OPPOSITION DIVISION

OPPOSITION No B 2 829 110

Jernbaneverket Bane Energi, Postboks 4350, 2308 Hamar, Norway (opponent),

represented by Gorrissen Federspiel Advokatpartnerselskab, Axeltorv 2, 1609

Copenhagen V, Denmark (professional representative)

a g a i n s t

ERES – Energy & Real Estate Solutions GmbH, Bahnhofstraße 108a, 82166

Gräfelfing, Germany (applicant).

Professional business consultancy regarding environmental

technology; Production of market analyses relating to the energy

sector; Production of market studies relating to the energy sector;

Preparation of cost-benefit analyses; Analysis and assessment of life

cycle costs; Business analysis, research services; Business analysis

of markets.

Class 39: Consultancy regarding energy distribution; Consultancy regarding

alternative energy technologies.

Class 40: Consultancy regarding the generation of electricity; Consultancy

regarding the generation of useful energy; Consultancy regarding

reports; Surveying; Preparation of technical studies; Technical project

studies; Engineering design and consultancy; Technological

consultation services; Research relating to technology; Engineering

services relating to energy supply systems; Engineering services in

the field of energy technology; Engineering services in the field of

building technology; planning and laying out of power plant facilities;

Design and planning of heating installations; Design and planning of

electricity distribution networks; Design and planning of energy

distribution networks; Design and planning of energy distribution

systems; Designing and planning of electrical installations; Design and

consultancy in connection with energy distribution; Consultancy

relating to energy conservation; Consultancy relating to energy

efficiency; Advisory services relating to the use of energy;

Consultancy regarding electrical safety; Consultancy regarding

environmental impact; Consultancy regarding carbon offsetting;

Technical project studies in the field of carbon offsetting; Technical

consulting in the field of environmental engineering; Technological

consulting services in the field of alternative energy generation;

Design and development of regenerative energy generation systems;

Development of energy and power management systems;

Consultancy regarding the use of renewable energy carriers;

Consultancy regarding the efficient use of used energy carriers.

2. European Union trade mark application No 15 843 121 is rejected for all the

above services. It may proceed for the remaining 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

trade mark registration No 10 473 131 for the word mark ‘ERESS’.

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

Class 4: Electrical energy.

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

electricity and electrical energy, including computer programmes for

production and distribution of electricity and electrical energy for

Class 39: Transport; railway transport; distribution of electricity and electrical

railway transport.

Class 42: Scientific and technological services and research and development

relating thereto; industrial analysis and research services; design and

development of computer hardware and computer software for use in

connection with supply of energy and railway transport; scientific and

energy-saving; consultancy in the field of energy-saving; design and

The contested services are the following:

Class 35: Professional business consultancy regarding the energy industry;

Professional business consultancy regarding energy management;

Professional business consultancy regarding building management;

Professional business consultancy regarding environmental

technology; Procurement for others; Professional business risk

management for others; Procurement of contracts [for others];

Brokerage of transactions, for others; Production of market analyses

relating to the energy sector; Production of market studies relating to

the energy sector; Preparation of cost-benefit analyses; Production of

feasibility studies; Analysis and assessment of life cycle costs; Media

buying services; Advisory services relating to the purchase of goods

Project studies for businesses; Business analysis of markets.

Class 39: Consultancy regarding energy distribution; Consultancy regarding

alternative energy technologies.

Class 40: Consultancy regarding the generation of electricity; Consultancy

regarding the generation of useful energy; Consultancy regarding

energy generation.

Class 42: Engineering consultancy services; Services in the field of energy

consultation services; Research relating to technology; Engineering

services relating to energy supply systems; Engineering services in

building technology; planning and laying out of power plant facilities;

Design and planning of heating installations; Design and planning of

distribution networks; Design and planning of energy distribution

planning of electronic systems; Design and planning of water

purification installations; Design and planning of control technology;

Planning and consultancy in the field of lighting technology; Technical

consultancy in connection with energy generation; Technical

consultancy in connection with energy distribution; Consultancy

relating to energy conservation; Consultancy relating to energy

consulting services in the field of alternative energy generation;

Technical data analysis services; Preparation of technical manuals;

Technical writing; Preparation of engineering drawings; Creation of

graphic representations; Auditing relating to energy; Environmental

testing; Inspection of buildings [surveying]; Technical measuring;

Advisory services relating to the use of energy; Consultancy regarding

alternative energy technologies; Consultancy regarding the use of

renewable energy carriers; Consultancy regarding the efficient use of

used energy carriers.

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.

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).

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

professional business consultancy regarding energy management; professional

business consultancy regarding environmental technology are similar to the

and method of use of the services coincide as they are both consultancy services

regarding environmental matters. They may be directed at the same relevant

of market analyses relating to the energy sector are similar to the opponent’s

electrical energy in Class 4. It is common that the companies that provide the

electrical energy also carry out market studies and analyses relating to their sector.

Such studies are directed at the same public often with the objective of promoting the

positive aspects of this type of electrical energy. They are complementary goods and

services and distribution channels may coincide.

analysis services carried out in order to come to conclusions concerning the business

The contested professional business consultancy regarding building management;

procurement for others; professional business risk management for others;

procurement of contracts [for others]; brokerage of transactions, for others;

production of feasibility studies; media buying services; advisory services relating to

the purchase of goods on behalf of others; commercial trading and consumer

information services; business information services; project studies for businesses;

are dissimilar to all of the opponent’s goods and services. They are all business

related services that have no point in common with the opponent’s goods and

services. The goods and services are neither competitive nor are they in competition.

Their nature and purpose differ as does their method of use. They are not directed at

the same public nor are they normally produced/provided by the same companies.

Contested services in Class 39

distribution channels may coincide. They will be offered by the same companies to

the same public.

The contested consultancy regarding alternative energy technologies is similar to

consultancy in the field of energy saving in Class 42. The nature and method of use

of the services coincide as they are both consultancy services regarding energy

matters. They may be directed at the same relevant consumer.

Contested services in Class 40

Contested services in Class 42

technology consultancy; services in the field of environmental technology

consultancy; electrical engineering services; engineering services for others;

preparation of technical studies; technical project studies; engineering design and

engineering services relating to energy supply systems; engineering services in the

field of energy technology; engineering services in the field of building technology;

planning and consultancy in the field of lighting technology; technical consultancy in

connection with energy generation; auditing relating to energy; consultancy regarding

electrical safety; technical consultancy in connection with energy distribution;

technical project studies in the field of carbon offsetting; technical consulting in the

inspection of buildings [surveying] are all technical/technology services. They are

The contested services in the field of energy management consultancy; consultancy

relating to energy conservation; consultancy relating to energy efficiency;

consultancy regarding carbon offsetting advisory services relating to the use of

energy (mentioned twice); consultancy regarding environmental impact; consultancy

regarding the use of renewable energy carriers; consultancy regarding the efficient

use of used energy carriers; are included in or overlap with the opponent’s

consultancy in the field of energy saving. Therefore they are identical.

The contested planning and laying out of power plant facilities; design and planning

of heating installations; design and planning of electricity distribution networks;

design and planning of energy distribution networks; design and planning of energy

distribution systems; design and development of regenerative energy generation

systems; development of energy and power management systems; designing and

planning of electrical installations; design and planning of electronic systems; design

or overlap with the broad category of the opponent’s technological services and

research and development relating thereto. Therefore, they are identical.

The contested creation of graphic representations is dissimilar to all the opponent’s

goods and services. These services are normally offered by graphic design

companies that create logotypes, graphic advertisements, etc. The nature and

purpose of the goods and services differ. They are not complementary, neither are

they in competition. They are not normally produced by the same companies nor are

they directed at the same relevant public.

according to the category of goods or services in question.

specialised goods and services directed at both the general public and at business

customers with specific professional knowledge or expertise.

The degree of attention is considered to be higher than average. The impact on

example, will mean that these services are chosen with particular care.

c) The signs

The unitary character of the European Union trade mark means that an earlier

European Union trade mark can be relied on in opposition proceedings against any

application for registration of a European Union trade mark that would adversely

affect the protection of the first mark, even if only in relation to the perception of

consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,

EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the

relevant public of the European Union is sufficient to reject the contested application.

The common element ‘ERES’ is meaningful in certain territories, for example in those

countries where Spanish is understood. Consequently, the Opposition Division finds it

appropriate to focus the comparison of the signs on the non-Spanish speaking part of

Both signs are word marks, which are protected in all typefaces. Neither ‘ERES’ nor

‘ERESS’ has any meaning in English or German. Therefore the verbal elements of

both marks are distinctive.

Visually and aurally, the contested sign ‘ERES’ is included in its entirety in the

earlier mark. The only difference is the additional letter ‘S’ at the end of the earlier

mark which has only a slight effect on the pronunciation. Therefore, the signs are

visually and aurally similar to a high degree

d) Distinctiveness of the earlier mark

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

economically linked undertakings.

According to the case law of the Court of Justice, in determining the existence of

likelihood of confusion, trade marks have to be compared by making an overall

assessment of the visual, aural and conceptual similarities between the marks. The

comparison ‘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, § 22 et seq.).

Such a global assessment of a likelihood of confusion implies some interdependence

between the relevant factors, and in particular, similarity between the trade marks

and between the goods or services. Accordingly, a greater degree of similarity

between the marks may be offset by a lower degree of similarity between the goods,

and vice versa (see, to that effect, 22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’,

In the present case the signs are visually and aurally similar to a high degree, the

conceptual aspect not influencing the similarity of the signs. The goods and services

are partly identical, partly similar and partly dissimilar.

The contested sign is included in its entirety in the earlier mark. The only

distinguishing feature is the additional ‘S’ at the end of the earlier mark which has

only a slight impact on pronunciation and on the visual aspect. This is insufficient to

rule out a likelihood of confusion among consumers with a higher than average

degree of attention. The similarity clearly outweighs the difference.

Union is sufficient to reject the contested application.

services found to be identical or similar to those of the earlier trade mark.

is a necessary condition for the application of Article 8(1) EUTMR, the opposition

The applicant has not submitted any observations. Therefore, its arguments cannot

be examined.

COSTS

apportionment of costs.

party has to bear its own costs.