OPPOSITION Nо B 1 532 798

O2 Worldwide Limited, 20 Air Street, W1B 5AN London, United Kingdom (opponent), represented by Stobbs, Widenmayerstr. 34, 80538 München, Germany (professional representative)

a g a i n s t

O2mer (Société À Responsabilité Limitée), 10, Place De La Tourbie, 29000 Quimper, France (applicant), represented by Cabinet @mark, 16, Rue Milton, 75009 Paris, France (professional representative).

On 15/07/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 532 798 is partially upheld, namely for all the contested goods in Class 3.

2. European Union trade mark application No 7 533 524 is rejected for all the above goods. It may proceed for the remaining contested goods and services in Classes 5 and 44.

3. Each party bears its own costs.

REASONS

On 23/06/2009, the opponent filed an opposition against all the goods and services of European Union trade mark application No 7 533 524 for the word mark ‘O2mer’. The opposition is based on European Union trade mark registration No 7 177 363 for the figurative mark mark, in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR, and on United Kingdom trade mark registrations No 2 296 255 for the figurative mark and No 2 279 371 for the figurative mark , in relation to which the opponent invoked Article 8(5) EUTMR.

EARLIER UK RIGHTS

On 01/02/2020, the United Kingdom (UK) withdrew from the EU subject to a transition period until 31/12/2020. During this transition period EU law remained applicable in the UK. As from 01/01/2021, UK rights ceased ex-lege to be earlier rights protected ‘in a Member State’ for the purposes of proceedings based on relative grounds. The conditions for applying Article 8(5) EUTMR, worded in the present tense, must also be fulfilled at the time of decision taking. It follows that the United Kingdom trade mark registrations No 2 296 255 and No 2 279 371 no longer constitute a valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on these two earlier rights. Consequently, the opposition will continue on the basis of EUTM No 7 177 363 only.

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 dominant elements of the conflicting signs, and the relevant public.

a) The goods and services

Following revocation of the earlier mark for all the goods and services in Classes 3 and 44, it remains registered for the following goods and services, on which the opposition is based:

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting; additives, non-chemical, to motor-fuel; beeswax; belting wax; belts (non-slipping preparations for-); benzene; benzol; carnauba wax; ceresine; industrial wax; naphtha; non-slipping preparations for belts; paper spills for lighting; wax [raw material]; wood spills for lighting; xylene; xylol; paper spills for lighting; wood spills for lighting.

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; badges; signs; gold solder; silver solder.

Class 8: Hand tools and implements (hand operated); cutlery; side arms; razors; shaving and personal grooming accessories; hair trimmers; belts (tool-) [holders]; bits [parts of hand tools]; blades for planes; bludgeons; cases (razor-); curling tongs; depilation appliances, electric and non-electric; extension pieces for braces for screw taps; fingernail polishers [electric or non-electric]; frames for handsaws; glaziers’ diamonds (parts of hand tools); hair clippers for personal use [electric and non-electric]; hollowing bits (parts of hand tools); knuckle dusters; manicure sets, electric; nail clippers [electric or non-electric]; nail files, electric; nail buffers [electric or non-electric]; police batons; punch rings [knuckle dusters]; razor cases; reamer sockets; saw blades [parts of hand tools]; saw holders; screw taps (extension pieces for braces for-); scythe rings; shaving cases; shear blades; sugar tongs; sword scabbards; tool belts [holders]; truncheons; tweezers; vegetable choppers.

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; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus; apparatus for the transmission of sound and image; telecommunications apparatus; mobile telecommunication apparatus; mobile telecommunications handsets; computer hardware; computer software; computer software downloadable from the internet; PDA’s (personal digital assistants), pockets PC’s, mobile telephones, laptop computers; telecommunications network apparatus; drivers software for telecommunications networks and for telecommunications apparatus; computer software onto CD Rom, SD-Card, parts and fittings for all the aforesaid goods; animated cartoons; asbestos clothing for protection against fire; asbestos gloves for protection against accidents; attracting and killing insects (electric devices for-); aviators (protective suits for-); aviators (protective suits for-); boats (fire-); breathing apparatus for underwater swimming; breathing apparatus, except for artificial respiration; bullet-proof waistcoats [vests (Am)]; cabinets for loudspeakers; cartoons (animated-); cartoons (animated-); cases (eyeglass-); cases (eyeglass-); cases (pince-nez-); cases especially made for photographic apparatus and instruments; cases fitted with dissecting instruments [microscopy]; chains (eyeglass); chains (eyeglass-); cigar lighters for automobiles; cleaning apparatus for phonograph records; cleaning apparatus for sound recording discs; clips for divers and swimmers (nose-); clips for divers and swimmers (nose-); clothing for protection against accidents, irradiation and fire; clothing for protection against fire; coils (holders for electric-); coin-operated gates for car parks or parking lots; computer game programs; computer keyboards; computer operating programs recorded; computer operating programs, recorded; computer peripheral devices; computer programmes [programs], recorded; computer programs [downloadable software]; computer software [recorded]; computer software, recorded; contact lenses (containers for-); contact lenses (containers for-); containers for contact lenses; containers for microscope slides; covers for electric outlets; cutting apparatus (electric arc-); cutting apparatus (electric arc-); diver’s apparatus; divers’ masks; divers’ masks; diving suits; door closers, electric; door openers, electric; ear plugs; electric arc cutting apparatus; electric arc welding apparatus; electric installations for the remote control of industrial operations; electric welding apparatus; electrified fences; electronic publications [downloadable]; electronic publications, downloadable; electroplating apparatus; elevator operating apparatus; eyeglass cases; eyeglass chains; eyeglass cords; eyeglass frames; face-shields (workmen’s protective-); face-shields (workmen’s protective-); fences (electrified-); filters for respiratory masks; fire (clothing for protection against-); fire (clothing for protection against-); fire beaters; fire blankets; fire boats; fire engines; fire hose nozzles; flat irons, electric; floats for bathing and swimming; furniture especially made for laboratories; galvanizing apparatus; garments for protection against fire; gloves for divers; gloves for protection against accidents; gloves for protection against x-rays for industrial purposes; goggles for sports; hair curlers, electrically heated; hair-curlers, electrically heated; helmets (protective-); helmets (protective-) for sports; helmets (protective-) for sports; holders for electric coils; insects (electric devices for attracting and killing-); insects (electric devices for attracting and killing-); interfaces [for computers]; interfaces for computers; irons (flat-), electric; irons (flat-), electric; knee-pads for workers; lift operating apparatus; locks, electric; magnets; magnets (decorative-); magnets (decorative-); make-up removing appliances, electric; masks (divers’-); masks (divers’-); masks (protective-); masts for wireless aerials; micrometer screws for optical instruments; microscope slides (containers for-); monitors [computer programs]; motor fire engines; mouse pads; nets (safety-); nets (safety-); nets for protection against accidents; nozzles (fire hose-); oxygen transvasing apparatus; pads (mouse-); pads (mouse-); peripheral devices (computer-); pince-nez cases; pince-nez chains; pince-nez cords; pince-nez mountings; plotters; plugs (ear-); plugs (ear-); programs (computer game-); programs (computer operating-) recorded; programs (computer-) [downloadable software]; protection devices against x-rays [roentgen rays], not for medical purposes; protection devices against x-rays [roentgen rays], not for medical purposes; protection devices against x-rays[roentgen rays], not for medical purposes; protection devices for personal use against accidents; protective helmets; protective helmets for sports; protective masks; protective suits for aviators; publications (electronic-), downloadable; push buttons for bells; railway traffic safety appliances; reflecting discs for wear, for the prevention of traffic accidents; reflecting discs, for wear, for the prevention of traffic accidents; respirators [other than for artificial respiration]; respirators for filtering air; respirators, other than for artificial respiration; respirators[ other than for artificial respiration]; respiratory masks [other than for artificial respiration]; respiratory masks, other than for artificial respiration; respiratory masks[ other than for artificial respiration]; restraints (safety-), [other than for vehicle seats and sports equipment]; restraints (safety-), other than for vehicle seats and sports equipment; restraints (safety-), other than for vehicle seats and sports equipment; retorts’ stands; road signs, luminous or mechanical; roentgen rays (protection devices against-), not for medical purposes; roentgen rays (protection devices against-), not for medical purposes; safety nets; safety restraints [other than for vehicle seats and sports equipment]; safety restraints, [other than for vehicle seats and sports equipment]; safety restraints, other than for vehicle seats and sports equipment; safety tarpaulins; sealing plastics (electrical apparatus for-) [packaging]; shoes for protection against accidents, irradiation and fire; signs, luminous; socks, electrically heated; software (computer-), [recorded]; software (computer-), recorded; solderers’ helmets; soldering apparatus, electric; soldering irons, electric; spark-guards; spectacle cases; spectacle frames; sports (goggles for-); sports (protective helmets for-); sports (protective helmets for-); stands for photographic apparatus; steering apparatus automatic for vehicles; steering apparatus, automatic, for vehicles; swimming belts; swimming jackets; teeth protectors; theft prevention installations, electric; traffic accidents (reflecting discs, for wear, for the prevention of-); tripods for cameras; turnstiles, automatic; vehicle breakdown warning triangles; vests (Am) (bullet-proof-); waistcoats (bullet-proof-); warning triangles (vehicle breakdown); warning triangles (vehicle breakdown-); water wings; welding apparatus (electric arc-); welding apparatus (electric arc-); welding apparatus, electric; welding electrodes; wireless aerials (masts for-); wrist rests for use with computers; x-rays (protection devices against-), not for medical purposes; bullet-proof waistcoats (Br); bullet-proof waistcoats (Br) [vests (Am)]; earplugs for divers; jukeboxes [for computers]; nose dips for divers and swimmers; protective masks; protective masks for workmen; protective suits for aviators; solders’ helmets; spark-guards; vehicle breakdown warning triangles; workmen’s protective face-shields.

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; agates; anchors [clock and watch making]; anchors [clock and watch-making]; barrels [clock and watch making]; barrels [clock and watch-making]; cases for clock- and watchmaking; cases for watches [presentation]; chains (watch-); clock cases; clock hands [clock and watch-making]; clockworks; coins; coins; copper tokens; dials [clock and watch making]; dials [clock and watch-making]; gold (objects of imitation-); hands (clock-) [clock and watch making]; imitation gold (objects of-); jet (ornaments of-); jet, unwrought or semi-wrought; key rings [trinkets or fobs]; key rings [trinkets or fobs]; medals; movements for clocks and watches; olivine [gems]; ormolu ware; ornaments of jet; pearls made of ambroid [pressed amber]; pendulums [clock and watch-making]; semi-precious stones; spinel [precious stones]; springs (watch-); straps for wristwatches; watch bands; watch cases; watch cases; watch chains; watch crystals; watch glasses; watch springs; watch straps.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; adhesive tapes for stationery or household purposes; aquaria (indoor-); aquarium hoods; architects’ models; babies’ diapers of paper and cellulose, disposable; babies’ napkin-pants [diaper-pants]; babies’ diaper-pants of paper and cellulose [disposable]; babies’ napkin-pants of paper and cellulose [disposable]; babies’ napkins of paper and cellulose [disposable]; bags (garbage) of paper or of plastics; bags for microwave cooking; balls for ball-point pens; chalk (marking-); chaplets; checkbooks [cheque books] (holders for-); composing frames [printing]; composing sticks; diaper-pants (babies’-); engraving plates; galley racks [printing]; garbage bags of paper or of plastics; graining combs; hand labelling appliances; holders (passport-); holders for checkbooks [cheque books]; house painters’ rollers; indoor aquaria; indoor terrariums [vivariums]; marking chalk; microwave cooking (bags for-); models (architects’-); mounting photographs (apparatus for-); napkin-pants (babies’-); packaging material made of starches; passport holders; photograph stands; photographs (apparatus for mounting-); printers’ blankets, not of textile; printers’ reglets; rollers (house painters’-); rosaries; self-adhesive tapes for stationery or household purposes; sheets of reclaimed cellulose for wrapping; starches (packaging material made of-); steatite [tailor’s chalk]; tailors’ chalk; tanks [indoor aquaria]; terrariums (indoor-) [vivariums]; trays for sorting and counting money.

Class 18: Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery; attaché cases; backpacks; bags (game-) [hunting accessories]; bags (net-) for shopping; bags (nose-) [feed bags]; bandoliers; beach bags; briefcases; card cases [notecases]; chain mesh purses, not of precious metal; clothing for pets; collars for animals; covers (umbrella-); covers for animals; dog collars; frames (handbag-); frames for umbrellas or parasols; game bags [hunting accessories]; gold beaters’ skin; gold beaters’ skin; gut for making sausages; handbag frames; handbags; handles (suitcase-); handles (walking stick-); haversacks; horse blankets; knee-pads for horses; music cases; muzzles; net bags for shopping; nose bags [feed bags]; pets (clothing for-); pocket wallets; purses; purses, not of precious metal; ribs (umbrella or parasol-); rucksacks; satchels (school-); sausages (gut for making-); school bags; school satchels; shopping bags; skates (straps for-); skin (goldbeaters’ -); sling bags for carrying infants; soldiers’ equipment (straps for-); straps for skates; straps for soldiers’ equipment; suitcase handles; suitcase handles; umbrella covers; umbrella handles; umbrella or parasol ribs; umbrella rings; umbrella sticks; vanity cases [not fitted]; walking cane handles; walking stick handles; walking stick seats; walking stick-handles; walking-cane handles; walking-stick handles; walking-stick seats; wallets (pocket-); wheeled shopping bags.

Class 21: Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; un-worked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes; bird baths; birdcages; cages for household pets; cosmetic utensils; deodorising apparatus for personal use; feeding troughs; feeding troughs for animals; floss for dental purposes; fly catchers [traps or whisks]; fly swatters; gardening gloves; gloves (gardening - ); indoor terrariums [plant cultivation]; insect traps; litter boxes [trays] for pets; litter trays [for pets]; make-up (appliances for removing-)[ non-electric]; mangers for animals; mangers for livestock; menu card holders; mouse traps; nest eggs [artificial]; nest eggs, artificial; nozzles for sprinkler hose; nozzles for watering cans; pets (cages for household ); pets (litter boxes [trays] for-); poultry rings; powder compacts, not of precious metal; powder puffs; rat traps; rings for birds; roses for watering cans; sacred vessels, not of precious metal; sprinklers; sprinklers for watering flowers and plants; sprinkling devices; syringes for watering flowers and plants; terrariums (indoor-) [plant cultivation]; traps (insect-); traps (rat-); trays (litter-)[ for pets]; troughs for livestock; watering cans; watering devices.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers; banners; bunting; coverings of plastic for furniture; curtains of textile or plastic; flags, not of paper; furniture coverings of plastic; plastic material [substitute for fabrics]; shower curtains of textile or plastic.

Class 25: Clothing, footwear, headgear; babies’ diapers of textile; babies’ napkins of textile; boot uppers; boots (heelpieces for-); boots (iron fittings for-); boots (non-slipping devices for-); boots (welts for-); cap peaks; diapers (babies’-) of textile; dress shields; fittings of metal for shoes and boots; footwear (tips for-); footwear uppers; frames (hat-) [skeletons]; hat frames [skeletons]; heels; inner soles; linings (ready-made-) [parts of clothing]; napkins (babies’-) of textile; napkins (babies’-) of textile; peaks (cap-); pockets for clothing; ready-made linings [parts of clothing]; shields (dress-); shirt fronts; shirt yokes; shoes (iron fittings for-); shoes (non-slipping devices for-); shoes (welts for); soles for footwear; stockings (heel pieces for-); tips for footwear; uppers (footwear-); visors [hatmaking]; yokes (shirt-); heel pieces for stockings; heelpieces for boots; iron fittings for boots; iron fittings for shoes; non slipping devices for boots; non-slipping devices for shoes; welts for boots; welts for shoes; fittings of metal for footwear; heel pieces for footwear; heel pieces for shoes; shoes (heelpieces for-); studs for football boots [shoes].

Class 28: Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees; bags especially designed for skis and surfboards; bait (artificial fishing-); billiard markers; billiard table cushions; bite indicators [fishing tackle]; bite sensors [fishing tackle]; bladders of balls for games; chalk for billiard cues; Christmas tree stands; Christmas trees of synthetic material; confetti; coverings for skis (sole-); cricket bags; cue tips (billiard-); divot repair tools [golf accessories]; edges of skis; exercise bicycles (rollers for stationary-); fairground ride apparatus; fish hooks; floats for fishing; golf bags, with or without wheels; gut for fishing; gut for rackets; hooks (fish-); kite reels; lines for fishing; markers (billiard-); masts for sailboards; novelties for parties, dances [party favors, favours]; paddings (protective-) [parts of sports suits]; pistols (caps for-) [toys]; pitch mark repair tools [golf accessories]; protective paddings [parts of sports suits]; rackets (guts for-); rackets (strings for-); reels for fishing; rollers for stationary exercise bicycles; rosin used by athletes; sailboards (masts for-); scrapers for skis; seal skins [coverings for skis]; ski bindings; skis (edges of-); skis (sole coverings for-); skis and surfboards (bags especially designed for-) surfboards (bags especially designed for skis and-); sole coverings for skis; strings for rackets; surfboard leashes; tips (billiard cue-); tools (divot repair-) [golf accessories]; wax for skis; artificial fishing bait; caps for pistols [toys]; billiard cue tips; skis (wax for-); skis and surfboards (bags especially designed for-); surfboards (bags especially designed for skis and-).

Class 29: Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats.

Class 34: Tobacco; smokers’ articles; matches; cigarettes; cigarettes containing tobacco substitutes, not for medical purposes; cigarillos; cigars; herbs for smoking; snuff; snuff boxes, not of precious metal.

Class 35: Advertising; business management; business administration; office functions; retail services; advertising space (rental of-); auctioneering; business investigations; business research; commercial information agencies; computer (location of freight-cars by-); economic forecasting; evaluation of standing timber; evaluation of standing timber; evaluation of wool; exhibitions (organization of-) for commercial or advertising purposes; grading of wool; import-export agencies; information agencies (commercial-); investigations (business-); location of freight cars by computer; location of freight-cars by computer; marketing research; marketing studies; modelling for advertising or sales promotion; news clipping services; office machines and equipment rental; office machines and equipment rental; office machines and equipment rental; opinion polling; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; polling (opinion-); procurement services for others [purchasing goods and services for other businesses]; psychological testing for the selection of personnel; public relations; publicity material rental; rental (office machines and equipment-); rental (publicity material-); rental of advertising space; rental of advertising time on communication media; rental of photocopying machines; rental of vending machines; research (business-); statistical information; timber (evaluation of standing-); timber (evaluation of standing-); trade fairs (organization of-) for commercial or advertising purposes; valuation of standing timber; vending machines (rental of-); shop window dressing.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; charitable fund raising; collections (organization of -); consultancy (financial-); consultancy (insurance-); deposits of valuables; financial consultancy; financial information; financial sponsorship; fund raising (charitable-); information (financial-); information (insurance-); insurance consultancy; insurance information; organization of collections; safe deposit services; sponsorship (financial-); valuables (deposits of-).

Class 38: Telecommunications; telecommunications services; mobile telecommunications services; telecommunications portal services; internet portal services; mobile telecommunications network services; Internet access services; email and text messaging service; providing information relating to telecommunications networks and apparatus; information services provided by means of telecommunication networks relating to telecommunications; information and advisory services relating to the aforesaid; information about telecommunication; news agencies; rental of facsimile apparatus; rental of message sending apparatus; rental of modems; rental of telecommunication equipment; rental of telephones; sending apparatus (rental of message-); telecommunication (information about-).

Class 39: Transport; packaging and storage of goods; travel arrangement; boat rental; brokerage (freight-); brokerage (transport-); canal locks (operating-); car parking; car rental; coach rental; distribution of energy; diving bells (rental of-); diving suits (rental of-); electricity distribution; energy (distribution of-); escorting of travellers; freight brokerage [forwarding (Am)]; freight brokerage; freight forwarding; frozen-food locker rental; garage rental; horse rental; ice-breaking; information (storage-); information (transportation-); launching of satellites for others; operating canal locks; parking place rental; pipeline (transport by-); refloating of ships; refrigerator rental; rental of diving bells; rental of diving suits; rental of motor racing cars; rental of storage containers; rental of vehicle roof racks; rental of warehouses; rental of wheelchairs; roof racks (rental of vehicle-); salvage (underwater ); salvage of ships; salvaging; ship brokerage; ships (refloating of-); sightseeing [tourism]; storage containers (rental of-); storage information; tourist office [except for hotel reservation]; transport brokerage; transport by pipeline; transportation information; travellers (escorting of-); truck rental; underwater salvage; vehicle rental; warehouses (rental of-); water distribution; water supplying.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; interactive entertainment services; electronic games services provided by means of any communications network; entertainment services provided by means of telecommunication networks; provision of news information; rental of music venues and stadiums; booking of seats for shows; books (publication of-); digital imaging services; electronic desktop publishing; entertainment information; information (education-); information (entertainment-); information (recreation-); interpretation (sign language-); microfilming; modelling for artists; movie projectors and accessories (rental of-); providing on-line electronic publications [not downloadable]; providing on-line electronic publications, not downloadable; publication of books; publication of electronic books and journals on-line; publication of texts [other than publicity texts]; publication of texts, other than publicity texts; radio and television sets (rental of-); recorders (rental of video cassette-); recreation information; rental of audio equipment; rental of camcorders; rental of lighting apparatus for theatrical sets or television studios; rental of movie projectors and accessories; rental of radio and television sets; rental of show scenery; rental of skin diving equipment; rental of sports equipment [except vehicles]; rental of sports equipment, except vehicles; rental of stage scenery; rental of video cameras; rental of video cassette recorders; sports equipment (rental of-) [except vehicles]; sports equipment (rental of-), except vehicles; sports events (timing of-); stage scenery (rental of-); television sets (rental of radio and-); texts (publication of-), other than publicity texts; timing of sports events; translation; videotaping; diving equipment (rental of skin -); education information; show scenery (rental of -); sign language interpretation.

Class 43: Services for providing food and drink; temporary accommodation; accommodation reservations (temporary-); boarding house bookings; hotel reservations; rental of chairs, tables, table linen, glassware; rental of tents; rental of transportable buildings; day-nurseries [crèches]; retirement homes.

Class 45: Personal and social services rendered by others to meet the needs of individuals, namely adoption agencies, dating agency services, babysitting, bereavement support, burial services, cat feeding services [in owners absence], chaperoning, clothing rental, companionship services for the elderly and disabled, consulting in the field of personal relationships, crime prevention advisory services, detective agency services, dog walking services, escort services, fashion information, funeral services, genealogical services, guardianship services, hire of clothing, hire of jewellery, house sitting, interment services, internet-based social networking services, lobbying services, other than for commercial purposes, lost and found bureau services, lost property services, maintaining lists of wedding presents for selection by others, mediation services for marital disputes, mentoring [spiritual], nanny services, on-line social networking services, online social networking services accessible by means of downloadable mobile applications, personal fashion consulting services, personal shopper services, pet sitting, private investigation, social escort agency services, social escorting, wedding ceremony planning and arranging consultation services, undertakers’ services; security services for the protection of property and individuals; consultancy (security-); security consultancy; security consultancy.

The contested goods and services are the following:

Class 3: Soaps, perfumery, essential oils, cosmetics, hair lotions, dentifrices.

Class 5: Pharmaceutical preparations and sanitary preparations for medical purposes, dietetic substances adapted for medical use, food for babies.

Class 44: Hygienic and beauty care for human beings; balneotherapy and hydrotherapy, hammams.

An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.

The term ‘including’, used in the opponent’s list of goods in Class 4, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services in Class 45 to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

It is also to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other. These factors are known as the ‘Canon Criteria’ (29/09/1998, C‑39/97, Canon, EU:C:1998:442).

Contested goods in Class 3

The contested cosmetics, hair lotions, dentifrices are similar to the opponent’s cosmetic utensils in Class 21. These goods usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested perfumery, essential oils are similar to the opponent’s deodorising apparatus for personal use in Class 21. The broad category of the contested perfumery in Class 3 includes goods such as room-scenting sprays, potpourri and incense sticks, which are indispensable for the use of various deodorising apparatus in Class 21. Likewise, the contested essential oils are indispensable for the use of apparatus such as vaporisers and perfume burners in Class 21. These goods diffuse a fragrance to make homes or other indoor spaces smell pleasant. They belong to the same market sector of air-fragrancing and -freshening products, satisfy the needs of the same consumers, and are commonly sold in the same specialised shops and sections of supermarkets or department stores. Furthermore, they are usually sold as a set. Therefore, the public can expect them to be produced under the control of the same undertakings.

The contested soaps are similar to a low degree to the opponent’s articles for cleaning purposes in Class 21, as these goods usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

Contested goods in Class 5 and services in Class 44

The contested goods in Class 5 are pharmaceutical preparations, sanitary preparations for medical purposes and dietetic substances, while the contested services in Class 44 are various hygienic and beauty care for people.

These goods and services have nothing or very little in common with the opponent’s goods and services which consist mainly of industrial oils and greases, additives, fuels, spills for lighting and illuminants (Class 4); unwrought and partly wrought common metals and their alloys, including ores, as well as various goods made of common metals (Class 6); various hand-operated tools and implements (Class 8); 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 and instruments for scientific or research purposes, audiovisual and information technology equipment, as well as safety and life-saving equipment (Class 9); precious metals and various goods made of precious metals or coated therewith, as well as jewellery, clocks and watches, and component parts for these (Class 14); paper, cardboard and various goods made of these materials, as well as office requisites (Class 16); leather, imitations of leather and various goods made of these materials (Class 18); small, hand-operated utensils and apparatus for household and kitchen use, as well as cosmetic and toilet utensils, glassware and various goods made of porcelain, porcelain and earthenware not included in other classes (Class 21); fabrics and fabric covers for household use as well as various goods made of plastic (Class 24); clothing, footwear, headgear (Class 25); toys, apparatus for playing games, gymnastic and sporting articles, amusement and novelty items, as well as certain articles for Christmas trees (Class 28); meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams; eggs, milk and milk products; edible oils and fats (Class 29); tobacco and articles used for smoking, snuff boxes (Class 34); advertising, business management, business administration, office functions and various services rendered by persons or organisations principally with the object of working or management of a commercial undertaking, or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise (Class 35); various services related to insurance, financial and monetary affairs and related information services (Class 36); telecommunications (Class 38); transport, packaging and storage of goods and travel arrangement (Class 39); services related to education, providing of training, entertainment, sporting and cultural activities (Class 41); services for providing food and drink; temporary accommodation (Class 43); various security services and related consultancy, as well as personal and social services rendered by others to meet the needs of individuals (Class 45).

The contested goods and services in Classes 5 and 44 and the opponent’s goods and services differ in their natures, purposes and (in the vast majority of cases) methods of use. They target publics with different needs. They are mostly manufactured by different producers, and they are neither in competition nor complementary. Therefore, they are dissimilar.

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 similar to varying degrees are directed at the public at large whose degree of attention is average.

c) The signs

	O2mer
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 earlier figurative mark comprises the sole verbal element ‘O₂’. Its stylisation is fairly standard and adds very little distinctiveness, if any, to the verbal component.

Although the contested word mark comprises one element, at least some consumers in the relevant territory will break it down into two components, ‘O2’ and ‘mer’, which are meaningful to them. According to case-law, when perceiving a word sign, consumers will break it down into elements that, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). This is justified by the fact that consumers naturally look for a meaning when perceiving a word mark.

Both ‘O2’ and ‘mer’ are meaningful, inter alia, in those countries where French is understood. This perception influences the conceptual comparison of the signs and has an impact on the assessment of the likelihood of confusion. Therefore, the Opposition Division finds it appropriate to limit the examination to the French-speaking part of the public, namely the public in France. 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). A likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The earlier mark’s verbal element, ‘O₂’, refers to the concept of a specific chemical formula, namely oxygen in its most stable form. This chemical formula is commonly known. As such, the relevant public will be aware of this concept (02/02/2016, R 625/2015‑2, EO2 / O2 et al., § 27; 20/08/2018, R 2083/2017‑2, 3b (fig.) / O2 et al., § 69; R 1784/2017‑2, O2CHAIR MORE AIR, LESS STRESS (fig.) / O2 (et al.), § 22). The same meaning will be attributed to the contested sign’s first verbal component, ‘O2’. The fact that the ‘2’ is not depicted in subscript (i.e. ‘O₂’) is not decisive, as this formula is frequently referred to in both ways, and its pronunciation is the same. Oxygen forms a part of various cosmetic formulations, soaps, perfumery, and essential oils, and it is used in aromatherapy. Although other expressions like ‘oxy’ or ‘oxygen’ are usually used for these goods (rather than the chemical symbol for oxygen), ‘O₂’/‘O2’ may nevertheless be seen as having a limited degree of distinctiveness for the contested goods in Class 3. However, it has a normal degree of distinctiveness for the opponent’s goods in Class 21, as it is not descriptive, allusive or otherwise weak in relation to these goods.

The contested sign’s second component, ‘mer’, is a French word meaning ‘sea’ (information extracted from Larousse Dictionary on 02/07/2021 at www.larousse.fr/dictionnaires/francais-anglais/mer/50451). This meaning may allude to certain characteristics of the contested goods in Class 3, such as their colour, scent, (or natural) origin. Therefore, it is considered inherently weak for these goods.

The marks have no elements that could be considered clearly more dominant (eye-catching) than other elements.

Two marks are similar when, from the point of view of the relevant public, they are at least partly identical as regards one or more relevant aspects, namely the visual, aural and conceptual aspects (23/10/2002, T‑6/01, Matratzen + Matratzenmarkt Concord (fig.), EU:T:2002:261, § 30).

Visually and aurally, the earlier mark’s verbal element is entirely incorporated at the contested sign’s beginning, and will be pronounced in the same way. The contested sign differs from the earlier mark in its second component, ‘mer’, and its sound. This differing component is, however, located in a more distant position, and is less distinctive than the coinciding part. The earlier mark differs in its fairly simple stylisation, which will not attract much of the consumers’ attention, if any.

Consumers normally focus their attention on the beginnings of signs (21/05/2015, T‑420/14, Wine in Black / NOVAL BLACK, EU:T:2015:312, § 25). This equally applies to the aural comparison (04/10/2017, T‑411/15, GAPPOL (fig.) / GAP et al., EU:T:2017:689, § 79). Therefore, the coincidence at the beginning is particularly relevant.

Therefore, the signs are visually and aurally similar to at least an average degree.

Conceptually, reference is made to the previous findings concerning the semantic content of the marks. Both signs evoke the concept of ‘oxygen’. Although the contested sign differs in the concept stemming from its second component, ‘mer’, this will have less impact on consumers, given its weak distinctive character for the contested goods. Therefore, there is at least an average degree of conceptual similarity between the signs.

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.

The opponent claimed (in its reputation claim) that the earlier trade mark enjoys enhanced distinctiveness for the goods and services in Classes 9, 38 and 41, but it did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated in section c) of this decision, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The contested goods in Class 3 are similar to varying degrees to the opponent’s goods in Class 21, while the remaining contested goods and services are dissimilar to the opponent’s goods and services. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at dissimilar goods and services cannot be successful. The examination will continue only for those goods that were found similar to some degree.

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified. It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The signs are similar to at least an average degree in all the respective aspects of comparison. The goods are similar to an average and low degrees. The earlier mark is inherently distinctive to an average degree and the relevant public is composed of the public at large, displaying an average degree of attention. Account is also 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).

The earlier mark’s only verbal element is entirely incorporated at the beginning of the contested sign, where it will attract most consumers’ attention. The differing element, ‘mer’ is located in a more distant position and is also less distinctive than the coinciding part. Therefore, it cannot dispel the overall impression of similarity between the signs.

Although the public will not overlook certain differences between the signs – especially the contested sign’s second component ‘mer’ – likelihood of confusion includes the likelihood of association with the earlier trade mark. It 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/services covered are from the same or economically linked undertakings. Therefore, in the present case, even though the marks may not be directly confused with one another, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless will assume, owing to the use of the same distinctive component ‘O2’, that they are derived from the same undertaking or economically linked undertakings.

Indeed, it is plausible 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 and services which it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49), since it is common market practice to launch new versions of marks accompanied by additional elements. In particular, consumers could be led to believe that the owner of the earlier trade mark had launched a new line of similar goods with a marine style or features.

Taking into account all the aforementioned findings, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the similarities between them in regard to similar goods. Consequently, there is a likelihood of confusion on the part of the French-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.

This conclusion also applies to those goods that are similar to only a low degree, because the relevant public will still be likely to assume that these goods originate from the same or economically linked undertakings, particularly in view of the similarity between the signs.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 7 177 363. It follows that the contested trade mark must be rejected for all the contested goods in Class 3.

The opposition is not successful, and must be rejected, insofar as the dissimilar goods and services in Classes 5 and 44 are concerned.

The examination of the opposition will continue on the grounds of Article 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 14/09/2009 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. As the cooling-off period was extended, and the case was later suspended, this time limit eventually expired on 16/11/2012.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Liliya YORDANOVA

Jakub MROZOWSKI

Reiner SARAPOGLU

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.