ERES | Decision 2829110

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).
On 09/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 829 110 is partially upheld, namely for the following
contested services:
Class 35: Professional business consultancy regarding the energy industry;
Professional business consultancy regarding energy management;
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
energy generation.
Class 42: Engineering consultancy services; Services in the field of energy
management consultancy; Services in the field of building technology
consultancy; Services in the field of environmental technology
consultancy; Electrical engineering services; Engineering services for
others; Engineering feasibility studies; Preparation of technological
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
planning of electronic systems; Design and planning of water
purification installations; Design and planning of control technology;

Decision on Opposition No B 2 829 110 page: 2 of 10
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
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;
Technological analysis relating to energy and power needs of others;
Technical data analysis services; Preparation of technical manuals;
Technical writing; Preparation of engineering drawings; 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.
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
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 services of European Union trade
mark application No 15 843 121 for the word mark ‘ERES’, namely against the
services in Classes 35, 39, 40 and 42. The opposition is based on European Union
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.

Decision on Opposition No B 2 829 110 page: 3 of 10
a) The goods and services
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
reproduction of sound or images; magnetic data carriers, recording
discs; vending machines and mechanisms for coin-operated
apparatus; cash registers, calculating machines, data processing
equipment and computers; fire-extinguishing apparatus; computer
programmes for use in connection with supply of energy and railway
transport; computer programmes for production and distribution of
electricity and electrical energy, including computer programmes for
production and distribution of electricity and electrical energy for
railway transport; computer programmes for energy-saving.
Class 39: Transport; railway transport; distribution of electricity and electrical
energy; distribution of electrical energy for railway transport.
Class 40: Production of electrical energy; production of electrical energy for
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
technological services and research and development relating to
transport, including railway transport; scientific and technological
services and research and development relating to production and
distribution of electrical energy for railway transport; scientific and
technological services and research and development relating to
energy-saving; consultancy in the field of energy-saving; design and
development of computer programmes for production and distribution
of electricity and electrical energy for railway transport; design and
development of computer programmes for energy-saving.
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

Decision on Opposition No B 2 829 110 page: 4 of 10
on behalf of others; Commercial trading and consumer information
services; Business analysis, research and information services;
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
management consultancy; Services in the field of building technology
consultancy; Services in the field of environmental technology
consultancy; Electrical engineering services; Engineering services for
others; Engineering feasibility studies; Preparation of technological
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
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
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;
Technological analysis relating to energy and power needs of others;
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.

Decision on Opposition No B 2 829 110 page: 5 of 10
The term including’, used in the opponent’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).
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.
Contested services in Class 35
The contested professional business consultancy regarding the energy industry;
professional business consultancy regarding energy management; professional
business consultancy regarding environmental technology are similar to the
opponent’s consultancy in the field of energy saving in Class 42. The nature, purpose
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
consumer.
The contested production of market studies relating to the energy sector; production
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.
The contested business analysis, research; business analysis of markets; analysis
and assessment of life cycle costs; preparation of cost-benefit analyses; sector are
similar to the opponent’s industrial analysis and research services in Class 42. The
nature and purpose of these services is similar, that is they are research and/or
analysis services carried out in order to come to conclusions concerning the business
or the industry in question. They may be offered by the same provider and target the
same consumers.
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

Decision on Opposition No B 2 829 110 page: 6 of 10
The contested consultancy regarding energy distribution is similar to the opponent’s
distribution of electricity and electrical energy. The services are complementary and
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
The contested consultancy regarding the generation of electricity; consultancy
regarding the generation of useful energy; consultancy regarding energy generation
is similar to the opponent’s production of electrical energy. The services are
complementary and distribution channels may coincide. They will be offered by the
same companies to the same public.
Contested services in Class 42
The contested engineering consultancy services; services in the field of building
technology consultancy; services in the field of environmental technology
consultancy; electrical engineering services; engineering services for others;
engineering feasibility studies; preparation of technological 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 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
field of environmental engineering; technological consulting services in the field of
alternative energy generation; technological analysis relating to energy and power
needs of others; technical data analysis services; preparation of technical manuals;
technical writing; preparation of engineering drawings; environmental testing;
technical measuring; consultancy regarding alternative energy technologies;
inspection of buildings [surveying] are all technical/technology services. They are
included in the broad category of the opponent’s scientific and technological services
and are therefore identical.
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

Decision on Opposition No B 2 829 110 page: 7 of 10
and planning of water purification installations; design and planning of control
technology all relate to technical design and/or planning services and are included in
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.
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 are
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
energy savings of the services in the field of energy management consultancy, for
example, will mean that these services are chosen with particular care.
c) The signs
ERESS
ERES
Earlier trade mark Contested sign
The relevant territory is the European Union.
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 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
the public such as the English-speaking parts of the public such as the United

Decision on Opposition No B 2 829 110 page: 8 of 10
Kingdom, Ireland and Malta, and the German-speaking parts of the public, such as
Germany and Austria.
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
Conceptually, neither of the signs has a meaning for the public in the relevant
territory. Since a conceptual comparison is not possible, the conceptual aspect does
not influence the assessment of the similarity of the signs.
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.
e) Global assessment, other arguments and conclusion
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.
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’,

Decision on Opposition No B 2 829 110 page: 9 of 10
EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24;
29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).
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.
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the English and German-speaking part of the public and
therefore the opposition is partly well founded on the basis of the opponent’s
European trade mark registration No 10 473 131. As stated above in section c) of this
decision, a likelihood of confusion for only part of the relevant public of the European
Union is sufficient to reject the contested application.
It follows from the above that the contested trade mark must be rejected for the
services found to be identical or similar to those of the earlier trade mark.
The rest of the contested 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 services cannot be successful.
The applicant has not submitted any observations. Therefore, its arguments cannot
be examined.
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 services, both
parties have succeeded on some heads and failed on others. Consequently, each
party has to bear its own costs.

Decision on Opposition No B 2 829 110 page: 10 of 10
The Opposition Division
Renata COTTRELL Lynn BURTCHAELL Martin EBERL
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.

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