OQUIDO ABC 1+1 | Decision 2439993 – MIP METRO Group Intellectual Property GmbH & Co. KG v. Econocom Nederland B.V.

OPPOSITION No B 2 439 993

MIP METRO Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (opponent), represented by Eva Schiller, MIP METRO Group Intellectual Property GmbH & Co. KG, Metro-Str. 1, 40235 Düsseldorf, Germany (employee representative)

a g a i n s t

Econocom Nederland B.V., Rond het Fort 38, 3439 MK Nieuwegein, Netherlands (applicant), represented by De Merkplaats B.V., Herengracht 227, 1016 BG Amsterdam, Netherlands (professional representative).

On 26/09/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 439 993 is partially upheld, namely for the following contested goods and services:

Class 9: Computer programs and software; computer hardware; data processing equipment and computers; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; telecommunications equipment, telecommunications auxiliary equipment and telecommunications peripheral devices; computer equipment, computer auxiliary equipment, computer peripheral devices; electronic publications, downloadable; electronic publications recorded on computer media.

Class 16: Paper, cardboard; printed matter; books; magazines [periodicals]; printed folded sheet articles; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.

Class 35: Advertising; business management; business administration; office functions; business management consulting; personnel management consultancy; business management consultancy; consultancy relating to business organisation; business management and organization consultancy; computerised file management; arranging and conducting of trade fairs and exhibitions and other events and meetings for commercial or advertising purposes; arranging of business presentations for commercial or advertising purposes; office functions in the context of filling in rental agreements; business organisation and management assistance and consultancy in the field of data processing; office functions for the management of computer and telecommunication networks, for the management of computer equipment and computer hardware and for controlling computer infrastructures (information management); retailing and wholesaling in relation to computers, computer peripheral devices, data processing equipment and telecommunications apparatus; Information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet.

Class 36: Real estate affairs; real estate management, including rental of real estate and leasing of real estate; real estate and mortgage appraisal; services of a holding company; tax and financial assessments and valuations; research services relating to finance; financial analysis, estimates and budgets; drawing up of financial expert reports; insurance; financing services; financial services; rental-purchase financing; management of assets; financial services for representing the financial interests of others; mediation in the purchase and sale and rental of apartments, houses and other real estate; mediation and consultancy in respect of issuing of loans and mortgages; monetary affairs; financial consultancy in connection with tax issues; consulting relating to real estate investment services; consultancy services relating to all of the aforesaid services, including via telecommunications networks, including the internet, cable networks or other forms of data transfer; information and consultancy relating to the aforesaid services; the aforesaid services whether or not via electronic channels, including the Internet.

Class 41: Entertainment; cultural activities; arranging and conducting trade fairs, congresses, exhibitions, conferences and other events and meetings for educational, cultural or recreational purposes; arranging and conducting of symposiums, seminars, workshops and lectures for educational purposes; publication, lending and dissemination of books, newspapers, magazines, brochures and other publications, including in electronic form; education; providing of training; rental of video recorders and slide projectors for meetings, congresses and exhibitions; rental of flip-charts and overhead projectors for meetings, congresses and exhibitions; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet.

2. European Union trade mark application No 13 176 342 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 some of the goods and services of European Union trade mark application No 13 176 342 , namely against all the goods and services in Classes 9, 16, 35, 36 and 41. The opposition is based on European Union trade mark registration No 11 108 206 Image representing the 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 goods and services

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

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; stationery; packaging material of plastic, not included in other classes, in particular envelopes, bags and films; bags of paper or plastic, for preserving foodstuffs; garbage bags of paper or plastic.

Class 35: Retail services, including via the Internet and/or by means of teleshopping programmes, in relation to chemicals, cleaning preparations, polishing and abrasive preparations, washing preparations, paints, pharmacy products, cosmetics, razors and accessories, perfumery, household goods, objects of utility for the household, fuels, illuminants and motor fuels, industrial oils and greases, lubricants, candles, goods for healthcare, pharmaceutical products, personal hygiene and toiletries, machines, tools and goods of common metal, construction articles, DIY articles and garden articles, hobby requisites and craft supplies, electric goods and electronic goods, sound recording carriers and data carriers, apparatus for lighting, heating, cooking, refrigerating, drying and ventilating, steam cleaning and steam ironing apparatus, sanitary installations and accessories, electric and non-electric household or kitchen utensils, glassware, ceramics, porcelain, metal and plastic goods for household and kitchens purposes, jars for household and kitchen purposes, cutlery, cooking pot sets, and in relation to decorative articles and decorative material, namely ornaments, seasonal, festive, party and themed ornaments for objects, window panes, windows, rooms, buildings and spaces, garlands, flags and films, vehicles and vehicle accessories, bicycles and bicycle accessories, motor-operated two-wheeled vehicles and accessories, fireworks, clocks and watches and jewellery, optical instruments and apparatus, musical instruments, printed matter, stationery, office requisites, bags and saddlery, furniture, furnishings, tents, tarpaulins, clothing, shoes and textile goods, headgear, goods of leather and imitations of leather, cases, bags, rucksacks, umbrellas and parasols, toys, sports apparatus, sports equipment and accessories, foodstuffs, fruit, vegetables and beverages, agricultural products, horticultural products and forestry products, foodstuffs for animals and animal accessories, plants, smokers’ articles, tobacco products and other natural stimulants, namely alcohol, coffee, tea, chocolate, sugar and spices, and in relation to household goods; receiving, processing and handling of orders (office functions); procurement services for third parties (acquisition of goods and services for other companies); order placement, order delivery and invoice management, invoicing; conducting bonus and loyalty programmes, being customer loyalty schemes for marketing purposes (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; rental of advertising material and advertising time on communication media; office machines and equipment rental; vending machine rental services; rental of sales stands; business consultancy; planning and monitoring of business developments with regard to organisational matters; planning (assistance) regarding business management; professional business consultancy, especially for franchise concepts.

Class 36: Financial services, in particular credit bureaux and the issuing of credit for wholesale and retail, hire-purchase financing and arrangement of hire-purchase financing; Real estate rental, broking and leasing.

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; logistics services (included in class 39), in particular order entry, storage and contract logistics, procurement logistics, distribution logistics and returns logistics (stock management).

Class 41: Education and Training for retail business and business optimization; publication of printed matter and of electronic media.

The contested goods and services are the following:

Class 41: Entertainment; sporting and cultural activities; arranging and conducting trade fairs, congresses, exhibitions, conferences and other events and meetings for educational, cultural or recreational purposes; arranging and conducting of symposiums, seminars, workshops and lectures for educational purposes; publication, lending and dissemination of books, newspapers, magazines, brochures and other publications, including in electronic form; education; providing of training; rental of video recorders and slide projectors for meetings, congresses and exhibitions; rental of flip-charts and overhead projectors for meetings, congresses and exhibitions; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet.

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 applicant’s and the opponent’s lists of goods and services, indicate 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, they introduce a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

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 9

The contested computer programs and software may include any type of software, which may be used in different applications, for example for educational purposes. Therefore, the opponent’s education services in Class 41 and these contested goods may coincide in their ultimate educational purpose. They may originate from the same producers/providers and be provided via the same distribution channels to the same end users. Therefore, these goods and services are considered similar.

The contested electronic publications, downloadable; electronic publications recorded on computer media are similar to the opponent’s printed matter in Class 16, as these goods may have the same purpose, namely to make content available to the general public through printed or electronic means. The goods under comparison coincide in their producers and relevant public. Furthermore, they may be in competition.

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Likewise, the electronic goods to which the opponent’s retail services in Class 35 relate cover all goods essentially characterised by their electronic nature, namely those whose operation is based on electronic components, included in Class 9 (16/06/2010, R 1121/2009-1, Prion/Xion, § 16).

The contested data processing equipment and computers are devices that compute, especially programmable electronic machines that perform high-speed mathematical or logical operations or that assemble, store, correlate or otherwise process information.

The contested apparatus for the reproduction of sound is any kind of device that processes and imitates vibrations that travel through the air or another medium and can be heard when they reach a person’s or animal’s ear.

The contested magnetic and optical data carriers are data storage media, which include pre-recorded CDs and DVDs, containing material such as music, images or electronic publications.

Therefore, the opponent’s retail services, including via the Internet and/or by means of teleshopping programmes, in relation to electronic goods, sound recording carriers and data carriers in Class 35 are similar to a low degree to the opponent’s computer hardware; data processing equipment and computers; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; telecommunications equipment, telecommunications auxiliary equipment and telecommunications peripheral devices; computer equipment, computer auxiliary equipment, computer peripheral devices.

The remaining contested goods, interactive multimedia software for playing games; computer software for games, are programs and procedures required to enable a computer to perform a specific task in relation to games.

These goods are different in nature, purpose and method of use from the opponent’s goods in Class 16. They are neither in competition nor complementary and are not manufactured by the same companies.

These contested goods are also dissimilar to the services in Classes 35 (business, advertising and retail services), 36 (financial and real estate services), 39 (transport and storage services) and 41 (education, training and publication services). These goods and services have obviously different natures and methods of use, since services are intangible whereas goods are tangible. Furthermore, they are neither complementary nor in competition, and they are not manufactured/provided by the same companies. Therefore, they are dissimilar.

Contested goods in Class 16

Paper, cardboard; printed matter; stationery are identically contained in both lists of goods.

The contested books; magazine [periodicals]; printed folded sheet articles; photographs; instructional and teaching material (except apparatus) are included in the broad category of the opponent’s printed matter. Therefore, they are identical.

The contested bookbinding material includes, as a broader category, the opponent’s cardboard. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested adhesives for stationery or household purposes are substances used for sticking objects or materials together. They are included in the broad category of, or overlap with, the opponent’s stationery. Therefore, they are identical.

The contested artists’ materials include, as a broader category, or overlap with the opponent’s cardboard. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested plastic materials for packaging (not included in other classes) include, as a broader category, or overlap with the opponent’s packaging material of plastic, not included in other classes, in particular envelopes, bags and films. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested paint brushes are similar to a low degree to the opponent’s stationery because these goods can have the same or similar purposes (painting/drawing), target the same public, be produced by the same companies and be distributed through the same trade channels.

The contested typewriters and office requisites (except furniture) constitute a broad category that includes any item used for office purposes. The contested printers’ type; printing blocks are devices bearing a letter, a group of letters or a sign and are used for letterpress printing. These contested goods are similar to a low degree to the opponent’s office machines and equipment rental in Class 35. These goods and services may be complementary and target the same consumers. Moreover, the services are often provided where the goods are sold.

Contested services in Class 35

Advertising; arranging and conducting of trade fairs and exhibitions and other events and meetings for commercial or advertising purposes are identically contained in both lists of services.

The contested advertising; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are included in the broad category of the opponent’s advertising. Therefore, they are identical.

The contested arranging and conducting of trade fairs and exhibitions and other events and meetings for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are included in the broad category of the opponent’s arranging and conducting of trade fairs and exhibitions and other events and meetings for commercial or advertising purposes. Therefore, they are identical.

The contested business management; business administration; business management consulting; personnel management consultancy; business management consultancy; consultancy relating to business organisation; business management and organization consultancy; business organisation and management assistance and consultancy in the field of data processing; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are included in the broad category of, or overlap with, the opponent’s business consultancy. Therefore, they are identical.

The contested arranging of business presentations for commercial or advertising purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are included in the broad category of, or overlap with, the opponent’s arranging and conducting of exhibitions and trade fairs for commercial or advertising purposes. Therefore, they are identical.

The contested retailing and wholesaling in relation to computers, computer peripheral devices, data processing equipment and telecommunications apparatus; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet overlap with the opponent’s retail services, including via the Internet and/or by means of teleshopping programmes, in relation to electronic goods, sound recording carriers and data carriers. Therefore, they are identical.

The contested computerised file management; Iinformation and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet and the opponent’s business consultancy are all services intended to help companies with the performance of business operations. These services consist of organising people and resources efficiently to direct activities towards common goals and objectives. Consequently, these services have the same nature and purpose. They are usually rendered by the same companies through the same distribution channels and they target the same relevant public. Therefore, they are considered similar to a high degree.

The contested office functions; office functions in the context of filling in rental agreements; office functions for the management of computer and telecommunication networks, for the management of computer equipment and computer hardware and for controlling computer infrastructures (information management); information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are similar to the opponent’s business consultancy. Office functions cover services intended for performing day-to-day operations that are required by a business to achieve its commercial purpose. Therefore, these services have the same purpose. Moreover, the services are provided by the same companies. In addition, they have the same target public.

Contested services in Class 36

The contested real estate affairs; real estate management, including rental of real estate and leasing of real estate; real estate and mortgage appraisal; mediation in the purchase and sale and rental of apartments, houses and other real estate; consultancy services relating to all of the aforesaid services, including via telecommunications networks, including the internet, cable networks or other forms of data transfer; information and consultancy relating to the aforesaid services; the aforesaid services whether or not via electronic channels, including the Internet overlap with the opponent’s real estate rental, broking and leasing. Therefore, they are identical.

The opponent’s financial services, in particular credit bureaux and the issuing of credit for wholesale and retail, hire-purchase financing and arrangement of hire-purchase financing refer to services provided by the finance industry. The finance industry encompasses a broad range of organisations that deal with the management, investment, transfer and lending of money. Among these organisations are, for example, banks, credit card companies, insurance companies, consumer finance companies, stock brokerages and investment funds. These services include, as a broader category, the contested services of a holding company; tax and financial assessments and valuations; research services relating to finance; financial analysis, estimates and budgets; drawing up of financial expert reports; financing services; financial services; rental-purchase financing; management of assets; financial services for representing the financial interests of others; mediation and consultancy in respect of issuing of loans and mortgages; monetary affairs; financial consultancy in connection with tax issues; consulting relating to real estate investment services; consultancy services relating to all of the aforesaid services, including via telecommunications networks, including the internet, cable networks or other forms of data transfer; information and consultancy relating to the aforesaid services; the aforesaid services whether or not via electronic channels, including the Internet. Therefore, they are identical.

Providing the contested insurance services consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages.

The contested insurance services serve different purposes from financial services but there are also some significant similarities because insurance services are of a financial nature and insurance companies are subject to licensing, supervision and solvency rules similar to those governing banks and other institutions providing financial services. Most banks also offer insurance services, including health insurance, or act as agents for insurance companies with whom they are often economically linked. Additionally, it is not unusual to see a financial institution and an insurance company in the same economic group.

Therefore, although insurance services and financial services have different purposes, they are of a similar nature, may be provided by the same undertaking or related undertakings and have the same distribution channels. To that extent, the contested insurance services are similar to the opponent’s financial services, in particular credit bureaux and the issuing of credit for wholesale and retail, hire-purchase financing and arrangement of hire-purchase financing.

Contested services in Class 41

The contested publication, lending and dissemination of books, newspapers, magazines, brochures and other publications, including in electronic form; Information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are included in the broad category of, or overlap with, the opponent’s publication of printed matter and of electronic media. Therefore, they are identical.

The contested education; information and consultancy relating to the aforesaid service; all the aforesaid services whether or not provided via electronic channels, including the Internet include, as a broader category, the opponent’s education for retail business and business optimization. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested providing of training; information and consultancy relating to the aforesaid service; all the aforesaid service whether or not provided via electronic channels, including the Internet include, as a broader category, the opponent’s training for retail business and business optimization. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested arranging and conducting trade fairs, congresses, exhibitions, conferences and other events and meetings for educational, cultural or recreational purposes; arranging and conducting of symposiums, seminars, workshops and lectures for educational purposes; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are closely connected to the services of the earlier mark education and training for retail business and business optimization. These services have the same educative purpose. These services may be complementary and use the same distribution channels. Consequently, these services are considered to be similar.

The contested entertainment; information and consultancy relating to the aforesaid service; all the aforesaid services whether or not provided via electronic channels, including the Internet are similar to a low degree to the opponent’s publication of printing matters. These services are complementary and are often provided by the same companies.

The contested cultural activities; information and consultancy relating to the aforesaid service; all the aforesaid services whether or not provided via electronic channels, including the Internet are similar to a low degree to the opponent’s publication of printed matter and of electronic media. These services are complementary and are often provided by the same companies.

The contested rental of video recorders and slide projectors for meetings, congresses and exhibitions; rental of flip-charts and overhead projectors for meetings, congresses and exhibitions; information and consultancy relating to the aforesaid services; all the aforesaid services whether or not provided via electronic channels, including the Internet are similar to a low degree to the opponent’s arranging and conducting of exhibitions and trade fairs for commercial or advertising purposes in Class 35. These services have relevant connections, given that they are complementary and they target the same public, namely business professionals involved in the arranging and organisation of congresses, commercial events, exhibitions, etc.

The contested sporting activities; information and consultancy relating to the aforesaid service; all the aforesaid services whether or not provided via electronic channels, including the Internet refer to activities involving physical exertion and skills that are often governed by a set of rules or customs and can be undertaken competitively. These goods are dissimilar to the opponent’s goods and services in Classes 16, 35, 36, 39 and 41. They do not have the same nature, purpose and method of use. They are neither complementary nor in competition. In addition, they are not provided/manufactured by the same companies.

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 in Class 9 that are similar to various degrees are directed at the public at large and at business customers with specific knowledge in the IT field. The degree of attention will be in general average, and higher in relation to expensive purchases.

The goods in Class 16 that are identical or similar to various degrees are directed at the public at large displaying an average degree of attention.

The services in Class 35 that are identical or similar to various degrees are directed at business customers. The degree of attention will be higher inasmuch as these services have an influence on the consumers’ businesses.

The services in Class 36 found to be identical or similar are directed at the public at large. The financial services target the general public, who is reasonably well informed and reasonably observant and circumspect. However, since such services are specialised services that may have important financial consequences for their users, consumers’ level of attention would be quite high when choosing them (03/02/2011, R 719/2010-1, f@ir Credit (fig.) / FERCREDIT, § 15; 19/09/2012, T-220/11, F@ir Credit, EU:T:2012:444, dismissed; 14/11/2013, C-524/12 P, F@ir Credit, EU:C:2013:874, dismissed). The same reasoning applies to the insurance services.

In addition, as regards the real estate services, ‘the purchase and sale of property are business transactions that involve both risk and the transfer of large sums of money. For these reasons, the relevant consumer is deemed to possess a higher-than-average degree of attention, since the consequences of making a poor choice through lack of attentiveness might be highly damaging’ (decision of 17/02/2011, R 817/2010-2, FIRST THE REAL ESTATE (fig.) / FIRST MALLORCA (fig.) et al., § 21).

Finally, the services in Class 41 found to be identical or similar to various degrees are directed at the public at large and at business customers. As regards services such as cultural activities, the targeted public’s degree of attention will be average, while in relation to the contested rental of video recorders and slide projectors for meetings, congresses and exhibitions; rental of flip-charts and overhead projectors for meetings, congresses and exhibitions the degree of attention might be higher depending on the purpose of the meeting and whether or not the targeted public is composed of professionals.

The signs

Image representing the Mark

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 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 consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The verbal elements of the marks are meaningless in certain territories, for example in English- and French-speaking countries. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- and French- speaking parts of the public.

Both trade marks are figurative signs containing verbal and figurative elements. In such cases, 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59).

The earlier trade mark is a figurative mark consisting of a figurative element on the left and a verbal element on the right. The figurative element is a green basket above which three orange stars are depicted. The verbal element is ‘odido’ written in an orange lower case typeface, with the exception of the letter ‘i’, which is green.

The word ‘odido’ has no meaning for the public under analysis in relation to the opponent’s goods and services and has an average level of distinctiveness in relation to these goods and services.

The figurative basket can be considered weak in relation to retail services, as it can be perceived as a shopping basket.

The figurative stars are of average distinctiveness in relation to the goods and services at issue.

The earlier mark contains no elements that could be considered more dominant than others.

The contested sign is also a figurative mark, having a figurative element on the left and a verbal element on the right. The figurative element is a multicoloured square consisting of four squares: one orange square in the top left corner containing a laptop, one purple square in the top right corner containing the letters ‘abc’, one yellow square in the bottom left corner containing the element ‘1+1’ and one red square in the bottom right corner containing a desk.

The verbal element consists of the word ‘Oquido’ in title case letters. The verbal element is meaningless for the public under analysis and has a normal level of distinctiveness.

In the contested sign, the figurative square as a whole and the verbal element are co-dominant. The elements depicted within the squares (in particular the laptop and the desk), given their size, are barely visible and have a rather reduced impact.

Visually, the signs coincide in the letters ‘O*IDO’. They also have the same structure, with a figurative square (or relatively square in the case of the earlier mark) element on the left and the verbal element on the right.

The marks differ in their figurative elements and their middle letters, namely ‘d’ in the earlier mark and ‘qu’ in the contested sign. However, account should be taken of the visual similarity between ‘d’ and ‘q’ when these letters are depicted in lower case. Both these letters have a rounded shape and a vertical stroke (even though the stroke of ‘d’ goes up while the stroke of ‘q’ goes down).

It is settled case-law that the differences stemming from the middle parts of signs are of less importance than the beginnings and endings of the signs (e.g. 01/02/2012, T-353/09, mtronix, EU:T:2012:40, § 42). In the present case, the beginning and the ending of the verbal elements of the signs are identical. Moreover, as already pointed out, the figurative elements have less impact than the verbal elements.

Therefore, for the reasons given above, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the signs coincide in the sound of the letters ‘O*IDO’. They differ in the letters in the middle of the verbal elements of the signs, namely ‘d’ in the earlier mark and ‘qu’ in the contested sign.

The verbal elements are the same length and their pronunciation is highly similar in rhythm and pattern. Moreover, both verbal elements of the signs are composed of three syllables, /O-DI-DO/ in the earlier mark and /O-KI-DO/ in the contested sign, and the first and the last syllables are identical. This similarity in the beginnings and endings make the signs aurally similar to at least an average degree (see similar reasoning in 01/02/2012, T-353/09, mtronix, EU:T:2012:40, § 44).

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the figurative elements of the marks. As the signs will be associated with dissimilar meanings, the signs are not conceptually similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 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.

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).

In the present case, the conflicting signs are visually similar to an average degree, aurally similar to at least an average degree and conceptually not similar. Nevertheless, the fact that the marks are conceptually not similar should not be overemphasised, given that this assessment is based on the concepts conveyed by figurative elements, which have less impact than the verbal elements, as explained above.

The contested goods and services are partly identical, partly similar to various degrees and partly dissimilar.

As regards the differences stemming from the different figurative elements and the stylisation of the signs, as previously noted, the public will tend to refer to the goods and services in question by their verbal elements, ‘odipo’ and ‘Oquido’, rather than by describing the stylisation of the lettering of the mark and the figurative elements.

Moreover, as regards the difference based on the middle letters, again, consumers focus more on the beginnings and endings of signs, namely the identical initial syllable, ‘O’, and the final part, ‘IDO’.

Furthermore, 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). Furthermore, 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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English- and French-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark. Even for goods and services found to be similar to a low degree, the important visual and, especially, aural similarities outweigh the lower degree of similarity of some goods and services.

The rest of the contested goods and 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 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

Gueorgui IVANOV

Patricia LOPEZ FERNANDEZ DE CORRES

Volker MENSING

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.

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