OPPOSITION No B 2 308 107

Initec Infraestructuras, S.A.U., Avenida de Burgos nº 89, Edif. 6, 28050 Madrid, Spain (opponent), represented by Pons Consultores de Propiedad Industrial, S.A., Glorieta Rubén Darío, 4, 28010 Madrid, Spain (professional representative)

a g a i n s t

Orange Trading FZE, Jumeirah Beach Residences Building Rimal 2, Office nr 3203, Dubai, United Arab Emirates (applicant), represented by Merkenbureau Bouma B.V., Beurs WTC – Beursplein 37, room 313, 3011 AA Rotterdam, The Netherlands (professional representative).

On 22/06/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 308 107 is partially upheld, namely for the following contested goods and services:

Class 2: Ink and ink cartridges for printers, whether or not refillable; Ink cartridges (toner cartridges) for printers, copying, recording, data processing and display apparatus and machines.

Class 9: Photocopying, recording, data processing and display apparatus and machines, and parts therefor, plates and drums used in electrophotographic copying machines; Melting devices for fixing powder images onto a substrate, being parts for electrophotographic copying machines; Optical and photographic apparatus; all aforementioned goods not for use in the automotive industry.

Class 35: Rental of photocopying and data processing equipment and machines; Rental of scanning apparatus (office machines);

Class 36: Leasing of printers, photocopying, recording, data processing and display apparatus and machines; Advice on the aforementioned services.

Class 37: Repair, maintenance and installation services; Maintenance of computers, computer devices, photocopying, recording, data processing and display apparatus and machines; Consultancy services in relation to the aforesaid services.

2.        European Union trade mark application No 12 262 549 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 12 262 549. The opposition is based on European Union trade mark registration No 10 528 529 and international trade mark registration No 628 319 designating the Czech Republic, Portugal, Austria, Bulgaria, Slovakia, Poland, Italy, Hungary, Germany, Romania and France. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of international trade mark registration No 628 319 .

The request was submitted in due time and is admissible, as the earlier trade mark was registered more than five years prior to 10/01/2014, that is, the date of publication of the contested application. The opponent was therefore required to prove that its earlier international trade mark, on which the opposition is based, was put to genuine use in the Czech Republic, Portugal, Austria, Bulgaria, Slovakia, Poland, Italy, Hungary, Germany, Romania and France from 10/01/2009 to 09/01/2014, inclusive.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 2: Paints varnishes, lacquers, preservatives against rust and against deterioration of wood; colorants, mordants, natural resins, unprocessed; metals in foil and powder form for painters, decorators, printers and artists.

Class 9: Scientific apparatus and instruments, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling (markup), checking (supervision), emergency (life-saving) and teaching apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin operated apparatus, cash registers, calculating machines, data processing equipment information (data processing); extinguishers.

Class 35: Advertising and business, included in this class; support services operations or business management; study services and economic and market analyses, conducting studies employers; business organization; services expertise, performance, recording, transcription, composition, compilation, transmission or systematization of written communications and registrations, services planning, monitoring, management, inspection, monitoring of information and expertise to businesses and business checking accounts, exploitation or compilation of mathematical or statistical data services, domestic and foreign trade, performances and exclusive, expertise and economic reports, studies and administrative and economic consultations.

Class 36: Promotional services, operations and real estate financing, real estate management, insurance services and finances; studies and financial and tax consultations

According to Rule 22(3) EUTMIR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods and services in respect of which it is registered and on which the opposition is based.

On 13/04/2016, according to Rule 22(2) EUTMIR, the Office gave the opponent until 18/06/2016 to submit evidence of use of the earlier trade mark. After an extension of this time limit requested by the opponent and approved by the Office, the opponent submitted evidence of use on 17/08/2016, within the time limit.

The evidence filed by the opponent is the following:

• ISO certificates granted to INITEC Plantas Industriales S.A.U., covering the company’s quality management system and environmental management system, with renewal dates of 29/07/2012 and 31/12/2013, respectively.
• A one-page advertisement claiming that Tecnicas Reunidas – Initec has more than 50 years of experience. The page shows neither date nor place of publication.
• An invoice for EUR 6 600, dated 11/06/2014 and issued by a French-domiciled individual to the opponent. The service charged for includes drafting a proposal for a technical project.
• An invoice for EUR 2 540, dated 09/07/2013 and issued by a Swedish company. The product charged for is described as ‘PathPlanner Airside’.
• A 13-page company brochure presenting INITEC Industrial’s history, main activities, international markets and projects claimed to be worth a total of USD 8 million. The brochure is not dated.

The Opposition Division first notes that only the company brochure shows the earlier mark as registered. In the rest of the evidence, the word element ‘Initec’ appears as a company name with or without additional word elements and always without the figurative element.

Having examined the above evidence, the Opposition Division has drawn the following conclusions:

• The ISO certificate is a prestigious certificate awarded to companies on the basis of the quality of their internal procedures and working processes. The certificates submitted by the opponent prove that it has complied with ISO requirements with regard to quality management and environment management. However, they do not show – and are not intended to show – actual use of a mark on the market (see, to that effect, 11/09/2009, R 1042/2008-4, SILICON / SILICOM, § 35).
• The one-page advertisement is not dated and does not give any indication regarding the time, nature or extent of use of the mark.
• The two invoices total about EUR 9 000, of which the invoice for EUR 6 600 appears to indicate the provision of a service, namely a proposal for a technical project, while the other invoice appears to refer to a type of software without any specification thereof. These invoices – issued not by the opponent, but to the opponent – fail to prove the duration or frequency of use necessary to show that the mark has been put to genuine use.
• The company brochure is the opponent’s own publication. Although it may contain additional information, it still must be viewed as being of relatively low probative value, in the absence of any corroborating evidence from an independent source, as it originates from the opponent itself. In fact, the brochure merely describes the company’s history, its international projects and their estimated values without being sufficiently specific and detailed to be able to add anything to the remaining part of the evidence. In any event, the brochure is undated.

In summary, the Opposition Division considers that the evidence submitted is incapable of proving that the earlier mark has been put to genuine use during the relevant period of time for the goods and services in question.

In addition, the mere listing of countries where the opponent claims to operate in the company brochure is not sufficient to show actual market activities or, more importantly, use of the earlier mark in those territories. As a consequence, the fact that some of the evidence submitted mentions some of the countries for which the earlier mark is designated is not sufficient to prove the geographical scope of use.

The Court of Justice has held that there is genuine use of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C-40/01, Minimax, EU:C:2003:145, and 12/03/2003, T-174/01, Silk Cocoon, EU:T:2003:68).

In relation to the extent of use, account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 41; 08/07/2004, T-334/01, Hipoviton, EU:T:2004:223; § 35). Although it is not necessary to prove commercial success, it is necessary that the evidence provides relevant and real information about sales and commercial transactions for the relevant goods and services. In the present case, no relevant commercial volume has been shown. While use of the mark need not be quantitatively significant for it to be deemed genuine, any conclusion on actual trade can be drawn only from two invoices; this is clearly not enough.

Based on all the foregoing, the Opposition Division concludes that the evidence furnished by the opponent is insufficient to prove that the earlier trade mark was genuinely used in the relevant territories during the relevant period of time.

Therefore, the opposition must be rejected pursuant to Article 42(2) and (3) EUTMR and Rule 22(2) EUTMIR as far as the opponent’s earlier international trade mark registration is concerned.

The Opposition Division continues its analysis of the case on the basis of the opponent’s other mark invoked, namely European Union trade mark registration No 10 528 529.

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 and services

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

Class 7: Machines and machine tools; Motors and engines (except for land vehicles); Machine couplings and transmission components (except for land vehicles); Agricultural implements other than hand-operated.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; Apparatus for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment and computers; Fire-extinguishing apparatus.

Class 35: Providing of all kinds of business services involved in the operation of authorities; Creation of all kinds of economic studies and reports relating to engineering, whether in the private sector or public authorities.

Class 36: Providing of all kinds of economic services involved in the operation of authorities.

Class 37: Maintenance and repair of equipment and installations; Machinery repair; Demolition (scrapping);Preservation and maintenance of real estate, buildings, highways, roads, motorways, dual carriageways, carriageways, and railways, water and sewage networks, integral preservation and maintenance of purification plants, preservation and maintenance of street furniture, woodland and gardens, individual buildings and monuments; Conducting of hydraulic works of all kinds, including supply and cleaning up, dams, canals, irrigation ditches and drains, protection of riverbanks and embankments, large-diameter pressure conduits; Execution of road works and roads in general, in particular motorways, dual carriageways, runways, whether with surfaces made of hydraulic concrete or surfaces made of bituminous mixtures; Execution of railway works, earthworks and drilling; Execution of works on bridges, viaducts and large structures.

Class 38: Transmission of information by electronic, computerised and telematic means.

Class 40: Providing of services for the treatment of waste, including the treatment and incineration of urban waste, the treatment of muds, and acids, the treatment of sanitary waste and waste from veterinary clinics, and the treatment of oily waste.

Class 42: Creation of all kinds of technical and industrial studies, reports and plans relating to engineering, whether in the private sector or public authorities; Drafting of preliminary projects, specifications and final projects in the field of infrastructures for public authorities; Preparing tenders and studying the proposals submitted in tenders for works and projects and managing and inspecting the execution thereof, carrying out the receipt and settlement thereof; Carrying out of engineering and architecture projects and studies for the erection, construction and complete installation of all kinds of factory, plant or industrial building, and of industrial, agrarian or multi-use complexes, works management and supervision, setting up or fitting out of buildings, infrastructures and installations where required, and execution of turnkey projects; Development and maintenance of computer programs; Evaluation and control of computer systems and telematic infrastructures; Development of technical projects relating directly or indirectly to ecology, including the preparation of proposals for services and supplies, services for the preservation and integral treatment of purification plants, engineering works for purification plants; Projects for the treatment of water, for the conservation and maintenance of water and sewage networks, environmental pollution and ecological issues in general; Direct execution or execution in cooperation with other technical research centres or laboratories.

The list of the contested goods in Class 9 was amended by the applicant during the opposition stage and the opponent was duly informed of this. Accordingly, the contested goods and services are the following:

Class 2: Ink and ink cartridges for printers, whether or not refillable; Ink cartridges (toner cartridges) for printers, copying, recording, data processing and display apparatus and machines.

Class 9: Photocopying, recording, data processing and display apparatus and machines, and parts therefor, plates and drums used in electrophotographic copying machines; Melting devices for fixing powder images onto a substrate, being parts for electrophotographic copying machines; Optical and photographic apparatus; all aforementioned goods not for use in the automotive industry.

Class 16: Paper, cardboard and goods made from these materials; Recycled paper, cardboard and goods made from these materials; Magazines, leaflets, brochures, magazines, books and other printed matter; Photographs; Bookbinding material; Typewriters and office requisites (except furniture).

Class 35: Rental of photocopying and data processing equipment and machines; Rental of scanning apparatus (office machines); Business mediation and business consultancy relating to the sale of ink and ink cartridges, toner cartridges, photocopying, recording, data processing and display apparatus and machines, and parts therefor, paper, cardboard and goods made from these materials.

Class 36: Leasing of printers, photocopying, recording, data processing and display apparatus and machines; Advice on the aforementioned services.

Class 37: Repair, maintenance and installation services; Maintenance of computers, computer devices, photocopying, recording, data processing and display apparatus and machines; Consultancy services in relation to the aforesaid services.

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

Contested goods in Class 2

The contested ink and ink cartridges for printers, whether or not refillable; ink cartridges (toner cartridges) for printers, copying, recording, data processing and display apparatus and machines are products used essentially with the purpose of enabling printing or copying. In the present office environment, printers and copying machines can be rather complex equipment capable of fulfilling several additional functions, such as faxing and scanning, and can also be programmed to perform certain tasks. In that sense, today’s printers and copying machines can be considered a type of data processing equipment covered by the earlier mark. As the contested goods are all indispensable for the use of the opponent’s apparatus for recording, transmission or reproduction of sound or images; data processing equipment (which include copying machines and printers) and the market reality shows that printers and cartridges are sold in the same sections of outlets to the same public and they are often manufactured by the same undertakings, there is a high degree of complementarity between these goods. Consequently, these goods are considered similar.

Contested goods in Class 9

The opponent’s data processing equipment include, as a broad category, the contested data processing apparatus and machines, all aforementioned goods not for use in the automotive industry. Therefore they are identical. Furthermore, the contested [data processing apparatus and machines], and parts therefor; all aforementioned goods not for use in the automotive industry are all essential parts of the opponent’s broad category of data processing equipment. As the contested goods are all indispensable for the use of these goods of the opponent and market reality shows that these goods target the same public, can originate from the same manufacturers and may be sold in the same sections of outlets, they are complementary. Consequently, they are considered similar.

The contested photocopying, recording, display apparatus and machines; all aforementioned goods not for use in the automotive industry all have the purpose of reproducing or recording images and/or sound and are, therefore, identical to the opponent’s apparatus for recording, transmission or reproduction of sound or images. Furthermore, the contested [photocopying, recording, display apparatus and machines] parts therefor; all aforementioned goods not for use in the automotive industry are all essential parts within the opponent’s broad category of data processing equipment. As the contested goods are all indispensable for the use of these goods of the opponent and market reality shows the goods target the same public, can originate from the same manufacturers and may be sold in the same sections of outlets, they are complementary. Consequently, they are considered similar.

The contested optical and photographic apparatus; all aforementioned goods not for use in the automotive industry are, de facto, identical to the opponent’s photographic, optical apparatus and instruments.

The contested plates and drums used in electrophotographic copying machines; melting devices for fixing powder images onto a substrate, being parts for electrophotographic copying machines; all aforementioned goods not for use in the automotive industry are all essential parts of copying machines, which, as explained above, belong to the opponent’s broad category of apparatus for recording, transmission or reproduction of sound or images; data processing equipment (which includes copying machines and printers). As the contested goods are all indispensable for the use of these goods of the opponent and market reality shows the goods target the same public, can originate from the same manufacturers and may be sold in the same sections of outlets, they are complementary. Consequently, they are considered similar.

Contested goods in Class 16

The contested paper, cardboard and goods made from these materials; recycled paper, cardboard and goods made from these materials; magazines, leaflets, brochures, magazines, books and other printed matter; photographs; bookbinding material include paper products and some basic office materials. The mere fact that paper products are used in various types of data processing equipment, such as printers or copying machines, is not sufficient to find a link between these goods. Use of these goods varies widely, which makes them dissimilar to any of the opponent’s goods and services; they target a different public and are offered through different distribution channels. In addition, these contested goods are neither complementary to nor in competition with the opponent’s goods or services.

The contested typewriters and office requisites (except furniture) are usually mechanical devices or simple office items that are not related to the opponent’s more complex and predominantly electronic apparatus. These goods usually originate from different undertakings, are sold in different outlets and are neither complementary nor in competition with one another. In summary, these contested goods are dissimilar to any of the opponent’s goods and services.

Contested services in Class 35

The contested rental of photocopying and data processing equipment and machines; rental of scanning apparatus (office machines) involves rental of goods that belong to the opponent’s broader category of apparatus for recording, transmission or reproduction of sound or images; data processing equipment. The finding of similarity between copying machines and data processing equipment explained above applies to scanners, which also have the purpose of reproducing images and documents. Since it is rather common market practice that manufacturers of scanners or copying machines are also engaged in leasing these pieces of equipment to businesses, these goods and services have the same relevant target public and may be in competition; there is a low degree of similarity between the said contested services and the opponent’s goods.

The remaining contested services in this class, namely business mediation and business consultancy relating to the sale of ink and ink cartridges, toner cartridges, photocopying, recording, data processing and display apparatus and machines, and parts therefor, paper, cardboard and goods made from these materials, are provided by specialist consultancy companies, so they target a different public from that of the opponent’s goods and services. In addition, it is not common for manufacturers of goods also to provide business mediation related to those goods, as the two types of activities require different know-how and expertise. Overall, these contested services are dissimilar to all of the opponent’s goods and services.

Contested services in Class 36

The contested leasing of printers, photocopying, recording, data processing and display apparatus and machines must be considered similar to a low degree to the opponent’s broader category of apparatus for recording, transmission or reproduction of sound or images; data processing equipment, following the same arguments as above concerning rental services. The contested advice on the aforementioned services (i.e. leasing of printers, photocopying, recording, data processing and display apparatus and machines) are also similar to a low degree to the above goods of the opponent, as undertakings leasing out such equipment usually provide advice to their customers, the relevant target public is the same and these services may be in competition,

Contested services in Class 37

The contested repair, maintenance and installation services; maintenance of computers, computer devices, photocopying, recording, data processing and display apparatus and machines and the opponent’s maintenance and repair of equipment and installations have the same nature. Their purpose, in the broadest sense, may also be the same because they are for maintenance and repair. To that extent, these services are similar to a low degree. However, in the absence of an express limitation to clarify the opponent’s services, it cannot be assumed that they coincide in other criteria.

With regard to the contested repair, maintenance and installation services; maintenance of computers, computer devices, photocopying, recording, data processing and display apparatus and machines]; consultancy services in relation to the aforesaid services and the opponent’s broader category maintenance and repair of equipment and installations, the abovementioned conclusions also apply here, as the purpose of the opponent’s services, in the broadest sense, may also be linked with the contested services to the extent that maintenance and repair require specialist knowledge and expertise and routinely include giving advice. To that extent, these services are similar to a low degree.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services found to be identical or similar to varying degrees are directed both at the public at large and business customers with specific professional knowledge or expertise.

The degree of attention of the public varies from average (e.g. for the contested goods in Class 2) to higher than average for other goods and services, as these can be expensive purchases or require a higher degree of attention when selecting the manufacturer or service provider, given the differences in price, terms of sale, etc.

3. The signs

	ITEC
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 earlier mark is a figurative mark consisting of the words ‘INITEC Infraestructuras’ in black letters, preceded by a rather simple, rhombus-shaped figurative element. None of these elements can be considered more dominant than any other.

The contested sign comprises the word ‘ITEC’ in upper case letters; this word is meaningless in the relevant territory and its distinctiveness is normal.

The contested sign lacks any meaning and one of the earlier mark’s word elements, ‘infraestructuras’, is a Spanish word meaning ‘infrastructures’. The meaning of this element will be recognised and understood throughout the relevant territory, given its similarity to the equivalent word in other languages, such as French (‘infrastructure’), Portuguese (‘infra-estrutura’), German (‘Infrastruktur’), Czech, Slovenian and Polish (‘infrastruktura’) or Hungarian (‘infrastruktúra’). Taking into account the definition of infrastructure as ‘the resources (such as personnel, buildings, or equipment) required for an activity’ (information extracted from Merriam Webster Dictionary on 26/05/2017 at https://www.merriam-webster.com/dictionary/infrastructure), this word element is non-distinctive in relation to the relevant goods and services, which are all intended to provide the infrastructure for a working or office environment. The element ‘INITEC’ lacks any meaning and is distinctive as a whole. The earlier mark’s figurative element is a rather common element and the public will not attach the same trade mark significance to it as to the mark’s first verbal element. In addition, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component, since the public does not tend to analyse signs and will more easily refer to them by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Visually, the contested sign’s four letters are included in the earlier mark’s first, distinctive verbal element in the following way: ‘**ITEC’. The signs differ in the two additional letters ‘IN’ in the earlier mark’s first word element as well as in its additional word and figurative elements, which, however, will have much less impact on consumer perception, given that these are non-distinctive or of secondary importance. In summary, the entire contested sign is included in the earlier sign and they start with the same letter. Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘ITEC’, present identically in both signs. The pronunciation differs in the sound of the additional letters, ‛IN’, of the earlier mark’s first word element, as well as in the pronunciation of its additional word element, which, however, will have less impact on consumer perception, given its non-distinctive character. Since the signs coincide in the sounds of four letters making up the entire contested sign and they start with the same letter, the signs are considered aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the earlier mark’s non-distinctive element. In addition, the earlier mark’s figurative element does not convey any concept. As the signs’ relevant word elements, ‘INITEC’ and ‘ITEC’, lack any meaning, no conceptual comparison is possible.

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 despite its non-distinctive element as explained in point c).

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).

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.

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).

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).

Some of the goods and services are identical or similar to various degrees and the signs are similar visually to a low degree and aurally to a high degree. The contested sign contains all the letters of the earlier sign’s distinctive element and the signs also start with the same letters, although they differ in two additional letters in the earlier sign. The other differences between the signs are confined to the earlier mark’s non-distinctive word element and its figurative element of secondary importance, which cannot counteract the similarities between them.

Considering all the above, there is a likelihood of confusion on the part of the public, even for consumers who will pay a higher than average degree of attention when purchasing the relevant goods or services.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for the goods and services found to be identical or similar, even if only to a low degree, to the goods or services of the earlier trade mark.

The rest of the contested goods and services are dissimilar to the opponent’s goods and services. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marianna KONDÁS

Ferenc GAZDA

Zuzanna STOJKOWICZ

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.