OPPOSITION DIVISION
OPPOSITION No B 2 468 976
PT Comunicações, S.A., rua Andrade Corvo, N° 30, 5° Andar, 1050-009 Lisboa,
Portugal (opponent), represented by C/M/S Rui Pena, Arnaut & Associados, Rua
Sousa Martins, 10, 1050-218 Lisboa, Portugal (professional representative)
a g a i n s t
Sapo S.r.l., Via Santa Caterina 18, 20842 Besana Brianza (MB), Italy (applicant),
represented by Marchi & Partners S.r.l., Via Vittor Pisani 13, 20124 Milano (MI),
Italy (professional representative).
On 30/11/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 468 976 is partially upheld, namely for the following
contested goods:
Class 9: Pressure measuring apparatus; High pressure manometers; Tyre-pressure
measurers; Pressure measuring apparatus.
2. European Union trade mark application No 13 253 745 is rejected for all the
above goods. It may proceed for the remaining goods.
3. Each party bears its own costs.
Preliminary remark
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
REASONS
The opponent filed an opposition against all the goods of European Union trade mark
application No 13 253 745 . The opposition is based on, inter alia,
Portuguese trade mark registration No 450 939 . The opponent invoked
Article 8(1) (b) and Article 8(5) EUTMR.
Decision on Opposition No B 2 468 976 page: 2 of 7
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 Portuguese trade mark registration No 450 939.
a) The goods and services
The goods and services on which the opposition is based are the following:
Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical,
weighing, measuring, signalling, checking ( supervision ), life-saving and teaching
apparatus and instruments; apparatus and instruments for conducting, switching,
transforming, accumulating, regulating or controlling electricity; apparatus for
recording, transmission or reproduction of sound or images; magnetic data carriers,
recording discs; automatic vending machines and mechanisms for coin-operated
apparatus; cash registers, calculating machines, data processing equipment and
computers; fire-extinguishing apparatus.
Class 35: Advertising; business management; business administration; office
functions.
Class 36: Insurance; financial affairs; monetary affairs; real estate affairs.
Class 38: Telecommunications.
Class 41: Education; providing of training; entertainment; sporting and cultural
activities.
Class 42: Scientific and technological services and research and design relating
thereto; industrial analysis and research services; design and development of
computers and computer software.
The contested goods are the following:
Class 7: Compressed air pumps; Pneumatic valve actuators; Compressors;
Compressed air machines; Air compressors for bicycles, motorcycles, vehicles; Tyre
inflation stations.
Class 9: Pressure measuring apparatus; High pressure manometers; Tyre-pressure
measurers; Pressure measuring apparatus.
Class 12: Pumps for bicycles, cycles; Air pumps; Foot pumps for bicycles; Hand
pumps for inflating bicycle tyres.
Decision on Opposition No B 2 468 976 page: 3 of 7
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 pressure measuring apparatus; high pressure manometers; Tyre-
pressure measurers; Pressure measuring apparatus are included in the broad
category of the opponent’s measuring apparatus in Class 9. Therefore, they are
identical.
Contested goods in Classes 7 and 12
The contested goods in Class 7, namely compressed air pumps; pneumatic valve
actuators; compressors; compressed air machines; air compressors for bicycles,
motorcycles, vehicles; tyre inflation stations, and the contested goods in Class 12,
namely pumps for bicycles, cycles; air pumps; foot pumps for bicycles; hand pumps
for inflating bicycle tyres, are considered dissimilar to all the opponent’s goods and
services. These goods and services have different natures, purposes and methods of
use. They are distributed via different channels and target different publics, and their
commercial origins usually do not overlap.
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 goods found to be identical are directed at the public at large
and at business customers with specific professional knowledge or expertise.
The degree of attention may vary from average to high, depending on the specialised
nature of the goods, the frequency of purchase and their price.
c) The signs
Earlier trade mark Contested sign
The relevant territory is Portugal.
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 2 468 976 page: 4 of 7
Both signs are figurative and contain the word ‘SAPO’. In the earlier sign, the verbal
element is depicted in standard, bold, white lower case characters on a black
rectangular background. In the contested sign, the first letter of the verbal element is
much larger than remaining letters ‘APO’ which are placed in the upper part of the
initial letter ‘S’. The letter ‘S’ is stylised and depicted in blue, red, white and green
whereas the letters ‘APO’ are presented in standard upper case characters in blue. In
the lower part of the said letter ‘S’ a representation of two persons on the bikes is
placed.
The element ‘SAPO’, present in both signs, will be understood as a ‘toad’ or ‘frog’ by
the relevant public. As it has no connection with the goods in question, it is
distinctive.
The figurative element of the contested sign is composed of two persons riding on
the bikes. This element can allude to the fact that the goods such as tyre-pressure
measurers are destined for bicycles. In this respect, this element is considered to be
weak in relation to all the relevant goods.
The letter ‘S’ in the contested sign is the dominant element as it is the most eye-
catching.
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).
Visually, the signs coincide in the distinctive element ‘SAPO’ although depicted in
different way in the signs. The signs also differ in the figurative element of the
contested sign which is however weak.
Therefore, the signs are visually similar to an average degree.
Aurally, the signs are identical.
Conceptually, reference is made to the previous assertions concerning the semantic
content conveyed by the marks. As the signs will be associated with a similar
meaning, the signs are conceptually similar to a high degree as the figurative
element is of weak character.
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 claimed that the earlier trade mark enjoys enhanced distinctiveness
but did not file any evidence in order to prove such a claim.
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
Decision on Opposition No B 2 468 976 page: 5 of 7
meaning for any of the goods in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal.
e) 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).
The goods are partly identical and partly dissimilar and they target the public at large
and professionals whose attentiveness will vary from average to high.
The signs are aurally identical, visually similar to an average degree and
conceptually highly similar. The only difference between the signs lies in their
graphical depictions and the figurative element of the contested sign which is not
however sufficient to overcome the aural identity and visual and conceptual similarity
between the signs.
Likelihood of confusion covers situations where the consumer directly confuses the
trade marks themselves, or where the consumer makes a connection between the
conflicting signs and assumes that the goods/services covered are from the same or
economically linked undertakings.
Indeed, it is highly conceivable that the relevant consumer will perceive the contested
mark as a sub-brand, a variation of the earlier mark, configured in a different way
according to the type of goods or services that it designates (23/10/2002, T-104/01,
Fifties, EU:T:2002:262, § 49).
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 Portuguese trade mark registration.
It follows from the above that the contested trade mark must be rejected for the
goods found to be identical to those of the earlier trade mark.
The rest of the contested goods are dissimilar. As similarity of goods and services is
a necessary condition for the application of Article 8(1) EUTMR, the opposition based
on this Article and directed at these goods cannot be successful.
The opponent has also based its opposition on the following earlier trade marks:
European Union trade mark registration No 8 532 368 for the figurative mark
;
Portuguese trade mark registration No 392 759 for the figurative mark
;
Portuguese trade mark registration No 423 037 for the word mark ‘BANDA
LARGA MOVEL NO SAPO’;
Decision on Opposition No B 2 468 976 page: 6 of 7
Portuguese trade mark registration No 432 321 for the word mark ‘SAPO
WEBTV’.
Since the first two figurative marks cover the same scope of goods and services, the
outcome cannot be different with respect to goods for which the opposition has
already been rejected. Therefore, no likelihood of confusion exists with respect to
those goods.
The other earlier marks invoked by the opponent, which are word marks, are less
similar to the contested mark. This is because they contain additional words such as
‘BANDA LARGA MOVEL NO’ or ‘WEBTV’, which are not present in the contested
trade mark.
Earlier Portuguese trade mark registration No 423 037 covers services such as legal
services; security services for the protection of property and individuals; personal
and social services rendered by others to meet the needs of individuals in Class 45,
which are clearly different from the goods for which protection is sought, as they
belong to a completely different market sector from the applicant’s goods in
Classes 7 and 12. Therefore, the outcome cannot be different with respect to goods
for which the opposition has already been rejected; no likelihood of confusion exists
with respect to those goods.
REPUTATION — ARTICLE 8(5) EUTMR
According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered
earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade
mark will not be registered where it is identical with, or similar to, an earlier trade
mark, irrespective of whether the goods or services for which it is applied are
identical with, similar to or not similar to those for which the earlier trade mark is
registered, where, in the case of an earlier European Union trade mark, the trade
mark has a reputation in the Union or, in the case of an earlier national trade mark,
the trade mark has a reputation in the Member State concerned and where the use
without due cause of the contested trade mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier trade mark.
According to Article 95(1) EUTMR, in proceedings before it the Office will examine
the facts of its own motion; however, in proceedings relating to relative grounds for
refusal of registration, the Office will be restricted in this examination to the facts,
evidence and arguments provided by the parties and the relief sought.
It follows that the Office cannot take into account any alleged rights for which the
opponent does not submit appropriate evidence.
According to Rule 19(1) EUTMIR (in the version in force at the time of
commencement of the adversarial part), the Office will give the opposing party the
opportunity to present the facts, evidence and arguments in support of its opposition
or to complete any facts, evidence or arguments that have already been submitted
together with the notice of opposition, within a time limit specified by the Office.
According to Rule 19(2)(c) EUTMIR (in the version in force at the time of
commencement of the adversarial part), when the opposition is based on a mark with
reputation within the meaning of Article 8(5) EUTMR, the opposing party must
provide evidence showing, inter alia, that the mark has a reputation, as well as
evidence or arguments showing that use without due cause of the contested trade
Decision on Opposition No B 2 468 976 page: 7 of 7
mark would take unfair advantage of, or be detrimental to, the distinctive character or
the repute of the earlier trade mark.
In the present case, the notice of opposition was not accompanied by any evidence
of the alleged reputation of the earlier trade mark.
On 13/04/2015 the opponent was given two months, commencing after the end of the
cooling-off period, to submit the abovementioned material. This time limit expired on
04/04/2017.
The opponent did not submit any evidence concerning the reputation of the trade
mark on which the opposition is based.
Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the
opposition must be rejected as unfounded.
COSTS
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.
Since the opposition is successful for only some of the contested goods, both parties
have succeeded on some heads and failed on others. Consequently, each party has
to bear its own costs.
The Opposition Division
Steve HAUSER Katarzyna ZANIECKA Anna ZIÓŁKOWSKA
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.