OPPOSITION DIVISION

OPPOSITION No B 2 789 090

O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom

(opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way,

Cambridge CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

Massimo Gagliardi, Via Cadore 122, 20831 Seregno, Italy; Massimilano Cesana,

Via Dante Cesana 45, 20841 Carate Brianza, Italy; and Simona Rivolta, Via Alfieri 3,

3. The applicants bear the costs, fixed at EUR 620.

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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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

Decision on Opposition No B 2 789 090 page: 2 of 9

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

a) The goods

The goods on which the opposition is based are, inter alia, the following:

European Union trade mark registration No 9 279 456

Class 14: Precious metals and their alloys and goods in precious metals or coated

therewith, not included in other classes; jewellery, precious stones; horological and

chronometric instruments; keyrings; cufflinks.

European Union trade mark registration No 12 366 522

Class 25: Clothing, footwear, headgear; shirts, t-shirts, sweatshirts, skirts, jogging

suits, trousers, jeans, pants, shorts, rainwear, cloth bibs, blouses, sweaters, jackets,

coats, jumpers, gloves, neckties, scarves, hats, caps, sunvisors, boots, slippers,

other than for medical purposes; bath preparations, not for medical purposes; beauty

masks; bleaching preparations [decolorants] for cosmetic purposes; breath

freshening sprays; canned pressurized air for cleaning and dusting purposes;

cleaning preparations; colorants for toilet purposes; color- [colour-] brightening

chemicals for household purposes [laundry]; color-removing preparations; cosmetic

creams; cosmetic dyes; cosmetic kits; cosmetic pencils; cosmetic preparations for

skin care; cosmetics; cotton sticks for cosmetic purposes; cotton wool for cosmetic

purposes; decorative transfers for cosmetic purposes; denture polishes; deodorants

for human beings or for animals; depilatory preparations; detergents other than for

use in manufacturing operations and for medical purposes; dry-cleaning

Decision on Opposition No B 2 789 090 page: 3 of 9

purposes; nail care preparations; nail polish; perfumery; perfumes; polishing

sunscreen preparations; tissues impregnated with cosmetic lotions; toiletries.

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,

recorded computer software; software applications; mobile software applications,

downloadable applications for multimedia devices; computer games; computer game

software; computer games programs; PDAs (Personal Digital Assistants); pocket

PCs; mobile telephones; laptop computers; telecommunications network apparatus;

drivers software for telecommunications networks and for telecommunications

apparatus; protective clothing; protective helmets; televisions; headphones; global

positioning system [GPS] apparatus; satellite navigation devices; computer software

recorded onto CD Rom; SD-Cards (secure digital cards); glasses; spectacle glasses;

sunglasses; protective glasses and cases therefor; contact lenses; cameras; camera

lenses; MP3 players; audio tapes, audio cassettes; audio discs; audio-video tapes;

audio-video cassettes; audio-video discs; video tapes; video cassettes; video discs;

CDs, DVDs; downloadable electronic publications; downloadable image files;

downloadable music files; mouse mats; magnets; mobile telephone covers; mobile

telephone cases; hands free kits for phones; magnetic cards; encoded cards; mobile

phone application software; software for telecommunication; software for the

processing of financial transactions; electronic notice boards; electric batteries;

battery chargers; security alarms; security cameras; security warning apparatus;

security purposes; computer software for insurance purposes; SIM cards; aerials;

operating programs; computer peripheral devices; data processing apparatus;

instruments; modems; electric monitoring apparatus; television apparatus; testing

apparatus not for medical purposes; telecommunication transmitters; parts and

fittings for all the aforesaid goods.

Class 25: Clothing, footwear, headgear; Aprons [clothing]; Ascots; Babies' pants

[clothing]; Bandanas [neckerchiefs]; Bath robes; Bath sandals; Bath slippers; Bathing

caps; Bathing drawers; Beach clothes; Beach shoes; Belts [clothing]; Belts (Money -)

[clothing]; Berets; Bibs, not of paper; Boas [necklets]; Bodices [lingerie]; Boot uppers;

Boots; Boots for sports; Brassieres; Breeches for wear; Camisoles; Caps [headwear];

Chasubles; Clothing; Clothing for gymnastics; Clothing of imitations of leather;

Decision on Opposition No B 2 789 090 page: 4 of 9

heated; Footwear; Footwear uppers; Frames (Hat -) [skeletons]; Fur stoles; Furs

Goloshes; Gymnastic shoes; Half-boots; Hats; Hats (Paper -) [clothing]; Headbands

[clothing]; Headgear for wear; Heelpieces for footwear; Heelpieces for stockings;

Heels; Hoods [clothing]; Hosiery; Inner soles; Jackets [clothing]; Jackets (Stuff -)

[clothing]; Jerseys [clothing]; Knitwear [clothing]; Lace boots; Layettes [clothing]; Leg

warmers; Leggings [trousers]; Linings (Ready-made -) [parts of clothing]; Liveries;

Maniples; Mantillas; Masquerade costumes; Miters [hats]; Mittens; Motorists'

clothing; Muffs [clothing]; Neckties; Nonslipping devices for footwear; Outerclothing;

boots; Suits; Sun visors; Suspenders; Sweat-absorbent underclothing [underwear];

Sweaters; Swimsuits; Teddies [undergarments]; Tee-shirts; Tights; Tips for footwear;

Togas; Top hats; Topcoats; Trouser straps; Trousers; Turbans; Underpants;

Underwear; Uniforms; Veils [clothing]; Waistcoats; Waterproof clothing; Welts for

footwear; Wet suits for water–skiing; Wimples; Wooden shoes; clothing, footwear,

headgear; articles of clothing; articles of outer clothing; articles of underclothing;

athletic clothing; bathing costumes; beachwear; blouses; body warmers; boots; caps;

cardigans; casual clothing; casual footwear; clothing for sportswear; clothing for

children; clothing for babies and infants; coats; costumes; denim jackets; dresses;

exercise wear; formal wear; hooded sweatshirts; hosiery; jackets; jeans; knitwear;

ladies wear; leather clothing; men's clothing; nightwear; pants; pantyhose; printed t-

shirts; polo shirts; pyjamas; rainproof clothing; skirts; shirts; shorts; sleep wear;

slippers; socks; stockings; suits; sweaters; sweat shirts; sweat bottoms; swimwear;

tights; t-shirts; tops; track suits; trousers; underwear; underpants; vests; vest tops;

waistcoats; waterproof clothing; wraps; jumpers; boiler suits; romper suits;

dungarees; gloves; neckties; scarves; sunvisors; sneakers; sandals; shoes; parts

and fittings for all the aforesaid goods.

The contested goods are the following:

Class 3: Perfume.

Class 25: Clothing.

As a preliminary remark, the applicants raise the issue of the different market sector

that allegedly distinguish the conflicting signs. In particular, the applicants claim that

the opponent is active in the telecommunication sector whereas the applicants

operate in luxury and quality clothing and accessories. In this regard, it should be

pointed out that the comparison of the goods and services must be based on the

wording indicated in the respective lists of goods and/or services. The actual or

intended use of the goods and services not stipulated in the list of goods and/or

Decision on Opposition No B 2 789 090 page: 5 of 9

Contested goods in Classes 3, 9, 14 and 25

The contested perfume in Class 3, spectacles [optics] in Class 9 and clothing in

Class 25 are identically contained in the lists of goods (including synonyms).

The contested clocks in Class 14 are included in the broad category of the

opponent’s horological instruments. Therefore, they are identical.

In the present case, the goods found to be identical are directed at the public at

large.

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

the price and sophistication of the goods purchased, in particular regarding goods

such as spectacles [optics], which may be selected thoroughly before buying.

c) The signs

EUTMs No 9 279 456 & No 12 366 522

(1)

O2

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.

Decision on Opposition No B 2 789 090 page: 6 of 9

referring to it as ‘zero’, the Opposition Division finds it appropriate to focus the

comparison of the signs on the English-speaking part of the public. Even if the word

element ‘zero’ appears below it in the contested sign, forming part of the wording

‘zeroduemilano’, and according to the applicants this will lead the consumer to

correctly pronounce the mark as a whole, the Opposition Division is of the opinion

that this wording is too small and is placed in a secondary position to be perceived at

first sight.

As to the contested sign, even if it includes the letter ‘M’ at the end of the element

‘02M’, this does not alter the fact that the public will most probably perceive the same

concept of the chemical formula as this is also aurally clear. Furthermore, the

applicants’ argument stating that the average consumer will recognise the telephonic

city code of the city of Milan (02) is not sustainable for the relevant public analysed,

even taking into account that the goods applied for could all be considered fashion

items as argued by the applicants.

The letter ‘M’ of the contested sign may be perceived as a letter of the alphabet or as

a reference to ‘medium’, as the use of this letter is a common abbreviation. This may

have a bearing on distinctiveness at least regarding clothing, given that this letter is

used to indicate a ‘medium size’ in this kind of goods. Therefore, in this particular

case, this element is non-distinctive regarding the goods in Class 25. In connection to

the remaining relevant goods, this element is distinctive.

The wording ‘zeroduemilano’ also present in the contested sign does not convey any

meaning as a whole for the relevant public. However, the elements ‘zero’ (‘the figure

(‘something owed to someone’) may be perceived and mentally broken down by, at

256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T–146/06, Aturion, EU:T:2008:33,

as correctly pointed out by the applicants, the distinctiveness of this element is low in

relation to all the relevant goods and this part of the public. For the remaining part of

the public not grasping any meaning in the word ‘milano’, it is distinctive.

The contested sign also includes the registered trade mark symbol, ®. This is an

informative indication that the sign is purportedly registered and is not part of the

trade mark as such. Consequently, this will not be taken into consideration for the

purposes of comparison.

The element ‘02M’ in the contested sign is the dominant element as it is the most

Decision on Opposition No B 2 789 090 page: 7 of 9

Consumers generally tend to focus on the beginning of a sign when they encounter a

placed at the left of the sign (the initial part) the one that first catches the attention of

the reader.

Visually, the signs coincide in the characters ‘02’, though slightly differ in the

contours of ‘O’ in the earlier marks (1) as compared to ‘0’ in the contested sign, as

well as in the fairly standard bold typeface and the crosswise stroke appearing inside

the ‘0’ of the latter. The signs further differ in the additional letter ‘M’ of the contested

Aurally, as stated above, the pronunciation of the signs coincides in the sound ‘O2’,

placed at the beginning of the contested sign, and differs in the sound of the

additional letter ‘M’ of the contested sign, which, as explained above, is not significant

for part of the goods. The small size and secondary position of the wording

‘zeroduemilano’, combined with the fact that ‘milano’ may be perceived as an

element of low distinctiveness by part of the public, makes it unlikely that it will be

referred to aurally.

Taking into account all the indicated points, at least an average degree of aural

similarity can be sustained.

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

distinctive meaning, namely a chemical formula for oxygen, and other distinctive,

non-distinctive or of low distinctiveness concepts may also be perceived, the signs

are conceptually similar, at least, to an average degree.

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

in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks enjoy an enhanced scope of protection.

However, for reasons of procedural economy, the evidence filed by the opponent to

prove this claim does not have to be assessed in the present case (see below in

‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on

their distinctiveness per se. In the present case, the earlier trade marks as a whole

have no meaning for any of the goods in question from the perspective of the public

Decision on Opposition No B 2 789 090 page: 8 of 9

e) Global assessment, other arguments and conclusion

As has been established in the previous sections of this decision, the goods are

identical. The signs are visually, aurally and conceptually similar, at least, to an

average degree. The degree of attention of the relevant public will be higher than

average for part of the goods and average for the other part. The inherent

distinctiveness of the earlier marks is average.

Account should be taken of the fact that average consumers rarely have the chance

the consumer directly confuses the trade marks themselves, or where the consumer

makes a connection between the conflicting signs and assumes that the goods

covered are from the same or economically linked undertakings. In this regard, 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 which it designates (23/10/2002, T 104/01, Fifties, U:T:2002:262, §

49). Consequently, there is a patent risk that the marks will be confused.

Considering all the above, there is a likelihood of confusion on the part of the

English-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the opponent’s European

Union trade mark registrations No 9 279 456, No 12 366 522 and No 15 145 188. It

follows that the contested trade mark must be rejected for all the contested goods.

earlier marks, there is no need to assess the enhanced degree of distinctiveness of

result would be the same even if the earlier marks enjoyed an enhanced degree of

goods against which the opposition was directed, there is no need to examine the

other earlier rights invoked by the opponent (16/09/2004, T-342/02, Moser Grupo

Media, S.L., EU:T:2004:268).

Furthermore, since the opposition is fully successful on the basis of the ground of

Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the

opposition, namely Article 8(5) EUTMR.

COSTS

Decision on Opposition No B 2 789 090 page: 9 of 9

Since the applicants are the losing party, they must bear the opposition fee as well as

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former

Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the

costs to be paid to the opponent are the opposition fee and the costs of

representation, which are to be fixed on the basis of the maximum rate set therein.

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.

The amount determined in the fixation of the costs may only be reviewed by a

decision of the Opposition Division on request. According to Article 109(8) EUTMR

(former Rule 94(4) EUTMIR, in force before 01/10/2017), such a request must be

filed within one month of the date of notification of this fixation of costs and will be

deemed to have been filed only when the review fee of EUR 100 (Annex I A(33)

EUTMR) has been paid.