Decision on Opposition No B 2 759 077 page: 3 of 6
c) The signs
Earlier trade mark Contested sign
The relevant territory is the European Union.
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).
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 common elements ‘heel’ is not meaningful in certain territories, for example in
those countries where English is not understood. Consequently, the Opposition
Division finds it appropriate to focus the comparison of the signs on, for instance, the
Italian-speaking part of the public.
The earlier mark is a word mark consisting of the word ‘Heel’. The contested mark is
also a word mark. It consists of the word ‘NEOHEEL’.
For the sake of clarity, it must be pointed out that word marks are marks consisting of
letters, numbers and other signs (e.g. ‘+’, ‘@’, ‘!’) reproduced in the standard
typeface used by the respective office. This means that they do not claim any
particular figurative element or appearance. Where both marks are registered as
word marks, the typeface actually used by the respective office in the official
publication (e.g. the EUTM Bulletin) is immaterial. Differences in the use of lower or
upper case letters are immaterial, even if lower case and upper case letters alternate.
Word marks are identical if they coincide exactly in the string of letters or numbers.
The element ‘heel’ of the earlier mark has no meaning for the relevant public and is,
As regards the contested sign, it cannot be excluded that the consumers will attribute
to the first three letter ‘NEO’ the meaning of a prefix that in Italian serves to indicate,
as in English, something that is new, recent, or a new or modern form or
development. In this case, this element is considered to be non-distinctive for all the
goods while the meaningless element ‘HEEL’ is distinctive.
Visually and aurally, the signs coincide in the sequence of letters ‘HEEL’, which as
seen above form an element of normal distinctiveness in both signs. However, they
differ in the first three letters ‘NEO’ of the contested sign, which form a recognizable
element which is of limited distinctiveness.
Therefore, the signs are highly similar both form a visual and aural perspective.