Decision on Opposition No B 2 551 987 page: 4 of 5
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 in question from the perspective of the public in the
relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as
normal, despite the presence of a weak element in the mark, as stated above in
section c) of this decision.
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 signs are visually and conceptually highly similar and aurally identical.
As the goods are identical, it is highly conceivable that the relevant consumers would
perceive the contested sign as a variation of the earlier mark. 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).
In its observations, the applicant argues that the earlier trade mark has a weak
distinctive character given that many trade marks include the element ‘AVANTI’. In
support of its argument the applicant refers to some trade mark registrations in the
European Union and Spain.
The Opposition Division notes that the existence of several trade mark registrations is
not per se particularly conclusive, as it does not necessarily reflect the situation in the
market. In other words, on the basis of register data only, it cannot be assumed that all
such trade marks have been effectively used. It follows that the evidence filed does not
demonstrate that consumers have been exposed to widespread use of, and have
become accustomed to, trade marks that include the element ‘AVANTI’. Under these
circumstances, the applicant’s claims must be set aside.
The applicant claims that, in principle, the shorter the signs in question are, the more
easily the public will be able to perceive all their single elements. This claim is not really
pertinent in this case, since, as detailed above, the differences between the signs
mostly lie in the weak figurative elements and, moreover, both signs share the
distinctive element ‘AVANTI’.
Considering all the above, and based on the average degree of inherent distinctiveness
of the earlier mark, there is a likelihood of confusion on the part of the public.
Therefore, the opposition is well founded on the basis of the opponent’s Spanish trade
mark registration No 3 501 608. It follows that the contested trade mark must be
rejected for all the contested goods.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.