instruments; life-saving apparatus and instruments; teaching apparatus and instruments; apparatus and instruments for conducting electricity; apparatus and instruments for switching electricity; apparatus and instruments for transforming electricity; apparatus and instruments for accumulating electricity; apparatus and instruments for regulating electricity; apparatus and instruments for controlling electricity; apparatus for recording sound; apparatus for recording images; sound transmitting apparatus; apparatus for the transmission of images; sound reproduction apparatus; apparatus for the reproduction of images; magnetic data carriers; recording discs; DVD drives; compact disc players; MP3 players; mechanisms for coin operated apparatus; cash registers; calculating machines; data processing equipment; computers; portable computers; tablet computers; printers; keyboards; computer mice; monitors; hard discs; smart card readers; computer components and parts; electric and electronic components; antennas and aerials as components; blank USB flash drives; USB cables; telephone apparatus; cell phones; multifunctional devices which incorporate copier and facsimile functions in the standalone mode; television receivers [tv sets]; picture projectors; amplifiers; preamplifiers; loud speakers; radios; car radios; tape players; computer cabling; coaxial cables; coaxial cable connectors; cables, electric; electronic cables; electric cables and wires; apparatus, instruments and cables for electricity; signal cables for IT, AV and telecommunication; electric cables for the transmission of sounds and images; optical fibres; photographic cameras; tripods for cameras; photographic lenses; memory cards; computer software; downloadable publications; electronic publications, downloadable; weekly publications downloaded in electronic form from the internet; computer software, recorded; computer programs [downloadable software]; computer software applications, downloadable; games software; joy sticks; computer databases; CD roms; exposed film; alarms; batteries; chargers for electric batteries; thermometers; stress gauges.

Class 11: Lighting apparatus; apparatus for steam generating; cooking apparatus and installations; kitchen ranges [ovens]; cooking rings; grill heating plates; electric toaster ovens; refrigerators; desiccating apparatus; dehumidifiers; ventilation [air-conditioning] installations and apparatus; HVAC systems (heating, ventilation and air conditioning); beverage-cooling apparatus; electric cooking utensils; electric lamps; coffee percolators, electric; electric fans for personal use; waffle irons, electric; deep fryer, electric; burners; apparatus for heating; heating elements; microwave ovens [cooking apparatus]; ovens; water softening apparatus and installations; refrigerating appliances and installations; cooling apparatus; ionization apparatus for the treatment of air or water; toasters; hot air ovens; ice making machines; hair driers [dryers]; electric hand drying apparatus for washrooms; laundry dryers, electric; plate warmers; ventilation hoods; roasting spits; barbecue grills; roasting devices; water filtering apparatus; filters for drinking water; filters for water purifiers; air filters; filters for air conditioning; dust filters; steam generating apparatus; steam sterilizers; steamers (fabric -); water conduits installations; sanitary and bathroom installations and plumbing fixtures; light bulbs; LED light bulbs.

Class 15: Musical instruments; musical accessories; keyboard instruments; string instruments; woodwind instruments; percussion instruments; brass instruments; electric and electronic musical instruments; musical instruments controlled by computer; guitars; acoustic guitars; bass guitars; electric guitars; guitar strings; violas; violins; cellos; harpsichords; cymbals; zithers; bass drums; drumsticks; basses [musical instruments]; drums [musical instruments]; electric keyboards [musical instruments]; pianos; piano strings; keyboards for musical instruments; accordions; organs; harmonicas; electronic organs; chimes [musical instruments]; double basses; whistles [musical instruments]; bagpipes; flutes; trombones; saxophones; clarions; gongs; harps; clarinets; xylophones; barrel organs; lyres; mandolins; electronic musical apparatus for practice; electronic rhythm machines; electronic synthesizers; electronic apparatus for synthesising music [musical instrument]; picks for stringed instruments; reeds; music rests for musical instruments; music stands; conductors' batons; musical boxes; tuning forks; musical instruments for children; cases for musical instruments; tuning apparatus for musical instruments.

Class 16: Sheet music in printed form; music note books; printed publications; periodicals; promotional publications; educational publications; magazines [periodicals]; catalogues; newspapers; books; pamphlets; jotters; prospectuses; reference books; scrap books; comics; almanacs; textbooks; calendars; posters; manuals for instructional purposes; forms, printed; printed invitations; printed tickets; printed menus; printed advertisements; printed guides; maps; geographical maps; writing utensils; stationery and educational supplies; school supplies [stationery]; pictures; paintings [pictures], framed or unframed; post cards; paper; cardboard; printed matter; bookbinding material; photographs; stationery; glue for stationery or household use; artists' materials; paint brushes; typewriters; office requisites, except furniture; instructional and teaching material (except apparatus); plastic materials for packaging; type [numerals and letters]; printing blocks; folders for papers.

Class 35: Department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; retail services in relation to musical instruments; retail services in relation to recorded content; retail services in relation to hygienic implements for humans; retail services in relation to beauty implements for humans; retail services in relation to toiletries; retail services in relation to stationery supplies; retail services in relation to educational supplies; retail services in relation to art materials; retail services in relation to lighting; retail services in relation to heaters; retail services in relation to refrigerating equipment; retail services in relation to freezing equipment; retail services in relation to bags; retail services in relation to printed matter; retail services in relation to cookware; retail services in relation to food cooking equipment; retail services in relation to tableware; retail services in relation to cleaning preparations; retail services in relation to games; retail services in relation to furnishings; retail services in relation to sanitation equipment; retail services in relation to sporting equipment; retail services in relation to toys; retail services in relation to festive decorations; retail services in relation to alcoholic beverages (except beer); retail services in relation to non-alcoholic beverages; retail services relating to food; retail services in relation to articles for use with tobacco; retail services in relation to time instruments; advertising; word processing; direct mail advertising services; radio advertising; production of television commercials; on-line advertising on computer networks; marketing services; direct marketing; conducting market surveys; rental of advertising space; rental of advertising time on communication media; rental of publicity material; outdoor advertising; news clipping services; data search in computer files for others; dissemination of advertisements; duplication of documents; systematization of data in computer databases; public relations; computerised file management; business management; business administration; clerical services; secretarial services; conducting public opinion polls; window display arrangement services; distribution of samples for publicity purposes; organization of fairs for commercial and advertising purposes; organizing exhibitions for commercial or advertising purposes; business merchandising display services; import and export services.

Class 40: Printing, and photographic and cinematographic development; photographic developing; photographic duplicating; photogravure; photocomposing services; printing; photographic printing; printing of books; textile printing; T-shirt printing; engraving; air and water conditioning and purification; rental of water filtration units for commercial use; water pollution control; rental of water treatment equipment; waste and/or water treatment services; filtration of liquids; waste processing; recycling services; reclamation of material from waste; waste disposal [treatment of waste]; production of energy; generation of electricity; air purification; purification of gases; providing material treatment information.

Class 41: Education; tuition; entertainment; sporting and cultural activities; entertainer services; training (practical -) [demonstration]; production of video recordings; production of shows; news programme services for radio or television; preparation of radio and television programmes; conferences, exhibitions and seminars; arranging professional workshop and training courses; conducting of courses; vehicle-driving instruction; planning (party -) [entertainment]; academies [education]; providing information about education; publication of texts, other than publicity texts; publication of texts (except advertising texts); organisation of fashion shows for entertainment purposes; orchestra services; audio, film, video and television recording services; publishing services; electronic desktop publishing; layout services other than for advertising purposes; publication of newspapers; publication of periodicals; providing on-line electronic publications, not downloadable; electronic online publication of periodicals and books; online electronic publishing of books and periodicals; publication of printed matter; news reporter services; news reporters services; publication of books; writing of texts [other than publicity texts]; photography; photography services; photographic reporting; translation; gambling; arranging and conducting of seminars.

The contested services are the following:

Class 35: Commercial trading and consumer information services; business assistance, management and administrative services; business analysis, research and information services; advertising, marketing and promotional services; services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises; recruitment consultants in the financial services field; financial marketing; advertising services relating to financial services.

Class 36: Financial information, data, advice and consultancy services; investment services; securities and commodities trading services; financial transfers and transactions, and payment services; investment analysis; financial investment analysis and stock research; financial analysis services relating to investments; financial advice relating to investment; fund investment consultation; real estate investment advice; residential investment advice; capital investment consultation; investment clubs; financial and investment consultancy services; trust investment services; financial investment brokerage; capital investment brokerage; brokerage of financial investments in energy companies; brokerage services relating to mutual funds; investment custody; development of investment portfolios; investment risk assessment services; investment management; management of investments for mutual clubs and societies; valuation services; financial and monetary services, and banking.

Class 41: Arranging of contests; arranging of competitions via the internet; arranging of competitions for education or entertainment; organisation of competitions and awards; organisation of quizzes, games and competitions; coaching relating to finance; educational courses relating to finance; adult education services relating to finance; education, entertainment and sports; publishing and reporting.

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 services to show the relationship of individual services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The applicant argues that the parties have different businesses (the opponent provides audio-video and IT products whereas the applicant offers training in the financial field). The comparison of the goods and services must be based on the wording indicated in the respective lists of goods and services. Any actual or intended use not stipulated in the list of goods and services is not relevant for the comparison since this comparison is part of the assessment of likelihood of confusion in relation to the goods and services on which the opposition is based and directed against; it is not an assessment of actual confusion or infringement (16/06/2010, T-487/08, Kremezin, EU:T:2010:237, § 71).

Contested services in Class 35

Business management services; advertising and marketing services are identically contained in both lists of services in Class 35.

The contested business administrative services are identical to the opponent’s business administration.

The contested business analysis, research and information services; business assistance services are included in the broad category of the opponent’s business management, which consists of providing businesses with the necessary support, including tools and expertise, to acquire, develop and expand market share. Therefore, they are identical.

The contested promotional services are intended to promote other companies’ goods or services and are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested services rendered by a franchisor, namely, assistance in the running or management of industrial or commercial enterprises are included in the broad category of the opponent’s business management. Therefore, they are identical 

The contested recruitment consultants in the financial services field are included in the broad category of the opponent’s business administration. Therefore, they are identical.

The contested financial marketing is included in the broad category of the opponent’s marketing. Therefore, they are identical.

The contested advertising services relating to financial services are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested commercial trading and consumer information services are considered business support activities including the processing of orders, advisory services and the arrangement of commercial contracts for example. These services have relevant points of contact with the opponent’s business management as they are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants who give assistance and information in this regard. Both sets of services may derive from the same undertakings and be aimed at the same consumers, meaning also a match in distribution channels. Therefore, the services under comparison are similar.

Contested services in Class 36

The contested financial information, data, advice and consultancy services; investment services; securities and commodities trading services; financial transfers and transactions, and payment services; investment analysis; financial investment analysis and stock research; financial analysis services relating to investments; financial advice relating to investment; fund investment consultation; real estate investment advice; residential investment advice; capital investment consultation; investment clubs; financial and investment consultancy services; trust investment services; financial investment brokerage; capital investment brokerage; brokerage of financial investments in energy companies; brokerage services relating to mutual funds; investment custody; development of investment portfolios; investment risk assessment services; investment management; management of investments for mutual clubs and societies; valuation services; financial and monetary services, and banking are financial and monetary services. They are not similar to the opponent’s goods and services in Classes 7, 8, 9, 11, 15, 16, 35, 40 and 41. These goods and services have different natures, purposes, distribution channels and they are neither complementary nor in competition. Therefore in the absence of an obvious similarity with the goods and services of the opponent and since no argument has been submitted by the parties, it cannot but be concluded that the applicant’s services in class 36 are not similar to the opponent’s goods and services.

Contested services in Class 41

The contested arranging of contests; arranging of competitions via the internet; organisation of competitions and awards; organisation of quizzes, games and competitions are included in the broad category of the opponent’s entertainment. Therefore, they are identical.

The contested arranging of competitions for education or entertainment is included in the broad category of the opponent’s entertainment or education. Therefore, they are identical.

The contested coaching relating to finance; educational courses relating to finance; adult education services relating to finance are included in the broad category of  the opponent’s education. Therefore, they are identical.

Education, entertainment and sports; publishing are identically contained in both lists of services in Class 41 (including synonyms).

The contested reporting includes, as a broader category, the opponent’s photographic reporting. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

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 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 degree of attention may vary from average (for some services in Class 41 such as sports, reporting) to higher than average (for the services in Class 35 given their importance for the smooth running of a business and for some educational services in Class 41 given their impact on personal development).

3. The signs

BIG BANG
Earlier trade mark	Contested sign

The relevant territory is Slovenia.

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

The earlier mark is the word mark ‘BIG BANG’. Even though for a large part of the public this expression has no meaning, it cannot be excluded that at least part of the public will perceive it as referring to the cosmic explosion that is hypothesized to have marked the origin of the universe. In any case, since it has no meaning in relation to the relevant services, it is distinctive to an average degree.

The contested sign consists in a blue circle containing the verbal elements ‘BIG BANG TRADING’ in white, written in three lines, and the stylised profile of an eagle, also in white. The word ‘TRADING’ will be understood by part of the public, such as the professional public, as referring to the activity of buying and selling goods and services. Therefore, in relation to the relevant services, it is less distinctive than the expression ‘BIG BANG’. For the consumers for whom it has no meaning, it is distinctive in the same way as the expression ‘BIG BANG’. Concerning the figurative elements of the sign, it should be taken into account 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 (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

The signs have no elements that could be considered clearly more dominant (eye-catching) than other elements.

Visually, the signs coincide in the distinctive element ‘BIG BANG’ which constitutes the entirety of the earlier mark and the beginning of the verbal element of the contested sign. This is particularly relevant since 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 and from top to bottom, which makes the part placed at the left/top of the sign (the initial part) the one that first catches the attention of the reader. The signs differ in the additional verbal and figurative elements of the contested sign as described above. Taking into account the above considerations about the distinctive elements of the signs, the signs are considered visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the element ‛BIG BANG’, present identically in both signs. The pronunciation differs in the sound of the additional element ‛TRADING’ of the contested sign, which has no counterpart in the earlier mark. Taking into account the above considerations about the distinctive elements of the signs and given that the coincidences are placed at the beginning of the contested sign where the attention of the public is focussed on, the signs are considered aurally highly similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For part of the public, both signs share the ‘BIG BANG’ concept and therefore they are conceptually similar to a high degree. For part of the public, since the earlier sign 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 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 claimed that the earlier trade mark enjoys enhanced distinctiveness (is well-known in Slovenia) but did not file any evidence in order to prove such a claim.

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 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.

5. Global assessment, other arguments and conclusion

The contested services are partly identical, partly similar and partly dissimilar to the goods and services of the earlier trade mark. The degree of attention of the public varies from average to higher than average. The signs are visually similar to an average degree, aurally similar to a high degree and for part of the public, they are conceptually similar to a high degree.

The earlier mark ‘BIG BANG’ is reproduced in its entirety at the beginning of the contested sign and can clearly be identified in an isolated manner in the structure of the contested mark. In such a case the overall impression produced by the contested sign may lead the public to believe that the services at issue derive, if not from the same company, at the very least from companies which are linked economically, in which case the likelihood of confusion must be held to be established.

The Opposition Division notes that the concept of likelihood of confusion includes the likelihood of association in the sense that, even if the relevant public does not immediately confuse the signs, it may still believe that identical and similar services come from the same undertaking or at least economically linked undertakings.

Considering all the above and taking into account 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), there is a likelihood of confusion on the part of the public, including a likelihood of association, even considering that the degree of attention with regard to the relevant services may vary from average to higher than average, since even consumers with a higher 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).

Therefore, the opposition is partly well founded on the basis of the opponent’s Slovenian trade mark registration No 201 570 572.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services, namely all the services in Class 36, 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 services cannot be successful.

The opponent has also based its opposition on the Slovenian trade mark registration No 200 871 942 for the figurative mark  for the following goods and services: clippers [machines]; knives, electric; ironing machines; kitchen machines, electric; bread cutting machines; air suction machines; dishwashers; washing machines; cutters [machines]; slicers; meat choppers [machines]; suction machines in Class 7; depilation appliances, electric and non-electric; razors; flat irons, non-electric; can openers; hair clippers for personal use, electric and non-electric; clippers in Class 8; 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; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; sound and images recording carriers in Class 9; apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes in Class 11; musical instruments in Class 15; various advertising, particularly by television, radio and newspapers; advertising with the help of advertising accessories; marketing services; professional, business and organizational project organization; sponsorship in form of advertisements; bill-posting; personnel recruitment; direct mail advertising; publication of publicity texts; outdoor advertising; public relations; internet advertising for others; database services, namely collecting, storing, updating, analysis of data and other information, as well as pictures for others in Class 35.

This other earlier right invoked by the opponent covers goods and services which are clearly different to the remaining services in Class 36 of the contested trade mark. Most of them have already been compared above and all the opponent’s goods and services clearly differ from the contested services in Class 36 since they do not have the same natures, purposes, distribution channels and they are neither complementary nor in competition. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Katarzyna ZANIECKA

Frédérique SULPICE

Martina GALLE

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.