OPPOSITION No B 2 727 009

Tronios Group International B.V., Bedrijvenpark Twente 415, 7602 KM Almelo, the Netherlands (opponent), represented by Abcor B.V., Frambozenweg 109/111, 2321 KA Leiden, the Netherlands (professional representative)

a g a i n s t

Robert Del Naja, c/o Sheridans, Seventy Six Wardour Street, London W1F 0UR, the United Kingdom, Andrew Melchior, c/o Sheridans, Seventy Six Wardour Street, London W1F 0UR, the United Kingdom, Marc Picken, c/o Sheridans, Seventy Six Wardour Street, London W1F 0UR, the United Kingdom (applicants), represented by Sheridans, Seventy Six Wardour Street, London W1F 0UR, the United Kingdom (professional representative).

On 19/09/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 727 009 is partially upheld, namely for the following contested goods:

Class 9:        Tapes; cassettes; compact discs; video cassettes; video recorders; CD ROMS; video game software; games software adapted for use with television receivers; computer games software; computer software; video cameras; cameras; photographic and cinematographic apparatus and instruments; apparatus for recording, transmission, reproduction or processing of sound or images, sound mixing decks, magnetic digital or optical data carriers, recording or optical discs, vinyl discs, floppy disks, audio cassettes, video cassettes, compact discs (audio-video), videotapes, audio and video magnetic tapes; CD-ROMs, digital data carriers in particular portable digital data carriers, computer software, computer peripheral devices, equipment for sound processing via computers, electronic cards or circuits adapted for the reproduction of sound; batteries; encoded magnetic cards; video games; application software; application software; computer software; computer games and computer software applications for use on computers, mobile phones, portable media players, handheld computers, and other mobile devices; downloadable interactive multimedia computer programs; downloadable and non-downloadable virtual and digital goods; virtual reality software; game software; computer software for the creation, composition, remixing, processing, editing and recording of sound; optical data media; magnetic data media; compact discs; optical discs; pre-recorded data carriers, including text and images on CD-ROM, CDs, DVD, cassettes, laser disks, hard disks, USB flash drives, optical hard drives and memory cards; computer software for downloading of digital content including applications for handheld devices and PCs; audio mixing apparatus; electronic apparatus for audio and video mixing; computer peripheral apparatus; audio equipment; electric audio playback units with lights and speakers; audio and video tuners; guitar amplifiers; guitar cables; guitar effects processors; digital storage devices, namely blank disks, drives, video tapes, CD-ROMs all for audio and video recording; karaoke machines; digital audio workstations; signal converters; midi controllers, input break-out devices; remix stations; disc jockey equipment; digital music players and recorders; flashdrives; harddrives; internet broadcast equipment; mixing boards; computer control surfaces; net enabled recorders; analog and digital synthesizers; sound reinforcement gear; effects processors; signal enhancers; samplers; drum machines; not including audio speakers.

2.        European Union trade mark application No 14 802 111 is rejected for all the above goods. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against some of the goods of European Union trade mark application No 14 802 111 (figurative), namely against some of the goods in Class 9. The opposition is based on European Union trade mark registration No 13 669 684 ‘FENTON’ (word). The opponent invoked Article 8(1)(b) EUTMR.

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.

1. The goods

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

Class 9: Sound processors; amplifiers; pre-amplifiers; power-amplifiers; receivers; audio video receivers; television, audio/visual, video, sound recording apparatus; sound reproduction and high fidelity audio apparatus and instruments.

Class 11: Professional and consumer lighting/effects apparatus, including apparatus for light/laser light effects for discos; LED lighting; fans adapted for use with light and sound effects; fittings included in this class for the aforesaid lighting and light effects, including cables and plugs.

After two limitations of the list of goods by the applicants and a withdrawal of the opposition with respect to part of the goods, the contested goods are the following:

Class 9: Sound recordings; video recordings; tapes; cassettes; compact discs; films; video cassettes; video recorders; CD ROMS; video game software; games software adapted for use with television receivers; computer games software; computer software; video cameras; cameras; photographic and cinematographic apparatus and instruments; apparatus for recording, transmission, reproduction or processing of sound or images, sound mixing decks, magnetic digital or optical data carriers, recording or optical discs, vinyl discs, floppy disks, audio cassettes, video cassettes, compact discs (audio-video), videotapes, audio and video magnetic tapes; CD-ROMs, digital data carriers in particular portable digital data carriers, computer software, computer peripheral devices, equipment for sound processing via computers, electronic cards or circuits adapted for the reproduction of sound; batteries; encoded magnetic cards; video games; publications in electronic form, typically supplied on-line from databases or from facilities provided on the Internet; DVDs; digital music downloadable from the Internet; digital physical instructional information downloadable from the Internet; downloadable publications; application software; downloadable music sound recordings; downloadable videos; application software; computer software; computer games and computer software applications for use on computers, mobile phones, portable media players, handheld computers, and other mobile devices; downloadable interactive multimedia computer programs; downloadable and non-downloadable virtual and digital goods; virtual reality software; game software; computer software for the creation, composition, remixing, processing, editing and recording of sound; optical data media; magnetic data media; compact discs; optical discs; downloadable image files; audio recordings; text and images stored on electronic data carriers for viewing, downloading, streaming, by means of a global computer network; downloadable publications (eBooks, audio, video and image publications in digital formats); pre-recorded data carriers, including text and images on CD-ROM, CDs, DVD, cassettes, laser disks, hard disks, USB flash drives, optical hard drives and memory cards; computer software for downloading of digital content including applications for handheld devices and PCs; audio mixing apparatus; electronic apparatus for audio and video mixing; computer peripheral apparatus; audio equipment; electric audio playback units with lights and speakers; audio and video tuners; guitar amplifiers; guitar cables; guitar effects processors; digital storage devices, namely blank disks, drives, video tapes, CD-ROMs all for audio and video recording; karaoke machines; digital audio workstations; signal converters; midi controllers, input break-out devices; remix stations; disc jockey equipment; digital music players and recorders; flashdrives; harddrives; internet broadcast equipment; mixing boards; computer control surfaces; net enabled recorders; analog and digital synthesizers; sound reinforcement gear; effects processors; signal enhancers; ringback tones; samplers; drum machines; pre-recorded audio loops, musical sound recordings, musical video recordings, prerecorded downloadable and non-downloadable compact discs and other media, downloadable musical video recording; downloadable musical sound recordings featuring recorded music and recorded video; not including audio speakers.

An interpretation of the wording of the list of goods is required to determine the scope of their protection.

The term ‘in particular’, used in the applicants’ list of goods, indicates that the specific goods 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 (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107). However, the term ‘namely’, used in the applicants’ list of goods to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods.

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.

In their observations dedicated to the comparison of the goods, the applicants state, inter alia, that given the considerable price differences between the goods of the earlier mark and the ones applied for, the level of attention of consumers will be different regarding the different goods, which excludes the likelihood of confusion. It is to be noted in this respect that the price of the compared goods is not a relevant factor for the assessment of whether similarity exists between the goods and services. The Opposition Division would like to point out that while the price of the goods could be considered when assessing whether the goods or services in question are in competition (e.g. 3/10/2012, T-584/10, ECLI:EU:T:2012:518, § 57), the price alone is not of relevance for the comparison of the goods and services.

Moreover, the level of attention of the consumers when selecting a specific product is taken into account as a separate relevant factor, and not as the applicants did – when comparing the goods and services.

Contested goods in Class 9

It should be mentioned at the outset that after a limitation of their list of goods in Class 9, the applicants added to it the general exclusion ‘not including audio speakers’, which should be interpreted as meaning that none of the listed goods includes audio speakers. In the course of the comparison below, this general exclusion has been taken into account but for the sake of greater clarity it has not been reiterated when each of the respective goods has been compared.

The contested video recorders; video cameras; cameras; photographic and cinematographic apparatus and instruments are, or include inter alia, different recoding apparatus. Therefore they are identical to the opponent’s visual, video recording apparatus.

Apparatus for recording, transmission, reproduction or processing of sound or images; audio equipment of the contested mark are broad categories that include among others sound processors; receivers; audio video receivers; television, audio/visual, video, sound recording apparatus; sound reproduction and high fidelity audio apparatus and instruments of the earlier sign. Similarly, computer peripheral devices and computer peripheral apparatus of the contested mark are broad categories that include different types of devices and apparatus that can be connected to the computer but are not part of the computer architecture. Therefore, they include, inter alia, sound reproduction and high fidelity audio apparatus and instruments of the earlier mark (e.g. such as portable media players, which fall under the general category of sound reproduction apparatus). Since the Opposition Division may not ex officio dissect the broad categories of the applicants’ goods, these goods are identical to the above mentioned goods of the opponent.

Guitar amplifiers of the contested sign are included in and therefore identical to amplifiers of the earlier mark. Karaoke machines of the contested sign, being machines that reproduce pre-recorded content and the voice of the singer, are a specific type of a sound reproduction apparatus. Accordingly they are included in and hence identical to the above goods of the opponent’s mark.

Digital music players of the contested sign are included in sound reproduction and high fidelity audio apparatus and instruments of the earlier mark, and digital music recorders of the contested mark are included in sound recording apparatus of the earlier mark. Therefore these goods are identical. 

Net enabled recorders of the contested mark are a specific type of recorders, which are identical to the earlier mark’s television, audio/visual, video, sound recording apparatus, because the two sets of goods are recorders, where each of the sets can have the features of the other one. Accordingly, these goods at least overlap to a certain degree.

Tapes; cassettes; compact discs; video cassettes, CD ROMS (included twice in the list of goods); magnetic digital or optical data carriers, recording or optical discs, vinyl discs, floppy disks, audio cassettes, video cassettes, compact discs (audio-video), videotapes, audio and video magnetic tapes; digital data carriers in particular portable digital data carriers; encoded magnetic cards, DVDs; optical data media; magnetic data media; compact discs; optical discs; digital storage devices, namely blank disks, drives, video tapes, CD-ROMs all for audio and video recording; flashdrives; harddrives of the contested mark are all different types of data carriers. They are highly similar to the opponent’s sound reproduction and high fidelity audio apparatus and instrument. The opponent’s broad category includes different types of sound reproduction apparatus, inter alia, such that use the types of data carriers included in the list of goods of the applicants. This leads to a complementary relationship between them. Further, they share the same relevant public and distribution channels, and often have the same manufacturer.  

The contested video game software; games software adapted for use with television receivers; computer games software; computer software (included three times in the list of goods); application software (included twice in the list of goods); computer games and computer software applications for use on computers, mobile phones, portable media players, handheld computers, and other mobile devices; downloadable interactive multimedia computer programs; virtual reality software; game software; computer software for the creation, composition, remixing, processing, editing and recording of sound; computer software for downloading of digital content including applications for handheld devices and PCs include (i) broad categories of software products (e.g. computer software), which can include, inter alia, software used for recoding of sound and image or for sound reproduction and (ii) specialised software products, such as video games related software and software processing audio content. They are similar to the opponent’s receivers; sound reproduction and high fidelity audio apparatus, which are apparatus for processing of content, which may use software products as an integral and necessary element for their proper functioning. Accordingly, a complementary relationship exists between these goods. Further, they share the same end user and distribution channels and may further coincide in manufacturer (e.g. often the manufacture of specific devices also produces software specifically designated for its devices). The same reasoning applies to video games of the contested sign, which can include among others video games software, and to the contested downloadable and non-downloadable virtual and digital goods, which can include among others software. Hence these goods are considered similar.

Further, pre-recorded data carriers, including text and images on CD-ROM, CDs, DVD, cassettes, laser disks, hard disks, USB flash drives, optical hard drives and memory cards; prerecorded downloadable and non-downloadable compact discs and other media of the opposed trade mark include different types of content, including among others software, recorded on the listed type of carriers. Since the Opposition Division may not dissect ex officio the contested goods, for the reasons explained in the preceding paragraph which may be applied here by analogy, these goods are similar to the opponent’s receivers; sound reproduction and high fidelity audio apparatus.

Batteries of the contested sign are similar to sound reproduction and high fidelity audio apparatus and instruments of the earlier mark. The goods of the latter are a broad category, which includes, inter alia, portable sound reproduction devices, which use batteries to function. Usually the producer of the respective device also produces batteries for it (often the devices are sold in a pack together with a battery). Therefore, the manufacturer of the goods can coincide. Given that the batteries are a part necessary for the device to function, they are in a complementary relationship. These goods also share the same end users and distribution channels.

Sound mixing decks; electronic cards or circuits adapted for the reproduction of sound; equipment for sound processing via computers; audio mixing apparatus; electronic apparatus for audio and video mixing; electric audio playback units with lights and speakers; audio and video tuners; guitar cables; guitar effects processors; digital audio workstations; signal converters; midi controllers, input break-out devices; remix stations; disc jockey equipment; mixing boards; computer control surfaces; analog and digital synthesizers; sound reinforcement gear; effects processors; signal enhancers; samplers; drum machines of the contested sign are specific types of apparatus and equipment used among others for processing, recording and/or reproduction of sound and/or video. Considering they have at least the same end users, distribution channels and manufacturer like some or all of sound processors; receivers; audio video receivers; television, audio/visual, video, sound recording apparatus; sound reproduction and high fidelity audio apparatus and instruments of the earlier mark, these goods are considered at least similar.

Internet broadcast equipment of the contested sign includes any equipment that may broadcast/transmit content (e.g. video or audio) on the internet. Therefore, these goods may have the same producer as any of sound processors of the earlier mark, share the same end users and distribution channels. Therefore these goods are considered similar.

The contested sound recordings; video recordings; films; publications in electronic form, typically supplied on-line from databases or from facilities provided on the Internet; digital music downloadable from the Internet; digital physical instructional information downloadable from the Internet; downloadable publications; downloadable music sound recordings; downloadable videos; downloadable image files; audio recordings; text and images stored on electronic data carriers for viewing, downloading, streaming, by means of a global computer network; downloadable publications (eBooks, audio, video and image publications in digital formats); pre-recorded audio loops, musical sound recordings, musical video recordings, downloadable musical video recording; downloadable musical sound recordings featuring recorded music and recorded video represent different types of media content (e.g. audio, video, text). The opponent contends that these goods are similar to audio video receivers and sound reproduction and high fidelity audio apparatus and instruments of the earlier mark for reasons that they need to be played or displayed on by apparatus designated for such purposes, like the opponent’s apparatus. It is unquestionable that in order to be displayed or used in the designated manner, equipment possessing the necessary functions is needed. Therefore, a complementary relationship between the mentioned goods exists. However, this is not sufficient to reach a conclusion on similarity. Contrary to what the opponent states, the Opposition Division finds that the producers of these goods are clearly distinct, since their manufacture requires very different specialised knowledge, equipment, methods, etc. (e.g. a film production studio or a sound-recording studio that creates films and sound recordings respectively, do not normally produce reproduction apparatus and vice versa). Further, the distribution channels of the compared types of goods are also different, as well as their end users. They do not coincide in any of the rest of the relevant factors. None of the rest of the goods of the earlier mark reveals any similarity to these goods, either. In particular, the goods in Class 11 of the earlier mark are light and sound effect apparatus which do not show any similarity to the contested goods compared in this paragraph above. Accordingly, the contested goods listed in this paragraph are dissimilar to the goods of the earlier mark.

Ringback tones of the contested application are dissimilar to the goods of the opponent. It is true that ringback tones or also ringing tones are recorded content, however this is a specific content designated to be used as a signalling tone in telecommunications, heard by the originator of the call, while the destination terminal is ringing. None of the goods of the earlier mark is related, even remotely, to these goods of the applicants. The goods in Class 9 of the opponent are generally equipment used for recording, receiving, processing and reproducing audio and video content. The goods in Class 11 of the earlier mark are light and sound effect apparatus. Accordingly, none of them shares the same nature, purpose or method of use as those of the contested goods. There is no coincidence in the producer, end users, distribution channels. No competition or complementarity can be established to exist between them, either.

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, part of the goods found to be identical or similar are directed at the public at large, as well as at a professional public possessing specialised knowledge and expertise (e.g. sound reproduction apparatus and instruments) and part – at professionals only (e.g. mixing boards).

The degree of attention when choosing part of the goods may vary from average to high, depending on the specialised nature of the goods, whether they are purchased for professional purposes or not, their price. Thus, depending on the level of sophistication needed, whether they will be used for professional or amateur purposes and therefore – subject to specific requirements for their technical characteristics, the degree of attention when choosing sound reproduction apparatus and instruments could vary from average to high. On the other hand, the goods directed at professional public only (e.g. mixing boards) are goods that are not frequently purchased, often have a higher price and depending on the specific purposes for which they are purchased – should answer specific technical requirements. Therefore the degree of attention when selecting such goods is considered to be higher than the average.

3. The signs

FENTON
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).

Firstly, the applicants have claimed that the word element of the contested sign will be perceived as ‘ATOM’, since the inverted letters will not be seen as part of the word element. The Opposition Division however, does not concur. There is nothing in the way the letters are represented that will lead to consumers disregarding the first and the third letter in this component – all letters are on the same line, written in the same typeface and size, without any space between them. Moreover, consumers will immediately recognise that these are the inverted letters ‘F’ and ‘N’ since they are neither highly stylised nor inverted in a way that makes it impossible or difficult to clearly discern them. Moreover, the word ‘FANTOM’, as is explained immediately below bears a clear meaning for a large part of consumers, which will further prompt the recognition and perception of the inverted letters, as part of the word ‘FANTOM’.  

The element ‘FANTOM’ in the signs is likely to be perceived by the English-speaking part of the public as misspelling of the word ‘phantom’, the latter having the meaning of ‘illusion, unreality; emptiness, vanity; delusion, deception, falsity’ and ‘a thing (usually with human form) that appears to the sight or other sense, but has no material substance; an apparition, a spectre, a ghost.’ (Oxford English Dictionary, available at www.oed.com). Further, due to the presence of an identical or very similar word with the same meaning in most of the rest of the European Union languages (e.g. ‘Phantom’ in German, ‘fantom’ in Polish, Danish, Swedish, Czech, ‘fantôme’ in French), it is very likely that the word is associated with the same meaning by a large part of the relevant public. However, this meaning has no association with the goods rendering the term distinctive as it is for those for whom the term has no meaning.

Contrary to what the applicants claim, in the opinion of the Opposition Division the figurative device with the inverted letter ‘F’, which is of normal degree of distinctiveness with respect to the goods at issue due to an absence of association, is likely to have a lesser importance in the overall perception of the sign. It is true that the relevant public reads from left to right, however the majority of the public will not even see this element as containing/being part of the word elements of the sign as they will merely perceive it as referring to ‘FANTOM’. This fact is actually later confirmed by the applicants, who in their aural comparison of the signs do not even include the letter ‘F’ in the device element in the elements that will be pronounced, in other words they do not interpret it as part of the word elements of the sign. Further, there is nothing original in this figurative element and moreover it uses a quite common technique in branding elements, where the first letter(s) of the word element(s) in a sign is/are also included in a geometrical shape in front of the word(s), thus additionally reinforcing and focusing the attention on the word element(s). Accordingly, the square with the letter ‘F’ in it has a somehow subordinate and dependent role as compared to ‘FANTOM’.

None of the elements of the contested sign is clearly more eye-catching than others, and hence it does not have an element that can be determined as being dominant. The position of the opponent that it is the device element that dominates the visual impression from the sign is therefore not accepted. Even though the device element is a bit bigger in height than the word element, the element ‘FANTOM’ takes at least twice the width of the device element. In order for an element in a sign to be determined as the dominant one, this element should be clearly outstanding when compared to the rest of the components of the sign. Given the proportions of the device element and the word element, they both are equally eye-catching – the first being (only) a bit bigger in height, while the second – longer, thus taking about two thirds of the width of the sign.  

The earlier mark is composed of the single word element ‘FENTON’. It is possible that part of the public recognises in it a male first name or surname. The rest of the public will not associate the word with any meaning. Since the name ‘Fenton’ does not bring any specific associations when perceived in relation to the goods at issue, ‘FENTON’ of the earlier sign has a normal degree of distinctiveness.

Visually, the signs coincide in the letters ‘F*NTO*’, or in other words in four out of six letters, written in the same sequence. As said above, nothing in the depiction of the inverted letters ‘F’ and ‘N’ in the contested sign will prevent consumers from clearly recognising them. Moreover, since the letter ‘N‘ is in the middle of the word, and it is only the inclination of the diagonal line in it that shows it is inverted, it is likely that a significant part of the public will not notice that the letter is inverted. Further, the last letters in the signs, namely ‘M’ and ‘N’ are visually quite close in their manner of representation, and moreover these are the last letters of the signs, which makes it possible that part of the public does not even notice the difference.  

On the other hand, the signs differ in their second and last letters ‘A’ and ‘E’, ‘M’ and ‘N’ respectively, the device element with the letter ‘F’ in the contested sign, and the fact that the letters ‘F’ and ‘N’ in the contested mark are inverted. However, as remarked above this device and letter contained therein are secondary and thus their impact reduced.

When figurative marks with word elements, like the contested one, and word marks, like the earlier one, are compared visually, what matters is whether the signs share a significant number of letters in the same position and whether the word element in the figurative sign is highly stylised. Similarity may be found despite the fact that the letters are graphically portrayed in different typefaces, in italics or bold, in upper or lower case or in colour.

Considering that the signs coincide in four out of six letters in total at least from the point of view of part of the public, that one of the differing letters is the last one, thus subject to less attention by the consumers and that the figurative element and the inversion of part of the letter in the contested sign will have a minor impact on the visual perception of the signs, it is established that the marks have an average degree of visual similarity.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of ‘‘F*NTO*’, present identically in both signs. The pronunciation differs in the sound of the second and sixth letters of the signs, namely the vowels ‘A’ and ‘E’ and the consonants ‘M’ and ‘N’ respectively. Given the closeness in pronunciation of the letters ‘M’ and ‘N’ and the fact that these are the last letters in the signs, it is possible that for part of the public this difference goes unnoticed. The letter ‘F in the square in the contested sign is less likely to be pronounced as consumers will naturally refer to the word in the mark as opposed to a single letter.

Upon taking into account the above considerations, it is considered that the signs are at least similar to an average degree.

Conceptually, the signs are not similar, irrespective of whether the public will perceive one or both of the signs as meaningful. This is because for those who see a meaning in both of them it will be completely different – illusion or ghost as compared to a first or family name. For those who see a meaning in only one of them, again no similarity can be established. Finally, for the part of the public who does not perceive a meaning in any of the signs, a conceptual comparison will be impossible to make.    

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 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.

5. Global assessment, other arguments and conclusion

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).

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).

It has been established that the contested goods are partially identical, partially similar and partially dissimilar to the goods of the earlier mark. The relevant public is composed of the public at large and professional public, and its degree of attention varies from average to high. The earlier mark has a normal degree of distinctiveness with respect to the goods in question. Finally, the signs have been established to be aurally similar to at least to an average degree, visually similar to an average degree and conceptually not similar for part of the public, while for another part of the public conceptual comparison is not possible to make.

In the light of the foregoing, and upon taking into account the interdependence of the relevant factors, a likelihood of confusion is considered to exist with respect to the goods found to be identical or similar. The established similarities between the signs and the goods may not be outweighed by the higher degree of attention of a part of the public, as even consumers who pay a higher attention when purchasing certain goods need to rely on their imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, §  54). Moreover, the differences between the signs are mainly confined to elements of lesser importance for the overall impression created by the signs, such as a figurative device of a not particularly imaginative nature which a large part of the public will take as designed mainly to further focus the attention on the word element of the sign, and the inversion of some letters, which does not at all prevent consumers from recognising the actual letters. As for the difference in some of the letters of the word elements of the signs, as stated above, they are not sufficient to outweigh the similarities, which lead to an overall similarity of the signs.

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

The rest of the contested goods 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 cannot be successful.

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

The Opposition Division

Lucinda Carney

Teodora TSENOVA-PETROVA

Vanesa PAGE

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.