Mecro | Decision 1652430 – MIP METRO Group Intellectual Property GmbH & Co. KG v. Brammer plc

OPPOSITION DIVISION

OPPOSITION No B 1 652 430

Mip Metro Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235

Düsseldorf, Germany (opponent), represented by Thomas Honnet, Mip Metro

Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf,

Germany (employee representative)

a g a i n s t

Brammer plc, St Ann’s House, 1 Old Market Place, Knutsford, Cheshire WA16 6PD,

United Kingdom (applicant), represented by Marks & Clerk LLP, 1 New York Street,

Manchester M1 4HD, United Kingdom (professional representative).

On 13/11/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 652 430 is partially upheld, namely for the following

contested services:

Class 35: Retail of machine coupling and transmission components, belts, belt

drives, chains, chain drives, shaft couplings, bearings, bearing housings,

bearing pulleys, housed bearing units, bushes, balls and rollers for bearings,

accessories for bearings, bearing withdrawal sleeves, bearing locating rings,

bearing sealing plates and rings.

Class 37: Maintenance services, repair services, refurbishment services,

insulation services relating to machine coupling and transmission components,

belts, belt drives, chains, chain drives, shaft couplings, bearings, bearing

housings, bearing pulleys, housed bearing units, bushes, balls and rollers for

bearings, accessories for bearings, bearing withdrawal sleeves, bearing

locating rings, bearing sealing plates and rings.

Class 39: Distribution and transport services relating to machine coupling and

transmission components, belts, belt drives, chains, chain drives, shaft

couplings, bearings, bearing housings, bearing pulleys, housed bearing units,

bushes, balls and rollers for bearings, accessories for bearings, bearing

withdrawal sleeves, bearing locating rings, bearing sealing plates and rings.

Class 42: Engineering services, technical support services, advisory and

consultancy services relating to motors.

2. European Union trade mark application No 8 738 809 is rejected for all the

above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

Decision on Opposition No B 1 652 430 page: 2 of 20

REASONS

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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 all the goods and services of European

Union trade mark application No 8 738 809 for the figurative sign . The

opposition is based on, inter alia, European Union trade mark registrations

No 7 585 061 for the figurative mark and No 781 732 for the figurative

mark . 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 European Union trade mark registrations No 7 585 061 and No 781 732.

a) The goods and services

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

From European Union trade mark registration No 7 585 061:

Class 35: Wholesale services, including via the Internet and or via teleshopping

channels in the fields of: chemicals, detergents, polishing and abrasive preparations,

substances for laundry use, paints, pharmaceutical preparations, cosmetics, razors

and accessories, perfumery, household utensils, fuels, illuminants and motor fuels,

industrial oils and greases, lubricants, candles, health sector goods, machines, tools

and goods of metal, building products, DIY goods and gardening goods, hobby and

craft supplies, electrical and electronic goods, sound and data carriers, apparatus for

lighting, heating, cooking, cooling, drying and ventilating, steam cleaning and steam

ironing apparatus, sanitary installations and accessories, vehicles and vehicle

accessories, bicycles and bicycle accessories, motorised two-wheel vehicles and

accessories therefor, fireworks, clocks and jewellery, optical instruments and

equipment, musical instruments, printed matter, paper goods and stationery, office

requisites, bags and saddlery, furniture, tents, tarpaulins, clothing, footwear, textile

goods, headgear, leather and imitations of leather, trunks and travelling bags, travel

bags and handbags, rucksacks, umbrellas and parasols, playthings, sporting

apparatus and sports equipment and accessories, foodstuffs and drinks, agricultural,

Decision on Opposition No B 1 652 430 page: 3 of 20

horticultural and forestry products, tobacco products and other luxury foodstuffs,

namely alcohol, coffee, tea, chocolate, sugar and spices and in the field of household

goods, namely electric and non-electric household and kitchen utensils, glassware,

ceramics, porcelain, metal and plastic household and kitchen utensils, household

and kitchen containers, cooking pot sets, and in the field of decorative articles and

decorations, namely decorative objects, plants (including artificial plants), fruit

(including artificial fruit), food (including artificial food), seasonal, festive, party and

themed decorations for objects, windows, rooms, buildings and spaces, garlands,

flags and films, online and/or catalogue goods in the fields of chemicals, detergents,

polishing and abrasive preparations, substances for laundry use, paints,

pharmaceutical preparations, cosmetics, razors and accessories, perfumery,

household utensils, fuels, illuminants and motor fuels, industrial oils and greases,

lubricants, candles, health sector goods, machines, tools and goods of metal,

building products, DIY goods and gardening goods, hobby and craft supplies,

electrical and electronic goods, sound and data carriers, apparatus for lighting,

heating, cooking, cooling, drying and ventilating, steam cleaning and steam ironing

apparatus, sanitary installations and accessories, vehicles and vehicle accessories,

bicycles and bicycle accessories, motorised two-wheel vehicles and accessories

therefor, fireworks, clocks and jewellery, optical instruments and equipment, musical

instruments, printed matter, paper goods and stationery, office requisites, bags and

saddlery, furniture, tents, tarpaulins, clothing, footwear, textile goods, headgear,

leather and imitations of leather, trunks and travelling bags, travel bags and

handbags, rucksacks, umbrellas and parasols, playthings, sporting apparatus and

sports equipment and accessories, foodstuffs and drinks, agricultural, horticultural

and forestry products, tobacco products and other luxury foodstuffs, namely alcohol,

coffee, tea, chocolate, sugar and spices, and in the field of household goods, namely

electric and non-electric household and kitchen utensils, glassware, ceramics,

porcelain, metal and plastic household and kitchen utensils, household and kitchen

containers, cooking pot sets and in the field of decorative articles and decorations,

namely decorative objects, plants (including artificial plants), fruit (including artificial

fruit), food (including artificial food), seasonal, festive, party and themed decorations

for objects, windows, rooms, buildings and spaces, garlands, flags and films,

auctioneering and auctions, including on the Internet; import-export agencies;

receiving, processing and handling of orders (office functions); procurement services

for third parties (acquisition of goods and services for other companies); order

placement and delivery services and invoice management, including within the

framework of e-commerce; invoicing services; conducting bonus and loyalty

programmes, being customer loyalty schemes for marketing purposes (included in

class 35); follow-up of bonus and loyalty programmes being customer loyalty

schemes, by means of the evaluation and compilation of statistical data (included in

class 35); advertising, attracting customers and customer care by means of mail

advertising (mailings); arranging and conducting of exhibitions and trade fairs for

commercial or advertising purposes; planning, devising and conducting advertising

initiatives; presentation of companies on the Internet and other media; sponsoring in

the form of advertising; publication of printed matter for advertising purposes, in

particular catalogues; presentation of goods on communication media, for retail and

wholesale purposes; updating of advertising material; shop-window dressing; sales

promotion (for others); rental of advertising space, including on the Internet (banner

exchange); rental of advertising material and advertising time on communication

media; distribution of samples, seeking sponsorship; bringing together of various

goods in the aforesaid wholesale fields (except the transport thereof) for others, to

allow customers to view and purchase the goods more easily; marketing (market

research), including on digital networks; market research; opinion polling;

merchandising (sales promotion);research in computer data files (for others) and/or

business research; business information, maintenance of data in computer

Decision on Opposition No B 1 652 430 page: 4 of 20

databases; price setting for goods and services, invoice management for electronic

ordering systems; office machines and equipment rental; vending machine rental

services; rental of sales stands; arranging subscriptions to a telecommunications

service (for others); providing of addresses, commercial and business contacts,

including via the Internet, arranging of commercial transactions, for others, including

within the framework of e-commerce, of mobile phone contracts (for others), of

contracts, for others, for the buying and selling of goods; arranging of advertising and

promotion contracts for third parties; arranging newspaper subscriptions (for others);

business consultancy; planning and monitoring of business developments with

regard to organisational matters; planning (assistance) regarding management;

professional business consultancy for franchise concepts.

Class 39: Transport; Packaging and storage of parcels and/or goods; collection and

delivery of parcels and/or goods; transport of parcels and/or goods by vehicle, ship,

aeroplane; logistics services (included in class 39), in particular order entry, storage

and contract logistics, procurement logistics, distribution logistics and returns

logistics (stock management), including by means of RFID; Transport; freight

brokerage services; haulage (freight transport), other than the customs clearance of

goods, for others; transport brokerage; tracking, including electronic tracking of

goods.

From European Union trade mark registration No 781 732:

Class 7: Electric kitchen machines for crushing, chopping, grinding, cutting, pressing,

stirring or beating, meat mincing machines, sewing machines, dish washers, washing

machines, spin driers;motors and engines (except for land vehicles); agricultural

machines; cleaning machines, mechanical filtering apparatus, pumps for conveying

liquids, solids and air, hand-operated, electric or driven by a petrol engine or being

attachments for hand-operated apparatus or machines; current generators;

machines for metal working, wood working, processing plastic, compressors,

sweeping machines, snow clearing apparatus, cleaning machines, mechanical

filtering apparatus, lifting apparatus; pressure valves, pressure regulators; electric

lawn trimmers, battery-operated hedge cutters, soil aerating devices, garden hoes,

motor scythes, chaff cutters, shredders, mulch mowers, petrol-driven and electric

lawn mowers, lawn mowers in the form of tractors and other vehicles;rope

winches;rope hoists and block and tackle, including electric rope hoists and block

and tackle;compressors and accessories, namely spray guns for paint, tyre inflation

pressure gauges, spray guns, sand blasting apparatus; pressure flushing apparatus;

electrically driven tools for domestic use, cutting, drilling, percussion drilling, planing,

screwing, grinding and milling machines, drill hammers, drilling screws, drilling and

milling stations, mill grinding motors, lathes, electric saws, rocker saws, chain saws,

piercing saws, circular saws, circular saw benches, cutting implements and work

benches adapted for the aforesaid tools, electric planes, grinding apparatus and

machines, electric and hand-operated tackers, electric soldering irons and soldering

stations, soldering guns, hot-melt adhesive guns, vices, electric generators, current

generators, hot-air generators, paint spraying apparatus, apparatus for stripping wall

hangings, hot-air apparatus and blowers, including hot-air apparatus and blowers for

removing paint, tile dividing and cutting machines, electric welding machines, high-

pressure cleaners, sand blasting apparatus, drill sharpeners being apparatus and

attachments for drilling machines, roller blinds, motors and lifting devices for roller

blinds;sewing machines, knitting machines, dish washers, washing machines, ironing

machines, electrically-operated household and kitchen utensils, foil sealers, slicers

for bread and cooked meats, tin openers, mixers, juicers, electric knives, electric

grinders, food processors, pasta-making machines, stirring utensils, meat mincers,

flour mills, coffee grinders, all-purpose cutters, presses, vacuum cleaners;electric

Decision on Opposition No B 1 652 430 page: 5 of 20

lawn mowers, electric rakes, electric choppers;filters being parts of machines, motors

or engines; incubators for eggs; mechanically-operated agricultural and horticultural

apparatus; electric hedge cutters; fans and cylinders for motors and engines.

Class 37: Construction; repair, included in class 37; installation services.

Class 39: Travel arrangement, arrangement of tourist services, sightseeing, rental of

garages and parking places, rental of vehicles, parcel delivery; collecting,

transporting and sorting of waste and secondary raw materials.

The contested goods and services are the following:

Class 7: Machine coupling and transmission components; belts; belt drives; chains;

chain drives; shaft couplings; bearings; bearing housings; bearing pulleys; housed

bearing units, bushes, balls and rollers for bearings, accessories for bearings,

bearing withdrawal sleeves, bearing locating rings, bearing sealing plates and rings.

Class 35: Retail of machine coupling and transmission components, belts, belt

drives, chains, chain drives, shaft couplings, bearings, bearing housings, bearing

pulleys, housed bearing units, bushes, balls and rollers for bearings, accessories for

bearings, bearing withdrawal sleeves, bearing locating rings, bearing sealing plates

and rings.

Class 37: Maintenance services, repair services, refurbishment services, insulation

services relating to machine coupling and transmission components, belts, belt

drives, chains, chain drives, shaft couplings, bearings, bearing housings, bearing

pulleys, housed bearing units, bushes, balls and rollers for bearings, accessories for

bearings, bearing withdrawal sleeves, bearing locating rings, bearing sealing plates

and rings.

Class 39: Distribution and transport services relating to machine coupling and

transmission components, belts, belt drives, chains, chain drives, shaft couplings,

bearings, bearing housings, bearing pulleys, housed bearing units, bushes, balls and

rollers for bearings, accessories for bearings, bearing withdrawal sleeves, bearing

locating rings, bearing sealing plates and rings.

Class 42: Engineering services, technical support services, advisory and consultancy

services relating to industrial automation, geardrives and motors, hydraulics,

pneumatics, engineering parts and components; commissioning services in relation

to machine coupling and transmission components, belts, belt drives, chains, chain

drives, shaft couplings, bearings, bearing housings, bearing pulleys, housed bearing

units, bushes, balls and rollers for bearings, accessories for bearings, bearing

withdrawal sleeves, bearing locating rings, bearing sealing plates and rings.

An interpretation of the wording of the list of goods and services is required to

determine the scope of protection of these goods and services.

The terms ‘including’ and ‘in particular’, used in the opponent’s list of goods and

services, indicates that the specific goods and services are only examples of items

included in the category and that protection is not restricted to them. In other words, it

introduces a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride,

EU:T:2003:107).

Decision on Opposition No B 1 652 430 page: 6 of 20

However, the term ‘namely’, used in the opponent’s list of goods and services 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 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 7

The contested machine coupling and transmission components; belts; belt drives;

chains; chain drives; shaft couplings; bearings; bearing housings; bearing pulleys;

housed bearing units, bushes, balls and rollers for bearings, accessories for

bearings, bearing withdrawal sleeves, bearing locating rings, bearing sealing plates

and rings are dissimilar to the opponent’s goods in Class 7 and services in Classes

35, 37 and 39. The contested goods are specialised mechanical parts and fittings.

The opponent’s goods are a wide range of finished goods in Class 7 such as kitchen

machines, motors, electrical tools for domestic use and agricultural tools. These

goods do not have sufficient links to be found similar. They serve different purposes,

come from different providers and target different end users via different distribution

channels. The mere fact that some of the opponent’s goods could incorporate some

of the applicant’s goods is insufficient by itself to find them similar. Furthermore, the

opponent’s services in Classes 35, 37 and 39, have even less in common with the

applicant’s Class 7 goods. They are intangible, rather than tangible, come from

different providers and target different end users via different distribution channels.

Contested services in Class 35

The contested retail of machine coupling and transmission components, belts, belt

drives, chains, chain drives, shaft couplings, bearings, bearing housings, bearing

pulleys, housed bearing units, bushes, balls and rollers for bearings, accessories for

bearings, bearing withdrawal sleeves, bearing locating rings, bearing sealing plates

and rings are considered similar to the opponent’s wholesale services, including via

the Internet and or via teleshopping channels in the fields of (for example) machines,

tools and goods of metal, vehicle accessories, bicycle accessories, motorised two-

wheel vehicles and accessories therefor in Class 35. The services at issue have the

same nature, since both are services linked to the selling of goods, the same

purpose of allowing consumers to conveniently satisfy different shopping needs and

they have the same method of use.

Contested services in Class 37

When comparing the contested maintenance services, repair services, refurbishment

services, insulation services relating to machine coupling and transmission

components, belts, belt drives, chains, chain drives, shaft couplings, bearings,

bearing housings, bearing pulleys, housed bearing units, bushes, balls and rollers for

bearings, accessories for bearings, bearing withdrawal sleeves, bearing locating

rings, bearing sealing plates and rings with the opponent’s repair, included in class

37; installation services, the nature can be considered the same, the purpose is also

the same in the broadest sense of the word, i.e. that they ‘mend something broken’,

as regards repair and that they ‘fit or put a piece of equipment so that it is ready to be

used’, as regards installation, and to that extent these services are considered similar

to a low degree, but in the absence of an express limitation by the opponent clarifying

the vague terms (repair, included in class 37; installation services), it cannot be

Decision on Opposition No B 1 652 430 page: 7 of 20

assumed that they are provided by the same companies, that their methods of use

coincide, that they share the same distribution channels or that they are in

competition or complementary.

Contested services in Class 39

The contested distribution and transport services relating to machine coupling and

transmission components, belts, belt drives, chains, chain drives, shaft couplings,

bearings, bearing housings, bearing pulleys, housed bearing units, bushes, balls and

rollers for bearings, accessories for bearings, bearing withdrawal sleeves, bearing

locating rings, bearing sealing plates and rings are included in the broad category of

the opponent’s haulage (freight transport). Therefore, they are identical.

Contested services in Class 42

The contested engineering services, technical support services, advisory and

consultancy services relating to motors are considered to be similar to a low degree

to the opponent’s motors in Class 7. These goods and services can be produced or

provided by the same companies and can target the same public. Consequently, the

contested services are deemed similar to a low degree.

However, the remaining engineering services, technical support services, advisory

and consultancy services relating to industrial automation, geardrives, hydraulics,

pneumatics, engineering parts and components; commissioning services in relation

to machine coupling and transmission components, belts, belt drives, chains, chain

drives, shaft couplings, bearings, bearing housings, bearing pulleys, housed bearing

units, bushes, balls and rollers for bearings, accessories for bearings, bearing

withdrawal sleeves, bearing locating rings, bearing sealing plates and rings are

considered to be dissimilar to the opponent’s goods and services in Classes 7, 35, 37

and 39. These goods and services serve different needs, have different intended

purposes and different methods of use. Their producers/providers, distribution

channels and relevant public are also different.

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 to various degrees

are directed at a professional public with specific professional knowledge or

expertise.

The degree of attention is, considering the technical nature of the goods to which the

services relate, higher than average.

Decision on Opposition No B 1 652 430 page: 8 of 20

c) The signs

European Union trade mark registration

No 7 585 061:

European Union trade mark registration

No 781 732:

Earlier trade marks 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 signs are as shown above.

The word ‘MAKRO’ means ‘large-scale; overall’ in some languages, such as Czech,

Latvian and Slovene. For this part of the public whilst having a meaning, per se, this

word has an average degree of distinctiveness in relation to the relevant goods and

services. In other territories it has no meaning, and is, therefore, also normally

distinctive for this part of the public.

The contested sign has no meaning for the relevant public and is, therefore, normally

distinctive.

The figurative elements of the signs, namely their slightly stylised typefaces, their use

of colour, the blue rectangular background of one of the earlier marks and the

underlining of the contested sign, are of a purely decorative nature. Therefore, the

verbal elements of the signs are more distinctive than the figurative elements.

Furthermore, 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. This is because the public does not tend to

analyse signs and will more easily refer to the signs in question by their verbal

element than by describing their figurative elements (14/07/2005, T-312/03,

Selenium-Ace, EU:T:2005:289, § 37).

None of the signs have any element that could be considered clearly more dominant

than other elements.

Visually, the signs coincide in consisting of single five-letter-words and sharing three

of these letters, ‘M-*-*-RO’. They differ in their second and third letters, namely ‘AK’

versus ‘EC’, and their figurative elements listed above.

Decision on Opposition No B 1 652 430 page: 9 of 20

Therefore, the signs are similar to an average degree.

Aurally, the pronunciation of the signs will be highly similar in those parts of the

relevant territory where the letters ‘C’ and ‘K’ will be pronounced identically (for

example in some words in Spanish and English), as in those territories the signs will

coincide in the sound of four letters, ‘M-*-C/K-R-O’. In those parts of the relevant

territory where the letters ‘C’ and ‘K’ will not be pronounced identically, the signs will

coincide in the sound of three letters, ‘M-*-*-R-O’.

Therefore, the signs are either highly similar or similar to an average degree.

Conceptually, part of the public will perceive a meaning in only one of the signs, as

explained above. Therefore, for this part of the public, the signs are not conceptually

similar.

However, in those parts of the relevant territory where neither of the signs has a

meaning then since a conceptual comparison is not possible, the conceptual aspect

does not influence the assessment of the similarity of the signs.

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

examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account

in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade marks enjoy a high degree of

distinctiveness as result of its long standing and intensive use in several European

countries, namely Belgium, the Czech Republic, the United Kingdom, Netherlands,

Spain, Portugal, Greece and Poland. This claim must be properly considered given

that the distinctiveness of the earlier trade mark must be taken into account in the

assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark,

the greater will be the likelihood of confusion, and therefore marks with a highly

distinctive character because of the recognition they possess on the market, enjoy

broader protection than marks with a less distinctive character (29/09/1998, C-39/97,

Canon, EU:C:1998:442, § 18).

The opponent submitted the following evidence:

 A cover letter which gives the number of ‘makro Cash and Carry’ stores in

various countries (for example, Spain has 34, the UK 30 and Poland 29) and

states sales figures for ‘makro Cash and Carry’ companies in 2008 and 2009

(for example Spain approximately EUR 1,350 million, UK EUR 1,050 million,

Poland EUR 2,000 million).

 Annex 1: Two pages of extracts from the opponent’s 2008 and 2009 annual

reports (one page from each). They show MAKRO (denominative) for

services described as Cash and Carry and listing sales figures for Poland,

Spain, Belgium, the Czech Republic and the United Kingdom.

Decision on Opposition No B 1 652 430 page: 10 of 20

 Annex 3: An opinion poll conducted by Millward Brown in 2009 in Spain

shows that 57% of the public know the trademark ‘makro’ and of those people

60% associated the mark with supermarkets.

 Annex 4: An opinion poll conducted in 2006 in Poland shows that 63% of the

public is familiar with the trademark ‘makro’ and of those people 66%

associated the mark with wholesale and retail services.

The evidence supplied by the opponent in the cover letter is only partly corroborated

by the evidence in Annex 1 as this Annex only refers to Poland, Spain, Belgium, the

Czech Republic and the United Kingdom. Furthermore, the other two Annexes only

show recognition of the earlier mark for Poland and Spain.

However, this evidence, Annexes 3 and 4, does show a high degree of awareness in

Poland and Spain, (see figures above) and that this is related to part of the goods

and services protected by the marks, namely wholesale services in Class 35

protected by European Union trade mark registration No 7 585 061.

The evidence is dated from the period 2006 to 2009. However, it should be

remembered that the opposition was filed in April 2010, therefore, the evidence

supplied by the opponent was recent when the opposition was filed.

Furthermore, whilst the earlier figurative marks do not appear in the evidence as

such, the evidence does refer to the only distinctive element, namely the verbal

element ‘makro’. Bearing in mind the minimal and decorative nature of the earlier

marks’ figurative elements, the evidence is, therefore, considered sufficient in relation

to showing the marks as registered as it does not alter the distinctive character of

either of them.

Having examined the material listed above, the Opposition Division concludes that

the earlier trade mark, European Union trade mark registration No 7 585 061, has

acquired a higher than average degree of distinctiveness through its use on the

market, although only for a part of the relevant territory, namely Poland and Spain,

and only for a part of the relevant goods and services, namely those wholesale

services in Class 35.

However, for the other territories and the other goods and services the assessment of

earlier trade mark European Union trade mark registration No 7 585 061 will rest on

its distinctiveness per se. As a whole, the earlier mark has no meaning for any of the

goods and services in question from the perspective of the public in the relevant

territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

The same is also true for European Union trade mark registration No 781 732 and it

too must be seen as being of normal distinctiveness.

e) Global assessment, other arguments and conclusion

The goods and services have been found identical, similar to various degrees and

dissimilar. The earlier trade marks’ degree of distinctiveness is normal for the majority

of the goods and services and territories, but in the case of European Union trade

mark registration No 7 585 061 it has acquired a higher than average degree of

distinctiveness through its use on the market, although only in Poland and Spain and

only for wholesale services in Class 35. The degree of attention of the relevant public

is higher than average.

Decision on Opposition No B 1 652 430 page: 11 of 20

The marks are visually similar to an average degree and aurally either highly similar

or similar. For a part of the public the signs are conceptually not similar, whilst for the

rest of the public the conceptual aspect does not influence the assessment of the

similarity of the signs.

The overall impressions created by the marks are similar. This is because the signs

have a similar composition consisting of a single five letter word and sharing three of

the five letters. Furthermore, in part of the relevant territory, the signs are aurally

highly similar, and, at least for part of the relevant public, there are no concepts to

assist the consumers in differentiating between the signs.

Account must also be 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). Having said that, it must be stressed that 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).

Bearing in mind the above factors, the Opposition Division concludes that there is a

likelihood of confusion for the relevant public with high level of attention. Even the

highly attentive public might be led to believe that the relevant services come from

the same or economically linked undertakings.

Considering all the above, 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

European Union trade mark registrations No 7 585 061 and No 781 732. It follows

that the contested trade mark must be rejected for all the contested services found to

be identical or similar to various degrees to those of the earlier trade marks.

The opposition is not successful insofar as the goods and services that are dissimilar

are concerned. 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 these

earlier rights and directed at these goods and services cannot be successful.

The examination of the opposition will continue under Article 8(1)(b) EUTMR in

connection with the other earlier rights on which the opposition is based, namely:

 European Union trade mark registration No 779 116 for the figurative mark

 European Union trade mark registration No 7 585 045 for the figurative mark

 international trade mark registration No 825 751 for the figurative mark

designatingBulgaria,theCzechRepublic,Hungary,

Poland, Romania and Slovakia.

Decision on Opposition No B 1 652 430 page: 12 of 20