zeroduemilano | Decision 2789090

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,
20038 Seregno, Italy (applicants), represented by Franco Martegani S.R.L., Via
Carlo Alberto 41, 20052 Monza (MI), Italy (professional representative).
On 08/01/2018, the Opposition Division takes the following
1. Opposition No B 2 789 090 is upheld for all the contested goods.
2. European Union trade mark application No 15 628 985 is rejected in its entirety.
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have been repealed and replaced by Regulation (EU) 2017/1001 (codification),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.
The opponent filed an opposition against all the goods of European Union trade mark
application No 15 628 985 for the figurative mark . The
opposition is based on, inter alia, European Union trade mark registrations
No 9 279 456 and No 12 366 522 for the word mark ‘O2’, and No 15 145 188 for the
word mark ‘02’. The opponent invoked Article 8(1)(b) EUTMR in relation to these
earlier rights. The opponent invoked Article 8(5) EUTMR for other earlier rights but
this ground and the remaining marks will be set aside for the time being.
Decision on Opposition No B 2 789 090 page: 2 of 9
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
dominant elements of the conflicting signs, and the relevant public.
The opposition is based on more than one earlier trade mark. The Opposition
Division finds it appropriate to first examine the opposition in relation to the
opponent’s European Union trade mark registrations No 9 279 456 for the word mark
‘O2’, No 12 366 522 for the word mark ‘O2’ and No 15 145 188 for the word mark
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,
sneakers, sandals, shoes.
European Union trade mark registration No 15 145 188
Class 3: Bleaching preparations and other substances for laundry use; cleaning,
polishing, scouring and abrasive preparations; soaps; perfumery, essential oils,
cosmetics, hair lotions; dentifrices; abrasives; adhesives for cosmetic purposes;
after-shave lotions; air fragrancing preparations; antiperspirants [toiletries]; balms
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
preparations; eau de Cologne; flavorings [flavourings] for beverages [essential oils];
hair lotions; hair spray; incense; laundry preparations; lotions for cosmetic purposes;
make-up; make-up preparations; make-up removing preparations; massage gels
other than for medical purposes; medicated soap; mouth washes, not for medical
Decision on Opposition No B 2 789 090 page: 3 of 9
purposes; nail care preparations; nail polish; perfumery; perfumes; polishing
preparations; potpourris [fragrances]; shampoos; shaving preparations; soap;
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,
recording discs; compact discs, DVDs and other digital recording media;
mechanisms for coin-operated apparatus; cash registers, calculating machines, data
processing equipment, computers; computer software; fire-extinguishing apparatus;
apparatus for the transmission of sound and image; telecommunications apparatus;
mobile telecommunication apparatus; mobile telecommunications handsets; digital
telecommunication apparatus and instruments; digital tablets; computer hardware;
computer application software; computer software downloadable from the Internet;
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 control apparatus; security surveillance apparatus; computer software for
security purposes; computer software for insurance purposes; SIM cards; aerials;
alarms; electric cables; chemistry apparatus and instruments; recorded computer
operating programs; computer peripheral devices; data processing apparatus;
diagnostic apparatus, not for medical purposes; distance measuring apparatus;
distance recording apparatus; downloadable ring tones for mobile phones; electronic
tags for goods; eyepieces; goggles for sports; magnetic identity cards;
intercommunication apparatus; loudspeakers; magnetic data media; mathematical
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;
Clothing of leather; Coats; Collar protectors; Combinations [clothing]; Corselets;
Corsets [underclothing]; Cuffs; Cyclists' clothing; Detachable collars; Dress shields;
Dresses; Dressing gowns; Ear muffs [clothing]; Esparto shoes or sandals; Fishing
vests; Fittings of metal for footwear; Football boots; Footmuffs, not electrically
Decision on Opposition No B 2 789 090 page: 4 of 9
heated; Footwear; Footwear uppers; Frames (Hat -) [skeletons]; Fur stoles; Furs
[clothing]; Gabardines [clothing]; Gaiters; Garters; Girdles; Gloves [clothing];
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;
Overalls; Pants; Paper clothing; Parkas; Pelerines; Pelisses; Petticoats; Pinafore
dresses; Pocket squares; Pockets for clothing; Ponchos; Pullovers; Pyjamas; Ready-
made clothing; Sandals; Saris; Sarongs; Sashes for wear; Scarves; Shawls; Shirt
fronts; Shirt yokes; Shirts; Shoes; Short-sleeve shirts; Shoulder wraps; Shower caps;
Singlets; Ski boots; Ski gloves; Skirts; Skorts; Skull caps; Sleep masks; Slippers;
Slips [undergarments]; Sock suspenders; Socks; Soles for footwear; Sports shoes;
Stocking suspenders; Stockings; Stockings (Sweat-absorbent -); Studs for football
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 9: Spectacles [optics].
Class 14: Clocks.
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
services is not relevant for the examination (16/06/2010, T-487/08, Kremezin,
EU:T:2010:237, § 71). Consequently, the applicants’ claim must be set aside.
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.
b) Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be
reasonably well informed and reasonably observant and circumspect. It should also
be borne in mind that the average consumer’s degree of attention is likely to vary
according to the category of goods or services in question.
In the present case, the goods found to be identical are directed at the public at
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
EUTM No 15 145 188
Earlier trade marks 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.
Decision on Opposition No B 2 789 090 page: 6 of 9
Given that English speakers often refer to the numeral ‘0’ as the letter ‘O’ rather than
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.
The earlier marks refer to the concept of a chemical formula, namely, oxygen in its
most stable form. The fact that ‘O2’ / 02’ are not represented on a split-level is not
relevant since the chemical formula is frequently referred to in both ways and this is
aurally clear. This chemical formula is commonly known and, as such, the relevant
public will be aware of this concept. It is distinctive in relation to the relevant goods.
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
or symbol 0, which stands for the absence of quantity or amount’) and ‘due’
(‘something owed to someone’) may be perceived and mentally broken down by, at
least, part of the relevant English-speaking public (see in this way 13/02/2007, T-
256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33,
§ 58). They will, thus, be understood as an ‘absence of quantity or amount owed’ and
are, at any case, of average distinctiveness as regards the relevant goods. On the
other hand, part of the public may also perceive the element ‘milano’ as the Italian
name of the city of Milan. As this city is well known as a fashion and design centre,
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
eye-catching due to its size and position within the sign as regards the expression
‘zeroduemilano’, written in a much smaller lettering and placed in a secondary
position below it.
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
trade mark. This is because the public reads from left to right, which makes the part
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
sign, which is non-distinctive for part of the relevant goods, and in the wording
‘zeroduemilano’ that is less eye-catching and, as regards the word ‘milano’, will be
perceived as an element of low distinctiveness by part of the relevant public.
Therefore, bearing in mind the previous assertions and highlighting the fact that the
whole of the earlier marks are included as the first two elements in the contested
sign, the signs are deemed similar, at least, to an average degree.
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
examination of likelihood of confusion will proceed.
d) Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account
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
in the relevant territory. Therefore, the distinctiveness of the earlier marks must be
seen as normal.
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
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). Even consumers who pay a high degree of attention need to rely on their
imperfect recollection of trade marks (21/11/2013, T-443/12, ancotel, EU:T:2013:605,
§ 54).
It should be also borne in mind that likelihood of confusion covers situations where
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.
Since the opposition is successful on the basis of the inherent distinctiveness of the
earlier marks, there is no need to assess the enhanced degree of distinctiveness of
the opposing marks due to their extensive use as claimed by the opponent. The
result would be the same even if the earlier marks enjoyed an enhanced degree of
As the earlier rights No 9 279 456, No 12 366 522 and No 15 145 188 lead to the
success of the opposition and to the rejection of the contested trade mark for all the
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.
According to Article 109(1) EUTMR, the losing party in opposition proceedings must
bear the fees and costs incurred by the other party.
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
the costs incurred by the opponent in the course of these proceedings.
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.
The Opposition Division
Carlos MATEO
According to Article 67 EUTMR, any party adversely affected by this decision has a
right to appeal against this decision. According to Article 68 EUTMR, notice of appeal
must be filed in writing at the Office within two months of the date of notification of
this decision. It must be filed in the language of the proceedings in which the decision
subject to appeal was taken. Furthermore, a written statement of the grounds for
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.

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