OPPOSITION No B 2 875 675
Moreno Ruiz Hermanos S.L., Avenida De Andalucía, 229, 41560 Estepa, Spain
(opponent), represented by Rodolfo De La Torre S.L., C/ San Pablo, nº15-3º, 41001
Seville, Spain (professional representative)
a g a i n s t
Dongguan Jin Jiang Jewelry Co. Ltd., 4th Industrial Zone Xiagang Community
Chang'an Town Dongguan Guangdong, People’s Republic of China (applicant),
represented by Metida Law Firm Žabolienė and Partners, Business center Vertas
Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).
On 08/01/2018, the Opposition Division takes the following
1. Opposition No B 2 875 675 is partially upheld, namely for the following
Class 35: Presentation of goods on communication media, for retail
purposes; business management assistance; organization of
exhibitions for commercial or advertising purposes; arranging and
conducting of commercial exhibitions; sales promotion for others;
import-export agency services; provision of an on-line marketplace
for buyers and sellers of goods and services; rental of sales stands;
retail or wholesale services for pharmaceutical, veterinary and
sanitary preparations and medical supplies.
2. European Union trade mark application No 16 223 554 is rejected for all the
above services. It may proceed for the remaining goods and services.
3. Each party bears its own costs.
As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95
have been repealed and replaced by Regulation (EU) 2017/1001 (codification),
Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU)
2017/1431, subject to certain transitional provisions. All the references in this
decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to
the Regulations currently in force, except where expressly indicated otherwise.
The opponent filed an opposition against some of the goods and services of
European Union trade mark application No 16 223 554 for the figurative sign
namely against all the services in Class 35. The opposition is
Decision on Opposition No B 2 875 675 page: 2 of 6
based on, inter alia, Spanish trade mark registration No 2 754 191 for the word mark
‘LA AURORA’. 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.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s Spanish trade mark registration No 2 754 191.
a) The services
The services on which the opposition is based are the following:
Class 35: Services of wholesale, retail sale in shops and through worldwide
computer networks of confectionery and bakery products; services of
issuance of franchises related to the assistance in the development
and management of a commercial company; services of advertising,
propaganda, promotion, representation and exclusives; import and
The contested services are the following:
Class 35: Presentation of goods on communication media, for retail purposes;
business management assistance; organization of exhibitions for
commercial or advertising purposes; arranging and conducting of
commercial exhibitions; sales promotion for others; import-export
agency services; provision of an on-line marketplace for buyers and
sellers of goods and services; updating and maintenance of data in
computer databases; rental of sales stands; retail or wholesale
services for pharmaceutical, veterinary and sanitary preparations and
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.
Import-export agency services are identically contained in both lists (including
The contested presentation of goods on communication media, for retail purposes;
organization of exhibitions for commercial or advertising purposes; arranging and
conducting of commercial exhibitions; sales promotion for others; provision of an on-
line marketplace for buyers and sellers of goods and services; rental of sales stands
Decision on Opposition No B 2 875 675 page: 3 of 6
are included in the broader category of the opponent’s services of advertising,
propaganda, promotion, representation and exclusive, therefore there are identical.
The contested business management assistance is a service intended to help in the
management of the business affairs or commercial functions of an industrial or
commercial enterprise. Thus, they include as a broader category the opponent’s
services of issuance of franchises related to the assistance in the development and
management of a commercial company. Therefore they are identical.
The contested retail or wholesale services for pharmaceutical, veterinary and
sanitary preparations and medical supplies are considered similar to the opponent’s
services of wholesale, retail sale in shops and through worldwide computer networks
of confectionery and bakery. The services at issue have the same nature since both
are retail services, the same purpose of allowing consumers to conveniently satisfy
different shopping needs, and the same method of use.
The contested updating and maintenance of data in computer databases are
business administration or office services; they are types of data management,
directed at businesses that need support in managing their computerized information.
They are dissimilar to the opponent’s services in Class 35 as they have nothing
relevant in common, their nature and purpose differs as do their producers,
consumers and distribution channels. Furthermore they do not share a
complementary nature nor are they in competition with one another.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the services found to be identical or similar are directed at the
public at large and also at business customers with specific professional knowledge
The degree of attention is expected to be average.
c) The signs
Earlier trade mark Contested sign
The relevant territory is Spain.
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).
Decision on Opposition No B 2 875 675 page: 4 of 6
The earlier mark is a word mark. It consists of the two terms ‘LA AURORA’. The
contested sign is a figurative sign, which is simply composed by the elements
‘L’AURORA’ depicted using ordinary black capital letters. None of the elements of the
marks is dominant. Both signs will be understood as the Spanish equivalent of ‘the
dawn’, notwithstanding the elision, in contested sign, of the article ‘LA’, which will be
anyhow recognized in the element ‘L’ followed by the sign of apostrophe. Since these
elements have no meaning in relation to any of the services in Class 35, they are
Visually, the signs coincide in all of their elements with the exception of their second
element, which is the letter ‘A’ in the earlier mark and the apostrophe character in the
contested sign. Therefore, the signs are visually highly similar.
Aurally and conceptually, the signs are identical, since the presence of the
apostrophe character instead of the letter ‘A’ in the first element of the contested sign
does not alter the pronunciation and the understanding of said element, which will be
pronounce in conjunction with the first letter ‘A’ of the second element ‘AURORA’ and
understood as the equivalent of the word ‘LA’.
As the signs have been found similar in at least one aspect of the comparison, the
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue
of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its
distinctiveness per se. In the present case, the earlier trade mark as a whole has no
meaning for any of the services in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
e) Global assessment, other arguments and conclusion
The services covered by the trade marks in dispute have been found partly identical,
partly similar and partly dissimilar.
The services are directed at the public at large and also at business customers with
specific professional knowledge or expertise. The level of attention is expected to be
The signs are visually highly similar. In fact, as seen above in section c) of the
present decision, the contested mark is almost wholly included
within the earlier word mark ‘LA AURORA’. These two words only differ in the
absence of the second letter ‘A’ and the presence of the apostrophe character in the
This difference is so minor that it is impossible to differentiate the marks form a aural
and conceptual point of view. In fact, form these two perspectives, the marks are
Decision on Opposition No B 2 875 675 page: 5 of 6
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,
It is clear than the average consumers’ imperfect recollection does not seem to be, in
principle, sufficient to clearly dispel the extremely scarce differences between the
Also, it cannot be obliterated that 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).
Considering all the above, the Opposition Division finds that there is a likelihood of
confusion on the part of the public and therefore the opposition is partly well founded
on the basis of the opponent’s Spanish trade mark registration.
It follows from the above that the contested trade mark must be rejected for the
services found to be identical or similar to those of the earlier trade mark.
The rest of the contested services are dissimilar. As similarity of goods and services
is a necessary condition for the application of Article 8(1) EUTMR, the opposition
based on this Article and directed at these services cannot be successful.
The opponent has also based its opposition on the following earlier trade mark:
Spanish trade mark registration No 3 104 405 for the figurative mark
The other earlier right invoked by the opponent covers pharmaceutical products;
dietary foods and substances for medical use, baby foods; nutritional supplements
for human beings; especially, foods supplements for medical use, foods supplements
based on proteins, foods supplements based on minerals and dietary foods
supplements, all of them intended for human beings in Class 5, which are clearly
different to those applied for in the contested trade mark which have been found to
be dissimilar, namely updating and maintenance of data in computer databases in
Class 35. Therefore, the outcome cannot be different with respect to services for
which the opposition has already been rejected; no likelihood of confusion exists with
respect to those services.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party. According to Article 109(3)
EUTMR, where each party succeeds on some heads and fails on others, or if
reasons of equity so dictate, the Opposition Division will decide a different
apportionment of costs.
Decision on Opposition No B 2 875 675 page: 6 of 6
Since the opposition is successful for only some of the contested services, both
parties have succeeded on some heads and failed on others. Consequently, each
party has to bear its own costs.
The Opposition Division
Andrea VALISA Edith Elisabeth
VAN DEN EEDE
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
appeal must be filed within four months of the same date. The notice of appeal will be
deemed to have been filed only when the appeal fee of EUR 720 has been paid.