OPPOSITION DIVISION

OPPOSITION No B 2 756 636

UP, 27-29, avenue des Louvresses, 92230 Gennevilliers, France (opponent),

represented by Casalonga Alicante, S.L., Avenida Maisonnave, 41-6C, 03003

Alicante, Spain (professional representative)

a g a i n s t

WML Wealth Management Legal Holding GmbH & Co. KG, Friedrich-List-Str. 3,

01445 Radebeul, Germany (applicant), represented by Riekert & Schmidtke, Am

apparatus and instruments; apparatus and instruments for

conducting, accumulating electricity; apparatus for recording,

transmission or reproduction of sound or images; data processing

apparatus and equipment and accessories; computer software;

data storage devices.

Class 16: Paper, cardboard; printed matter; photographs; stationery and

educational supplies; office requisites and office machines;

decoration and art materials and media; disposable paper products.

Class 35: Advertising; business management; business administration;

marketing services; office functions.

designing of Internet web sites.

2. European Union trade mark application No 15 214 661 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.

Decision on Opposition No B 2 756 636 page: 2 of 13

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),

European Union trade mark application No 15 214 661 for the figurative mark

16, 35, 38, 41 and 42. The opposition is based on European Union trade mark

registration No 13 466 081 and French trade mark registration No 4 133 116, both 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

a) The goods and services

Preliminary remark

The English version of the list of goods and services of the contested mark include in

Class 16 the following ‘paper cardboard’ and ‘decorating and art materials and

hangers’. However, these are clear typographical and translation mistakes which do

not alter the scope of protection of this mark. The contested mark was applied for in

German, and the relevant parts of the list of goods and services in German are

‘Papier, Pappe (Karton)’ and ‘Dekorations- und Künstlerbedarfsmaterialien und –

mittel’ of which the correct English translations are ‘paper, cardboard’ and ‘decoration

and art materials and media’. Article 147(3) EUTMR states in this regard ‘In cases of

Decision on Opposition No B 2 756 636 page: 3 of 13

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

Class 9: Magnetic cards, in particular magnetic payment cards, Identity cards,

magnetic, Smart cards [integrated circuit cards], Magnetic recording carriers; Data

data processing equipment and computers.

Class 16: Printed matter, prospectuses, printed cheques, printed cards,

newspapers and journals; Paper and cardboard (untreated, semi-finished or for

stationery or printing); Printed matter, books and manuals; Stationery; Office

requisites (except furniture); Instructional and teaching material (except apparatus).

Class 35: Arranging subscriptions to computer databases for others;

Organisational consultancy; Business management; Administration; Management

(accounting, administration), analysis and processing of business information;

Business administration; Business administration for the acquisition of goods or

services by means of prepaid cheques or cards; Consultancy and organisation of

business operations for obtaining customer loyalty; Publicity and sales promotion;

and systemisation of data into computer databases; Rental of advertising space.

Class 36: Issuing loyalty cards (financial services), issuing and reimbursement

of orders, cheques and cards used as means of payment for benefits provided to

employees, individuals, associations, works councils or the like, to companies and

local and regional authorities, financing services of all kinds, investment of funds,

electronic funds transfer, credit card and debit card services, financial affairs and

financial operations, financial information and information relating to the aforesaid

benefits; All the aforesaid services may be provided online; Insurance, in particular

savings banks; Insurance underwriting services; Banking, monetary affairs,

Exchange agencies, Financial portfolio management, Debt collection agencies;

computer terminals, communications by telephone, electronic mail, transmission of

information, messages and images by satellite, by telecommunications networks

(including mobile telephones), by data transmission networks and by computerised

communications networks, such as the Internet or intranets, providing access to

electronic sites, connection by means of telecommunications to computerised

communications networks, such as the Internet and intranets, conveying and

connection services for telecommunications, providing access to computerised

Decision on Opposition No B 2 756 636 page: 4 of 13

communications networks, including the Internet and intranets; News agencies;

News agencies; Radio, telephone or telegraph communications services; Television

and radio broadcasting; Computer-aided transmission of messages and images;

Communications by fiber [fibre] optic networks; Providing user access to a global

congresses, conventions; Organisation and conducting of competitions (education or

of exhibitions for cultural, artistic or educational purposes; Organization of sports

competitions; Organisation of shows; Providing museum facilities (presentation,

exhibitions); Television entertainment; Radio entertainment; Arranging and

conducting entertainment, games; On-line games (over the Internet); Provision of

training and education; Correspondence courses; Practical training demonstrations;

Workshops (Arranging and conducting of -) [training]; Publication and lending of

books; Copywriting and publication of texts, except publicity texts; Publication of

electronic books and journals on-line.

Class 42: Internet hosting, secure messaging services; Creation (design-

development) of virtual and interactive images; Creation (design and development)

recording, transmission, reproduction and processing of data, sound and images,

telecommunications terminals, database servers, centres providing access to a

computer network or data transmission networks are implemented, and monitoring

and effectiveness of the aforesaid apparatus and instruments; Computer

programming; Computer software design; Rental of computer hardware and

software; Installation, maintenance and updating of computer software; Duplication

of computer programs; Engineering services relating to computers; Computer

programming; Computer software consultancy; Consultancy in the design and

development of computer hardware; Rental of apparatus for recording data; Rental

of apparatus for transmission, reproduction and processing of data; Creating (design)

and maintenance (updating) of computer sites, for others; Design and development

Class 9: Scientific, photographic, cinematographic, optical, weighing,

measuring 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;

data processing apparatus and equipment and accessories; computer software;

distance and dimension measuring instruments; data storage devices.

Decision on Opposition No B 2 756 636 page: 5 of 13

Class 16: Paper, cardboard; printed matter; photographs; stationery and

educational supplies; office requisites and office machines; decoration and art

materials and media’; disposable paper products.

thereto; industrial analysis and research services; design and development of

computer hardware and software; creating and designing of Internet web sites.

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 ‘in particular’, ‘such as’, ‘including’, 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,

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

Apparatus for recording, transmission or reproduction of sound or images; data

processing equipment; computer software are identically contained in both lists of

goods.

The contested data processing apparatus and accessories include, as a broader

category the opponent’s computers, computer software. Since the Opposition

Division cannot dissect ex officio the broad category of the contested goods, they are

considered identical to the opponent’s goods.

Decision on Opposition No B 2 756 636 page: 6 of 13

The contested data storage devices include, as a broader category the opponent’s

computers. Since the Opposition Division cannot dissect ex officio the broad category

of the contested goods, they are considered identical to the opponent’s goods.

opponent’s apparatus for recording, transmission or reproduction of sound or images

complementary since, for example, the quality of cables is one of the parameters

which determines the quality of the recording of sound and/or images.

The contested scientific apparatus and instruments are similar to the opponent’s

services of scientific and industrial research (technical research) relating to the new

information, computer and communications network, communications and virtual and

interactive image technologies in Class 42 since they can coincide in producer and

end user. Furthermore they are complementary.

However, the remaining goods in this class, namely weighing, measuring apparatus

and instruments; apparatus and instruments for switching, transforming, regulating or

Class 16 since they clearly differ in their natures, usual origins, trade channels,

methods of use and are neither complementary nor in competition with each other.

The degree of dissimilarity between these contested goods and the opponent’s

services in Class 35, 36, 38, 41 and 42 is even greater. These goods and services

have a different nature and purpose. They are not complementary nor in competition.

They have different distribution channels and sales outlets. It is not usual that the

same kinds of undertakings are involved in the production or the provision of these

goods and services. They are, therefore, dissimilar.

Contested goods in Class 16

term. ‘Office requisites’ cover a wide range of products aimed to be used in the office,

whereas ‘office machines’ in Class 16 refers to office-related machines, which are

primarily used as office requisites. Since the term ‘office requisites’, as a broader

term, covers ‘office machines’, these goods are identical.

Decision on Opposition No B 2 756 636 page: 7 of 13

The contested decoration and art materials and media overlap with the opponent’s

paper and cardboard (untreated, semi-finished or for stationery or printing).

Therefore, they are identical.

Contested services in Class 35

Business management; business administration are identically contained in both lists

of services.

The contested advertising; marketing services are identical to the opponent’s

organisation and implementation of promotional activities and campaigns relating to

obtaining customer loyalty either because the opponent’s services are included in, or

overlap with, these contested services.

The contested office functions cover services which are aimed at performing day-to-

day operations that are required by a business to achieve its commercial purpose.

The opponent’s business administration includes the efficient organization of people

Telecommunications are identically contained in both lists of services.

Contested services in Class 41

Education; providing of training are identically contained in both lists of services

(including synonyms).

The contested services of vocational retraining are included in the broad category of

the opponent’s services of provision of training and education. Therefore, they are

identical.

opponent’s television entertainment as well as the contested sporting and cultural

cultural, artistic or educational purposes and organization of sports competitions.

contested services, they are considered identical to the correspondent opponent’s

Contested services in Class 42

Creating and designing of Internet web sites; design and development of computer

hardware and software are identically contained in both lists of services (including

synonyms).

Decision on Opposition No B 2 756 636 page: 8 of 13

The contested scientific and technological services and research and design relating

thereto; industrial analysis and research services overlap with the opponent’s

scientific and industrial research (technical research) relating to the new information,

computer and communications network, communications and virtual and interactive

be borne in mind that the average consumer’s degree of attention is likely to vary

In the present case, the goods and services found to be identical or similar are

directed at the public at large as well as at the business customers with specific

professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on

the price, specialised nature, or terms and conditions of the purchased goods and

services.

c) The signs

Sabèl, EU:C:1997:528, § 23).

The earlier trade mark is a figurative mark composed of two bold letters ‘UP’ in white,

placed within an orange square. The letters are written in a rather standard typeface

while the letter ‘U’ is capitalized and the letter ‘P’ could be perceived as either written

in lowercase, or written as a capital letter but placed lower than the letter ‘U’.

The contested sign is a figurative mark consisting of verbal elements ‘UP Unitedprint’,

while the verbal element ‘UP’, in bold white characters is placed within a black

square, followed by the remaining verbal element, ‘Unitedprint’, which is written in

bold black, rather standard, typeface.

The unitary character of the European Union trade mark means that an earlier

Decision on Opposition No B 2 756 636 page: 9 of 13

consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam,

EU:C:2008:511, § 57). This applies by analogy to international registrations

designating the European Union. Therefore, a likelihood of confusion for only part of

the relevant public of the European Union is sufficient to reject the contested

The common element ‘UP’ could be perceived either as a combination of two letters

depending if it will be perceived as a preposition, adverb, verb or adjective (see e.g.

https://www.collinsdictionary.com/dictionary/english/up_1). Moreover, considering the

composition of the contested sign, there it might be understood as the abbreviation

for ‘united print’. Yet, without citing all the meanings, the Opposition Division finds

that whatever way it will be understood by the relevant public, it is not straightforward

descriptive, allusive or otherwise weak for the relevant goods and services, therefore

it is distinctive.

In its observations, the applicant argues that the earlier mark has a low degree of

distinctiveness because the word ‘up’ will be perceived as ‘increase, jump, rise or

raise’ by the relevant public and therefore it will be recognized ‘as being the

these meanings of the term ‘up’ and the opponent’s goods and services.

The applicant furthermore claims that the earlier trade mark has a low degree of

distinctive character since ‘as far as short signs are concerned, they are in principle

of a low degree of inherent distinctiveness’ [sic]. The Opposition Division points out

that the General Court has stated in a number of cases that even a trade mark

containing a single letter or a single numeral may indeed be inherently distinctive

(judgments of 08/05/2012, T-101/11, G, EU:T:2012:223, § 50; 06/10/2011, T-176/10,

Seven for all mankind, EU:T:2011:577, § 36; 05/11/2013, T-378/12, X,

EU:T:2013:574, § 37-51).

components in trade marks.

The same rules apply to two-letters trade marks. Hence, unless the letter

combination itself is descriptive or otherwise related to the goods and services, these

components are not necessarily limited in their distinctiveness.