OPPOSITION DIVISION

OPPOSITION No B 2 795 675

Félix Safran De Laet, Grote Herstraat 5, 1653 Dworp, Belgium (opponent),

represented by Novagraaf Belgium S.A./N.V., Chaussée de la Hulpe 187, 1170

Bruxelles / Brussel, Belgium (professional representative)

a g a i n s t

Natascha Hagen, Bahngasse 35, 6890 Lustenau, Austria (applicant), represented by

Zeller & Seyfert Partg mbB, Friedrich-Ebert-Anlage 35-37 (Tower 185), 60327

sound recordings; music tapes; music software; coin-operated

musical automata [juke boxes]; musical cassettes; music

headphones; prerecorded music videos; portable music players;

digital music players; downloadable musical sound recordings;

downloadable digital music; downloadable music files; musical

instrument amplifiers; pre-recorded laser discs featuring music;

downloadable video recordings featuring music; tape recordings of

music; cases for music storage devices; covers for music storage

devices; laser discs for use in storing music; audio tapes featuring

music; prerecorded video tapes featuring music; prerecorded audio

electronic musical effects equipment; pick-ups for electrical musical

instruments; musical recordings in the form of discs; electronic

control circuits for electronic musical instruments; prerecorded

music compact discs; digital music downloadable provided from

mp3 internet web sites; electrical amplifiers for use with musical

instruments; electric and electronic effects units for musical

instruments; digital music downloadable provided from the internet;

series of musical sound recordings; computer software for creating

and editing music and sounds; machine readable computer

programs for use in the reproduction of music; integrated circuit

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projection screens; film advancing winders; film lenses; cine

projectors; editing machines for movie films; film recorders; film

cutting apparatus; film reproducing apparatus; film developing

apparatus; film production apparatus; film strip viewers; containers

for films; cinematographic film, exposed; photographic film

[exposed]; motion-picture cameras for self-developing film; films,

exposed; cinematographic films; movie editing projectors; film

recording apparatus; film processing apparatus; pouches for

cinematographic apparatus; sensitized films, exposed; film dryers;

photosensitive media [films, exposed]; recorded content;

information technology and audiovisual equipment; optical devices,

enhancers and correctors; media content; databases (electronic);

recorded data files; exposed slide films; pre-recorded compact

discs; pre-recorded cassettes; data recorded electronically;

telephone ring tones [downloadable]; downloadable ring tones for

mobile phones; sensitized microfilms, exposed; reprographic plates

(sensitised -) [exposed]; magnetic recordings; pre-recorded

compact discs featuring games; recording substrates [optical];

optical disc recordings; recorded tapes; pre-programmed discs;

plates [exposed]; prerecorded cd-roms; prerecorded CD-is;

recorded discs bearing images; recorded tape cassettes; pre-

recorded video compact discs; prerecorded videodiscs; pre-

recorded videos; downloadable image files; computer

documentation in electronic form; e-books; electronic publications,

downloadable; CD-ROMs containing electronic telephone

directories; photographic negatives; downloadable computer

graphics; downloadable printing fonts; downloadable graphics for

mobile phones; downloadable movies; downloadable educational

course materials; downloadable podcasts; printing fonts that can be

newspapers; downloadable templates for designing audiovisual

presentations; holographic images; talking books; podcasts;

interactive DVDs; pre-recorded DVDs featuring games; pre-

recorded audio tapes featuring games; pre-recorded video tapes

featuring games; prerecorded motion picture videos; recorded discs

bearing sound; prerecorded video cassettes featuring cartoons;

multi-media recordings; animated cartoons in the form of

cinematographic films; animated cartoons; weekly publications

Decision on Opposition No B 2 795 675 page: 3 of 25

downloaded in electronic form from the internet; prerecorded

exercise DVDs; prerecorded digital audio tapes; pre-recorded audio

tapes; prerecorded fitness DVDs; video disks with recorded

animated cartoons; video films; video tapes with recorded animated

cartoons; video recordings; USB web keys for automatically

launching pre-programmed website URLs; USB web keys; records

[sound recordings]; audio recordings; audio visual recordings;

training manuals in the form of a computer program; multimedia

software recorded on CD-ROM.

children’s books incorporating an audio component; children’s

activity books; manuals [handbooks]; printed music books; song

books; coffee table books; gift books.

Class 25: Evening wear; evening coats; detachable neckpieces for kimonos

(haneri); bowties; dress pants; suits; evening suits; arm warmers

[clothing]; leather belts [clothing]; clothing made of fur; baby

bodysuits; baby tops; baselayer tops; baselayer bottoms; bandeaux

[clothing]; bandanas [neckerchiefs]; ball gowns; ballet suits;

bathwraps; swimming trunks; boardshorts; bathrobes; trunks;

brassieres; bustiers; teddies [undergarments]; bodies [clothing];

boas [necklets]; blousons; blazers; maillots; bermuda shorts;

lounge pants; boys’ clothing; panties; womens’ outerclothing; ladies’

dresses; ladies’ clothing; women’s suits; coverups; corduroy

trousers; pedal pushers; morning coats; tap pants; leisurewear;

slacks; leisure suits; moisture-wicking sports bras; moisture-wicking

sports shirts; moisture-wicking sports pants; women’s ceremonial

dresses; mittens; masquerade costumes; pleated skirts for formal

kimonos (hakama); athletic tights; skating outfits; waist belts; golf

shorts; golf skirts; golf pants, shirts and skirts; gilets; woven shirts;

ankle socks; bustle holder bands for obi (obiage); waist strings for

kimonos (koshihimo); string fasteners for haori (haori-himo); belts

made out of cloth; belts made from imitation leather; belts

[clothing]; clothing for gymnastics; unitards; culotte skirts; pantsuits;

snowboard trousers; trousers shorts; trousers; men’s underwear;

men’s socks; outerclothing for men; men’s suits; menswear; shirt

fronts; shirt-jacs; shirts; shirt yokes; jogging tops; sweatpants;

jogging sets [clothing]; jerseys [clothing]; denim jackets; denim

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jeans; denims [clothing]; men’s and women’s jackets, coats,

trousers, vests; snowboard jackets; sleeveless jackets; sleeved

jackets; jackets [clothing]; knee warmers [clothing]; knee-high

stockings; walking breeches; pockets for clothing; ready-made

linings [parts of clothing]; dresses made from skins; kimonos; kilts;

khakis; kendo outfits; cashmere scarves; hooded sweatshirts;

hooded pullovers; hoods [clothing]; bodices [lingerie]; caftans; stuff

jackets [clothing]; short-sleeved or long-sleeved t-shirts; ascots;

neckties; costumes; corsets; camisoles; korean topcoats

jackets; short-sleeve shirts; short overcoat for kimono (haori); short

petticoats; short trousers; nighties; coats for men; coats for women;

coats; pelisses; outerclothing for girls; lounging robes; monokinis;

miniskirts; foundation garments; corselets; cuffs; bathing suit cover-

ups; liveries; furs [clothing]; pelerines; party hats [clothing]; parkas;

beach wraps; paper hats [clothing]; overshirts; ear muffs [clothing];

halter tops; dress shirts; chemise tops; hooded tops; cycling tops;

outerclothing; negligees; pop socks; wet suits; ramie shirts; cyclists’

clothing; pajamas (am.); pajama bottoms; slipovers [clothing]; v-

neck sweaters; mock turtleneck sweaters; crew neck sweaters;

ponchos; raincoats; rainwear; rainproof clothing; sash bands for

kimono (obi); tennis sweatbands; sweat bands for the wrist;

sweatbands; shoulder wraps [clothing]; shoulder scarves; snow

pants; cravats; headdresses [veils]; veils [clothing]; nightwear;

sleep masks; pyjamas [from tricot only]; shawls and stoles;

underpants; sliding shorts; skorts; ski balaclavas; clothing for

skiing; ski gloves; snow suits; boy shorts [underwear]; shorts; shirts

and slips; mock turtleneck shirts; adhesive bras; silk scarves; silk

ties; gym suits; sports bras; camiknickers; sunsuits; sundresses;

bralettes; sock suspenders; socks and stockings; socks; dinner

shorts; japanese traditional clothing; folk costumes; tops [clothing];

togas; thermal underwear; theatrical costumes; fabric belts

[clothing]; tennis wear; overcoats; ladies’ underwear; sweat-

absorbent underwear; maternity clothing; shawls; cloaks; neck

scarves; neckerchiefs; kerchiefs [clothing]; tunics; underwear;

chemises; pants; bottoms [clothing]; undershirts; zoot suits; yoga

pants; yoga shirts; woollen socks; hosiery; heavy coats; winter

gloves; suede jackets; weatherproof clothing; vests; reversible

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jackets; gussets [parts of clothing]; clothing; headgear; footwear;

hats; fezzes; fedoras; fascinator hats; shower caps; millinery;

bobble hats; bathing caps; fur hats; earbands; cap peaks; caps

[headwear]; fashion hats; peaked headwear; children’s headwear;

small hats; knot caps; woolly hats; boaters; knitted caps; beach

hats; head sweatbands; headbands [clothing]; sun hats; sports

caps; ski hats; wimples; snoods [scarves]; footwear for women;

bath shoes; ballet slippers; bath slippers; bath sandals; dress

shoes; galoshes; casual footwear; leisure shoes; flip-flops; flat

women’s foldable slippers.

Class 41: Live music performances; music performances; musical education

services; rehearsal [recording] studio services; production of music;

presentation of musical performance; arranging and conducting of

concerts; theatrical performances, music performances; orchestra

services; music publishing and music recording services;

entertainment services performed by a musical group; production of

musical recordings; music composition services; performing of

music and singing; recording of music; entertainer services

videos; animated musical entertainment services; rental of audio

tapes bearing recorded music; music recording studio services;

musical events (arranging of -); entertainment in the form of

recorded music (services providing -); presentation of musical

performances; organisation of musical competitions; musical floor

shows provided at performance venues; music transcription for

others; rendering of musical entertainment by instrumental groups;

rendering of musical entertainment by vocal groups; live band

performances; presentation of live performances by a musical

group; artistic management of musical shows; composition of music

television; rental of phonographic and music recordings; musical

concerts by radio; entertainment services performed by musicians;

providing digital music from mp3 internet web sites; services

providing entertainment in the form of live musical performances;

planning of plays or musical shows; providing on-line music, not

downloadable; providing information in the field of music; post-

production editing services in the field of music, videos and film;

providing online electronic publications in the field of music, not

Decision on Opposition No B 2 795 675 page: 6 of 25

downloadable; entertainment services in the form of musical vocal

group performances; entertainment services in the form of musical

group performances; providing digital music from the internet;

selection and compilation of pre-recorded music for broadcasting

by others; providing digital music [not downloadable] from mp3

internet web sites; providing facilities for movies, shows, plays,

music or educational training; providing information, commentary

and articles in the field of music via computer networks; producing

and conducting exercises for music classes and programmes; film

production; production of cinematographic films; showing of films;

television, radio and film production; production of special effects

for films; film and video tape film production; leasing of motion

picture projectors; recording studio services for films; cinema

presentations; film demonstrations for instructional purposes;

screenplay writing; production of films in studios; film production,

other than advertising films; rental of film negatives; rental of film

positives; conducting of film festivals; lending libraries for films;

cinematographic adaptation and editing; hosting [organising]

awards relating to films; production of films for educational

services; rental of pre-recorded films in the form of discs; rental of

pre-recorded films in the form of video tapes; production of films on

aspects of association football; DVD and CD-ROM film production;

services for the production of entertainment in the form of film;

rental of lighting for use on film sets; rental of cinematographic

machines and apparatus; special effects animation services for film

and video; production of television and cinema films; rental of

lighting apparatus for movie sets or film studios; recording, film,

video and television studio services; facilities for the production of

films (provision of -); provision of non-downloadable films and

books; multimedia publishing of books; rental of books; information

services relating to books; lending of books relating to business

methodology; electronic online publication of periodicals and books;

library services for the exchanging of books; lending of books and

periodicals; on-line publication of electronic books and journals

(non-downloadable); consultation services relating to the

publication of books; publication of periodicals and books in

electronic form; publication of electronic books and periodicals on

Decision on Opposition No B 2 795 675 page: 7 of 25

the internet; lending of books relating to finance; lending of books

and other publications; publication of electronic books and journals

on-line; publication of books relating to entertainment; publication of

books relating to television programmes; lending of books relating

to accounting; publication of books, magazines, almanacs and

journals; entertainment in the nature of fashion shows; organization

of fashion shows for entertainment purposes.

2. European Union trade mark application No 15 578 586 is rejected for all the

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 goods and services of European

Union trade mark application No 15 578 586 for the word mark ‘Frequency’. The

opposition is based on European Union trade mark registration No 13 975 644 for the

goods or services in question, under the assumption that they bear the marks in

question, come from the same undertaking or, as the case may be, from

economically linked undertakings. Whether a likelihood of confusion exists depends

on the appreciation in a global assessment of several factors, which are

interdependent. These factors include the similarity of the signs, the similarity of the

goods and services, the distinctiveness of the earlier mark, the distinctive and

dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

Decision on Opposition No B 2 795 675 page: 8 of 25

Class 41: Entertainment; publishing of books, newspapers, magazines, journals,

The contested goods and services are the following:

Class 9: Musical video recordings; musical instrument connectors; musical sound

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Decision on Opposition No B 2 795 675 page: 16 of 25

film and video devices; information technology and audiovisual equipment; pre-

recorded compact discs; pre-recorded cassettes; magnetic recordings; pre-recorded

compact discs featuring games; recording substrates [optical]; optical disc

recordings; recorded tapes; pre-programmed discs; prerecorded CD-ROMs;

prerecorded CD-is; recorded discs bearing images; recorded tape cassettes; pre-

recorded video compact discs; prerecorded videodiscs; pre-recorded videos; cd-

roms containing electronic telephone directories; interactive DVDs; pre-recorded

dvds featuring games; pre-recorded audio tapes featuring games; pre-recorded

video tapes featuring games; prerecorded motion picture videos; recorded discs

transmission, reproduction of sound or images; media for recording sound, images,

data (CDs, CD-ROMs, DVDs, DVD-ROMs, floppy disks, USB sticks, audio and video

discs and cassettes). Therefore, they are identical.

The contested music software; music-composition software; computer software for

creating and editing music and sounds; machine readable computer programs for

use in the reproduction of music; computer software for processing digital music files;

computer programs for processing digital music files; databases (electronic);

electronic databases recorded on computer media; training manuals in the form of a

computer program; multimedia software recorded on CD-ROM are included in the

The contested musical instrument amplifiers; electrical amplifiers for use with musical

instruments are included in the broad category of the opponent’s amplifiers.

Therefore, they are identical.

The contested docking stations for digital music players; USB web keys for

automatically launching pre-programmed website URLs; USB web keys are included

in the broad category of the opponent’s peripheral devices to computers. Therefore,

they are identical.

The contested electric and electronic musical effects equipment; electric and

screens; film advancing winders; film lenses; cine projectors; editing machines for

movie films; film recorders; film cutting apparatus; film reproducing apparatus; film

developing apparatus; film production apparatus; film strip viewers; cinematographic

film, exposed; photographic film [exposed]; motion-picture cameras for self-

developing film; films, exposed; cinematographic films; movie editing projectors; film

recording apparatus; film processing apparatus; sensitized films, exposed; film

dryers; reprographic films (sensitised -) [exposed]; editing appliances for

cinematographic films; cinematographic machines and apparatus; film magazines for

Decision on Opposition No B 2 795 675 page: 17 of 25

cameras; cameras for self-developing film; transparent films [photographic, exposed]

for overhead projectors; photographic media [films, exposed]; color separation film;

photosensitive media [films, exposed]; optical devices, enhancers and correctors;

exposed slide films; sensitized microfilms, exposed; reprographic plates (sensitised -)

[exposed]; microfilm [exposed]; photographic plates [exposed]; photographic

negatives; video films are included in the broad categories of, or overlap with, the

opponent’s photographic, cinematographic, optical apparatus and instruments.

Therefore, they are identical.

they are often produced by the same undertaking. Therefore, they are similar.

The contested cases for music storage devices; covers for music storage devices;

carrying cases for portable music players; carrying cases for digital music players;

containers for films; pouches for cinematographic apparatus; disc storage containers

are items in various materials used to hold different types of electronic devices are

similar to the opponent’s bags for protecting and transporting computers and

computer equipment. Indeed, they have the same purpose to hold objects and, in

particular, electronic items. This implies that, in most cases, these goods have certain

characteristics in common (e.g. they shall be deigned to protect the device they

digital music downloadable provided from mp3 internet web sites; digital music

downloadable provided from the internet; series of musical sound recordings; digital

music downloadable provided from a computer database or the internet; recorded

content; media content; recorded data files; data recorded electronically; telephone

ring tones [downloadable]; downloadable ring tones for mobile phones; recorded

data [magnetic]; audio books; electronic publications recorded on computer media;

books recorded on tape; books recorded on disc; typeface fonts recorded on

magnetic media; digital books downloadable from the internet; instruction manuals in

electronic format; downloadable image files; computer documentation in electronic

form; e-books; electronic publications, downloadable; downloadable computer

by regular mail; downloadable electronic publications in the nature of magazines;

downloadable electronic newspapers; downloadable templates for designing

audiovisual presentations; holographic images; talking books; podcasts; animated

cartoons in the form of cinematographic films; animated cartoons; weekly

publications downloaded in electronic form from the internet are electronic recorded

contents. These goods are similar to a low degree to the opponent’s computer

software (recorded programs) as they can coincide in end users and distribution

channels. Furthermore they are complementary.

Decision on Opposition No B 2 795 675 page: 18 of 25

Contested goods in Class 14

The contested good in Class 14 essentially consist of ornaments in precious and

non-precious materials, as well as watches and other accessories, as pins and key

rings. The specification also includes boxes to contain said items. These goods are

dissimilar to the opponent’s goods and services, which are basically electric and

electronic items in Class 9, clothing, footwear, headgear in Class 25 and various

types of entertainment, educational, production and consultancy services in Class 41.

same distribution channels and they are neither in competition nor complementary

(30/05/2011, R 106/2007-4, OPSEVEN2 / 7SEVEN (fig.) et al., § 14; 12/09/2008, R

274/2008-1, Penalty / PENALTY, § 20; 05/10/2011, R 227/2011-2, OCTOPUSSY /

OCTOPUSSY (fig.) et al, § 23-26). Some of the goods in Class 9 can also be

considered fashion accessories (i.e. spectacles). However, their essential function is

to correct the vision or protect the eyes from the sun. Therefore, the reasoning above

in relation to goods in Class 25 can be applied. The contested goods and the other

goods of Classes 9 and 14 are part of different market sectors and do not have the

same nature and purpose; they do not have the same public and producers.

Moreover, they are not complementary or in competition with each other. This is a

books; religious books; books for children; romance novels; colouring books; score

books; graphic art books; fiction books; booklets; commemorative books; novels;

children’s storybooks; music books; picture books; story books; educational books;

children’s books incorporating an audio component; children’s activity books;

manuals [handbooks]; printed music books; song books; coffee table books; gift

books are printed matter. These goods similar to the opponent’s publishing of books,

as they can coincide in producers and are complementary.

The contested book covers; protective covers for books; wrapping foils for books;

jackets of paper for books; paper for wrapping books; binding materials for books

or are produced by the same undertakings. Moreover, they are not complementary or

in competition with each other.

Contested goods in Class 25

The contested good in Class 25 are items of clothing, footwear and headgear, except

the contested heels; shoe soles, which are parts of footwear. Regarding the first

goods (i.e. items of clothing, footwear and headgear), they are identically contained

Decision on Opposition No B 2 795 675 page: 19 of 25

in both lists or are included in the broad categories of, or overlap with, the opponent’s

clothing, footwear (except orthopaedic footwear), headgear. Therefore, they are

identical.

The contested heels; shoe soles are dissimilar to the opponent’s goods and services

as have been defined above. These goods and services do not have the same

nature or purpose. They do not target the same public or are produced by the same

undertakings. Moreover, they are not complementary or in competition with each

other. In particular, regarding the opponent’s footwear in Class 25, these are finished

establish similarity between the finished product and its parts (27/10/2005, T-336/03,

Mobilix, EU:T:2005:379, § 61). Similarity can be found in exceptional cases and

requires that at least some of the main factors for a finding of similarity, such as

producer, public and/or complementarity, are present. This is not the case for the

abovementioned goods in Class 25.

Contested services in Class 41

The contested live music performances; music performances; presentation of

musical performance; arranging and conducting of concerts; theatrical performances,

musical performances; organisation of musical competitions; musical floor shows

provided at performance venues; rendering of musical entertainment by instrumental

groups; rendering of musical entertainment by vocal groups; live band performances;

presentation of live performances by a musical group; artistic management of

musical shows; organisation of live musical performances; arranging of visual and

musical entertainment; musical concerts by television; musical concerts by radio;

entertainment services performed by musicians; providing digital music from mp3

internet web sites; services providing entertainment in the form of live musical

performances; planning of plays or musical shows; entertainment services in the

form of musical vocal group performances; entertainment services in the form of

included in the broad category of, or overlap with, the opponent’s entertainment.

Therefore, they are identical.

The contested rehearsal [recording] studio services; production of music; music

recording services; production of musical recordings; music composition services;

recording of music; production of music shows; production of musical videos; music

recording studio services; music transcription for others; composition of music for

others; live musical concerts; production of musical works in a recording studio;

Decision on Opposition No B 2 795 675 page: 20 of 25

performance of dance, music and drama; production of sound and music recordings;

selection and compilation of pre-recorded music for broadcasting by others;

providing facilities for movies, shows, plays, music; film editing; film production

services; rental of movie projectors and accessories; rental of cinematographic

apparatus; rental of film studios; production of film studies; leasing of motion picture

cameras; movie studios; motion picture song production; production of

cinematographic films; television, radio and film production; production of special

effects for films; film and video tape film production; leasing of motion picture

projectors; recording studio services for films; screenplay writing; production of films

film; rental of lighting for use on film sets; rental of cinematographic machines and

apparatus; special effects animation services for film and video; production of

television and cinema films; rental of lighting apparatus for movie sets or film studios;

recording, film, video and television studio services; facilities for the production of

films (provision of -) are a wide range of production services, that is services that

allow a certain entertainment product (e.g. a cinematographic product or a music

product) to reach the market. They are included in the broad category of, or overlap

with, the opponent’s editing and production of audiovisual or musical works on audio,

video and digital data carriers. Therefore, they are identical.

view television channels; provision of non-downloadable films and television

programs via pay television; publication and edition of books; publishing services for

books and magazines; publication of books; multimedia publishing of books;

electronic online publication of periodicals and books; on-line publication of electronic

books and journals (non-downloadable); publication of periodicals and books in

electronic form; publication of electronic books and periodicals on the internet;

publication of electronic books and journals on-line; publication of books relating to

entertainment; publication of books relating to television programmes; publication of

books, magazines, almanacs and journals consist of commercial production and

issuance of literature, information, musical scores. They are included in the broad

audio and digital data carriers.

The contested musical education services; music tuition by correspondence courses;

education services in the form of music television programmes; providing facilities for

educational training; producing and conducting exercises for music classes and

programmes; education services relating to the cinema; film demonstrations for

instructional purposes essentially provide and/or facilitate the development and

sharing of knowledge in very diverse fields. The contested music library services;

Decision on Opposition No B 2 795 675 page: 21 of 25

music cassettes (rental of -); rental of audio tapes bearing recorded music; rental of

phonographic and music recordings; rental of motion pictures; rental of film

negatives; rental of film positives; lending libraries for films; rental of pre-recorded

films; rental of motion pictures and of sound recordings; rental of pre-recorded films

in the form of discs; rental of pre-recorded films in the form of video tapes; library

services; rental of books; lending of books relating to business methodology; library

services for the exchanging of books; lending of books and periodicals; lending of

books relating to finance; lending of books and other publications; lending of books

relating to accounting consist of the lending of contents that are printed matters or by

field of music; providing information, commentary and articles in the field of music via

computer networks; provision of information relating to books; information services

relating to books; consultation services relating to the publication of books are

services that relate to the production of music, printed matters and electronic

publications. They consist in offering assistance and information to artists in particular

in relation to the marketing of their creations and are at least similar to the opponent’s

editing and production of audiovisual or musical works on audio, video and digital

data carriers; publication of electronic books and journals on-line, which are

production and publishing services with the same purpose of the contested services,

namely the success on the market of the artist’s work. These services target the

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

directed at the public at large and at business customers with specific professional

knowledge or expertise. The degree of attention varies from average to high, the

latter in particular for very peculiar services that have a certain level of sophistication

Decision on Opposition No B 2 795 675 page: 22 of 25

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

Opposition Division finds it appropriate to focus the comparison of the signs on the

English-speaking part of the public.

As a general rule when a sign is registered as a word mark, it is the word as such

what is protected and not its written form; therefore, the typeface actually used at the

moment of the filing of the mark is irrelevant. In the present case differences in the

use of lower or upper case letters between the marks are immaterial.

The earlier mark comprises the word ‘LOST’, which will be understood as an

adjective meaning ‘unable to be found’, and the word ‘FREQUENCIES’ that will be

Due to their verbal nature, none of the signs has any element which is more

dominant (visually eye-catching) than other elements.

Visually and aurally, the signs coincide in the sequence of letters/sounds

‘FREQUENC***’, which are eight out of nine letters/sounds of the contested sign and

out of ten letters/sounds of the second element of the earlier mark. From an aural

point of you, it shall also be observed that the relevant public will pronounce the

letters ‘IE’ of the earlier mark and ‘Y’ of the contested sign identically. Admittedly, the

marks differ in the additional element ‘LOST’ of the earlier mark; however, given that

conveyed by the words ‘FREQUENCY’/’FREQUENCIES’ that are basically the very

same word in it its singular and plural form, they are conceptually similar to an

average degree.

As the signs have been found similar in at least one aspect of the comparison, the

examination of likelihood of confusion will proceed.

Decision on Opposition No B 2 795 675 page: 23 of 25

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

e) Global assessment, other arguments and conclusion

The relevant goods and services have been found partly identical, partly similar to

various degrees and partly dissimilar. They target the general and professional

public, whose level of attention varies form average to high. The earlier mark has a

normal degree of distinctive character.

The signs are visually, aurally and conceptually similar to an average degree, as a

result of the coinciding letters/sounds ‘FREQUENC***’, of the aural identity of the

letters ‘IE’ of the earlier mark and ‘Y’ of the contested sign and of the fact that the

conceptual aspect mentioned above and from the fact that they coincide in the great

majority of the letters of the contested sign and of the second element of the earlier

mark, which plays an independent distinctive role in the mark.

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).

Even consumers who pay a high degree of attention need to rely on their imperfect

recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605, § 54).

It is, therefore, possible that the targeted public may regard the goods designated by

the trade mark applied for as belonging to two ranges of goods coming, nonetheless,

from the same undertaking.

Therefore, taking into account all relevant factors, it is considered that, even if

average consumers and professionals were capable of detecting certain visual and

aural differences between the two conflicting signs, the similarities between them are

sufficient to consider that there is a likelihood of confusion on the part of the public.

Decision on Opposition No B 2 795 675 page: 24 of 25

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). In the present case, the

similarities between the signs are sufficient to outweigh the low level of similarity

among some of the goods.

existence of actual confusion, but the existence of a likelihood of confusion’

(24/11/2005, T-346/04, Arthur et Félicie, EU:T:2005:420, § 69). Bearing in mind the

foregoing, it is observed that the comparison of goods and services is based on the

specifications of the contested sign and of the earlier mark. Therefore, if some of the

contested goods and/or services are included in one or more of the opponent’s

broader categories, an identity between the goods and/or services must be found.

Hence, the applicant’s claim must be set aside.

Considering all the above, the Opposition Division finds that there is a likelihood of

confusion on the part of the English-speaking part of the public and therefore the

goods and services found to be identical or similar to various degrees 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

Since the opposition is successful for only some of the contested goods and

services, both parties have succeeded on some heads and failed on others.

Consequently, each party has to bear its own costs.

Decision on Opposition No B 2 795 675 page: 25 of 25

Orsola LAMBERTI Michele M.

BENEDETTI-ALOISI

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