Decision on Opposition No B 2 821 794 page: 3 of 7
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 elements ‘CONDUCTORES ELÉCTRICOS’ and ‘S.A.’ of the earlier mark are
meaningful in certain territories, for example in those countries where Spanish is
understood. Consequently, the Opposition Division finds it appropriate to focus the
comparison of the signs on the Spanish-speaking part of the public.
The earlier mark is a figurative mark that includes the word ‘ELECON’, which is
depicted in blue bold title case letters and is meaningless, therefore distinctive, for
the relevant public. Due to its dimensions and position, ‘ELECON’ is the co-dominant
element of the earlier mark, together with the figurative element on its left side.
Therefore, it has a prominent significance when compared to the other elements of
In its observations of 25/05/2017, the applicant claimed that dominant elements exist
only when the other components of the mark are negligible and that, consequently,
the earlier mark does not contain any dominant element. In support of this argument,
the applicant mentioned judgement of the General Court of 01/03/2016 T – 61/15,
1&1 Internet AG v. OHIM, ECLI:EU:T:2016:115, § 54. Nonetheless, in said decision,
the Court mentioned the presence of negligible elements together with a non-
negligible element in the same mark as an example of a sign including a dominant
element, rather than imposing a condition in this sense. A dominant element is the
portion of the mark that is visually outstanding because of its position, size,
dimensions and/or use of colours and that affects the visual impact of the sign. This
does not require that the other elements of the mark are negligible in the sense of
elements that, due to their size and/or position, are not noticeable at first sight or are
part of a complex sign with numerous other elements and, therefore, very likely to be
disregarded by the relevant public. The earlier mark is a complex mark where all the
elements are noticeable and easily distinguishable and where its figurative element
and the element ‘ELECON’, given their dimension and position, are visually
outstanding and affect the visual impact given by the sign.
The mark also includes the wording ‘CONDUCTORES ELÉCTRICOS’, a comma and
the acronym ‘S.A.’. The first element will be seen by the Spanish-speaking part of the
public as a description of the goods covered by the opponent’s mark, namely
‘electrical conductors, cables’. The comma is a simple punctuation mark that serves
to separate the elements ‘CONDUCTORES ELÉCTRICOS’ and ‘S.A.’. The latter will
be perceived as the acronym that stands for ‘Sociedad Anónima’, the Spanish
definition for a type of company. Therefore, this element is descriptive of the nature of
the opponent company and, therefore, non-distinctive. Consequently, the mentioned
elements have a limited significance in the present assessment, rather than creating
a connection with the opponent’s name in consumers’ minds able to distinguish the
marks, as argued by the applicant.
Finally, the mark contains a figurative element consisting of a blue circle interrupted
on its right side by a horizontal line, depicted on a white circular background