OPPOSITION Nо B 1 629 933

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

Johannes D. Hengstenberg, Hochkirchstr. 9, 10829 Berlin, Germany (applicant), represented by Ter Meer Steinmeister & Partner Patentanwälte mbB, Nymphenburger Straße 4, 80335 München, Germany (professional representative).

On 30/06/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 1 629 933 is partially upheld, namely for the following contested goods and services:

Class 9: All the contested goods.

Class 18: All the contested goods.

Class 30: All the contested goods.

Class 39: All the contested services.

2. European Union trade mark application No 8 308 504 is rejected for all the above goods and services. It may proceed for the remaining contested goods, namely all the goods in Classes 3 and 11.

3. Each party bears its own costs.

REASONS

On 01/03/2010, the opponent filed an opposition against all the goods and services of European Union trade mark application No 8 308 504 for the figurative mark . The opposition is based on the following earlier marks:

1. EUTM registration No 7 177 363 (figurative mark), for goods and services in Classes 4, 6, 8, 9, 14, 16, 18, 21, 24, 25, 28, 29, 34, 35, 36, 38, 39, 41, 43 and 45 (reputation claimed for goods and services in Classes 9, 38 and 41);

2. EUTM registration No 4 423 745 (figurative mark), registered for goods in Class 30;

3. United Kingdom national trade mark registration No 2 279 371 (figurative mark), for goods and services in Classes 9 and 38 (reputation claimed for goods and services in Classes 9 and 38);

4. United Kingdom national trade mark registration No 2 296 255 (figurative mark), for goods and services in Classes 9 and 38 (reputation claimed for goods and services in Classes 9 and 38);

5. United Kingdom national trade mark registration No 2 360 752 (series of marks), for goods and services in Classes 9, 38 and 41;

6. United Kingdom national trade mark registration No 2 399 319 (series of marks), for goods and services in Classes 3, 6, 9, 16, 25, 28, 29, 30, 32, 33, 35, 38 and 41;

7. United Kingdom national trade mark registration No 2 415 848 (figurative mark), for goods and services in Classes 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;

8. United Kingdom national trade mark registration No 2 416 670 (series of marks), for goods and services in Classes 9, 38, 41 and 42;

9. United Kingdom national trade mark registration No 2 471 558 (figurative mark), for goods and services in Classes 9, 38, 41 and 42 (reputation claimed for goods and services in Classes 9, 38 and 41).

The opponent invoked Article 8(1)(b) EUTMR in relation to all the earlier marks and, additionally, Article 8(5) EUTMR in relation to earlier marks 1, 3, 4 and 9.

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(1) and (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 listed above under the numbers 3 to 9 no longer constitute a valid basis of the opposition.

The opposition must therefore be rejected as far as it is based on earlier rights 3, 4, 5, 6, 7, 8, and 9. Consequently, the opposition will continue on the basis of earlier rights 1 and 2 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

The goods and services on which the opposition is based are the following:

Earlier mark 1: EUTM registration No 7 177 363 (figurative)

Following revocation of earlier mark 1 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.

Earlier mark 2: EUTM No 4 423 745 (figurative)

Following a partial rejection of earlier mark 2, it remains registered for the following goods, on which the opposition is based:

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice; fruit sauces.

On 12/05/2014, the Office informed the opponent of the applicant’s restriction of the list of goods and services and asked the opponent whether or not it maintains the opposition in view of the restriction. The Office indicated that if the opponent failed to reply, the proceedings would continue. The opponent did not reply to this communication.

Following the abovementioned restriction, the contested goods and services are the following:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 9: Measuring, signalling and checking (supervision), apparatus and instruments; apparatus and instruments for switching or controlling electricity.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

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.

Class 30: Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 39: Transport; packaging of goods.

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 cleaning preparations are similar to articles for cleaning purposes in Class 21 of the opponent’s earlier mark 1. All these goods usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested perfumery; essential oils are similar to deodorising apparatus for personal use in Class 21 of the opponent’s earlier mark 1. 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 nice. 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, and the public can expect that they are produced under the control of the same undertakings.

The contested cosmetics, hair lotions; dentifrices are similar to cosmetic utensils in Class 21 of the opponent’s earlier mark 1. These goods usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested polishing, scouring preparations are similar to sponges in Class 21 of the opponent’s earlier mark 1. These goods usually coincide in producer, relevant public and distribution channels. Furthermore, they are complementary.

The contested soaps; bleaching preparations and other substances for laundry use (which include, inter alia, soaps) are similar to a low degree to articles for cleaning purposes in Class 21 of the opponent’s earlier mark 1. All these goods usually coincide in relevant public and distribution channels. Furthermore, they are complementary.

The contested abrasive preparations are similar to a low degree to articles for cleaning purposes in Class 21 of the opponent’s earlier mark 1, which cover, inter alia, abrasive pads for kitchen purposes. These goods usually coincide in producer, relevant public and distribution channels.

Contested goods in Class 9

The contested measuring, signalling and checking (supervision), apparatus and instruments; apparatus and instruments for switching or controlling electricity are identically contained in the list of goods in Class 9 of the opponent’s earlier mark 1.

Contested goods in Class 11

The contested apparatus for water supply purposes includes goods such as automatic watering installations. Therefore, this broad category is similar to watering devices in Class 21 of the opponent’s earlier mark 1, as they have the same purpose, target the same public and may be distributed through the same channels. Furthermore, they may be complementary.

By contrast, the contested apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, and sanitary purposes are dissimilar to all the goods and services of the opponent’s earlier marks 1 and 2, which consist mainly of the following 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); various foodstuffs of plant origin, prepared or preserved for consumption, ice, ices, honey, treacle, yeast, baking-powder, condiments, spices and fruit sauce (Class 30); 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 goods and services of the earlier marks have either nothing or very little in common with the aforementioned contested goods. They differ in their nature, purpose and methods of use. They target largely different publics or publics with different needs. They are mostly manufactured by different producers and they are neither in competition nor complementary.

In its observations, the opponent argues that the contested goods in Class 11 are similar to some of the goods in Class 9. It specifically mentions the example of torches and flashlights (apparatus for lighting) in Class 11 and mobile phones in Class 9: according to the opponent, these are similar in nature and methods of use and are sold in the same shops. Moreover, mobile phones can be used as torches. The Opposition Division disagrees with this argument. The nature of these goods is not the same, nor are their specific methods of use. Their main purposes are entirely different. Although some mobile phones may have a torch/flashlight option, this does not make them similar. Furthermore, although these goods may be found in some large supermarkets, they are available in different sections. They are neither complementary nor in competition, as the public looking for a torch or flashlight would not consider buying a mobile phone instead. The opponent refers to the decisions in the ‘Save it Easy’ and ‘INTUOS’ cases (09/02/2012, R 503/2011‑1, Save it Easy / Save it easy; 01/06/2011, R 1876/2010‑1, INTUOS). However, these cases concern different goods. Therefore, the abovementioned goods are dissimilar.

Contested goods in Class 18

All the contested goods in this class are identically included in the list of goods in Class 18 of the opponent’s earlier mark 1.

Contested goods in Class 30

All the contested goods in this class are identically included in the list of goods in Class 30 of the opponent’s earlier mark 2.

Contested services in Class 39

The contested transport is identically included in the list of services in Class 39 of the opponent’s earlier mark 1.

The contested packaging of goods is included in the broader category of the opponent’s packaging and storage of goods. 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 and services found to be identical or similar to varying degrees are directed at the public at large and at business professionals.

The level of attention may vary from average to above average, depending on the price and level of sophistication of the goods or services, knowledge or expertise.

c) The signs

Earlier trade marks 1 and 2	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 marks are figurative. The earlier marks are composed of the sole verbal element ‘O₂’, while the contested sign is composed of the verbal element ‘CO₂’, in which the letter ‘C’ is crossed out by a red cross. The stylisation of the marks is fairly standard and adds very little distinctiveness, if any, to the verbal elements.

The coinciding 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).

In the contested sign the relevant public will perceive a clear play on the words ‘CO₂’ and ‘O₂’, as the former is a commonly known chemical formula for carbon dioxide.

The degree of distinctiveness of the elements ‘O₂’ and ‘CO₂’ for the relevant goods and services varies between very low and average. For some goods, such as measuring, signalling and checking (supervision), apparatus and instruments in Class 9, both ‘O₂’ and ‘CO₂’ may suggest that their purpose is to measure, verify and signal (where appropriate) the levels of oxygen or carbon dioxide. Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. In other words, when considering the distinctiveness of the earlier mark as a whole, it should always be considered to have at least a minimum degree of inherent distinctiveness. The Court has held that ‘in proceedings opposing the registration of a [European Union] trade mark, the validity of national trade marks may not be called into question’ (24/05/2012, C‑196/11 P, F1‑Live, EU:C:2012:314, § 40-41). The same rules apply to the contested sign (07/05/2019, T‑152/18 & T‑155/18, SOLGAR Since 1947 MultiPlus WHOLEFOOD CONCENTRATE MULTIVITAMIN FORMULA (fig.) / MULTIPLUS, EU:T:2019:294, § 43-50). Therefore, the degree of distinctiveness of ‘O₂’ and ‘CO₂’ is very low for such goods. Furthermore, oxygen forms a part of various cosmetic formulations, soaps and perfumery and essential oils. It is used in aromatherapy, while oxygen bubbles are used in cleaning products such as bleach to lift stains and to clean (e.g. in oxygen bleach). Although other expressions like ‘oxy’ or ‘oxygen’ are usually used for these goods (and not the chemical symbol for oxygen), ‘O₂’ may nevertheless be seen as having a limited degree of distinctiveness for goods such as cleaning preparations; soaps; cosmetics in Class 3. Likewise, carbon dioxide may be used in preparing at least some goods in Class 3, such as cosmetics and essential oils, which may be important for some consumers. This element’s degree of distinctiveness is therefore somewhat limited for these goods. At the same time, both ‘O₂’ and ‘CO₂’ have a normal degree of distinctiveness for some other goods and services, such as abrasive preparations or sponges in Class 3, trunks and travelling bags in Class 18 or salt, mustard in Class 30, as they are neither allusive nor otherwise weak for them.

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).

The marks are very short. According to case-law, the shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, small differences in short words may frequently lead to a different overall impression (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39).

Visually and aurally, the earlier marks are entirely incorporated at end of the contested sign, stylised in a similar fairly standard way. The contested sign differs from the earlier marks in its first letter, namely the crossed-out letter ‘C’. The fact that this letter at the beginning of the contested sign is crossed out by the clearly visible red cross is visually striking.

Irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier marks will be pronounced in two syllables, with both characters ‘O’ and ‘2’ spoken separately: for example, ‘o-two’ in English, ‘o-zwei’ in German, ‘o-dwa’ in Polish and ‘o-dos’ in Spanish. By contrast, the contested sign will be pronounced in three syllables, ‘C-O-2’, with all its characters spoken separately. Purely figurative elements, including the contested sign’s cross that strikes out the letter ‘C’, are not subject to a phonetic assessment.

It is important to note that the signs are short and they differ in their beginning. 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). The same rule applies to the aural comparison (04/10/2017, T‑411/15, GAPPOL (fig.) / GAP et al., EU:T:2017:689, § 79).

Therefore, the signs are visually similar to a low degree and aurally similar to an average degree.

Conceptually, reference is made to the previous findings concerning the semantic content of the marks.

The earlier marks evoke the concept of ‘oxygen’. The contested sign evokes, primarily, the concept of ‘carbon dioxide’. However, the public will also immediately notice that the letter ‘C’ is crossed out, directing their attention to ‘O₂’ and the underlying concept of ‘oxygen’. Although the concepts evoked by the signs as a whole are by no means identical, there is a low degree of conceptual similarity between them on account of the reference to ‘oxygen’, and despite the presence of an additional concept and a play on words in the contested sign.

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 marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that earlier mark 2 is particularly distinctive by virtue of intensive use or reputation. It did claim that earlier mark 1 enjoys an enhanced distinctiveness and reputation for the goods and services in Classes 9, 38 and 41 on which the opposition is based due to its extensive use. 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. Considering what has been stated in section c) of this decision, and in line with the judgment in the ‘F1-Live’ case cited above (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314), the inherent distinctiveness of the earlier marks varies between very low (e.g. for measuring, signalling and checking (supervision), apparatus and instruments in Class 9) and normal (e.g. for trunks and travelling bags in Class 18 in the case of earlier mark 1 or salt, mustard in Class 30 in the case of earlier mark 2).

e) Global assessment, other arguments and conclusion

The contested goods and services are partly identical and partly similar to varying degrees 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 (in Class 11) cannot be successful. The examination will continue only for those goods and services that are identical or 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 which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). 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 relevant public comprises the public at large and business customers, who display an average to above-average degree of attention. 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). Even consumers who pay a high(er) 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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive (or weak) elements. Even in a case involving earlier marks with a weak degree of distinctiveness, there may be a likelihood of confusion on account of, in particular, a similarity between the signs and between the goods and services covered (26/03/2020, T‑77/19, alcar.se (fig.) / Alcar, EU:T:2020:126, § 86).

Although the coinciding verbal element ‘O₂’ is (very) weakly distinctive for some of the relevant goods, such as measuring, signalling and checking (supervision), apparatus and instruments in Class 9, the distinctiveness of the contested sign’s verbal element ‘CO₂’ for such goods is not higher. At the same time, these verbal elements have a normal degree of distinctiveness for some of the other goods and services, such as trunks and travelling bags in Class 18. As a result of the coincidence in the element ‘O₂’, there is a low degree of visual and conceptual similarity and an average degree of aural similarity between the signs.

A global assessment of a likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Accordingly, a greater degree of similarity between the goods and services may be offset by a lower degree of similarity between the marks, and vice versa (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 19; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 24; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). Therefore, the identity of the goods and services in Classes 9, 18, 30 and 39 offsets the low degree of visual and conceptual similarity between the signs.

Taking into account the identity of some goods and services, the interdependence principle, and the fact that the only verbal element of the earlier marks is entirely included in the contested sign, the Opposition Division considers that there is a likelihood of confusion on the part of the public for all the identical goods and services, namely all the goods and services in Classes 9, 18, 30 and 39.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 7 177 363 and No 4 423 745. It follows that the contested trade mark must be rejected for all the contested goods and services in Classes 9, 18, 30 and 39.

As regards these goods and services, since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of earlier mark 1 due to the alleged reputation claimed by the opponent. The result would be the same even if this earlier mark enjoyed an enhanced degree of distinctiveness. Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of earlier mark 1 in relation to the dissimilar goods in Class 11, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if earlier mark 1 enjoyed an enhanced degree of distinctiveness.

However, a likelihood of confusion can safely be excluded for the contested goods in Classes 3 and 11, which are not identical to any of the opponent’s goods and services, but were found similar only to a low or average degree. The principle of interdependence cannot apply to these contested goods. Moreover, the coinciding element’s distinctiveness is limited for at least some of these goods, and the opponent did not claim enhanced distinctiveness for any of the goods to which they were found similar. Consequently, the overall similarity between the signs and the goods in Classes 3 and 11 is not sufficient to trigger a likelihood of confusion, or only a likelihood of association, between the marks.

For the sake of completeness, the opponent relied on the judgment of 06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, in particular paragraphs 29-31. In the Opposition Division’s view, this case is not comparable to the present one. In that case, the Court compared the word marks ‘LIFE’ v ‘THOMSON LIFE’, where ‘THOMSON’ was a company name and ‘LIFE’ constituted a separate word located in the second position. In the present case, however, the contested sign’s element ‘O²’ is joined to the letter ‘C’, which is not a company name. The role of the element ‘O₂’ in the contested sign is not independent of the letter ‘C’: the relevant public will notice the play on the words ‘CO₂’ and ‘O₂’.

Therefore, the similarity between the marks and the goods is not sufficient to trigger a likelihood of confusion for any part of the public for the contested goods in Classes 3 and 11. Likewise, no likelihood of confusion exists for the dissimilar goods in Class 11, as similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR. Therefore, the opposition based on Article 8(1)(b) EUMTR must be rejected for all the contested goods in Classes 3 and 11.

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.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met:

 The signs must be either identical or similar.

 The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

 Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

According to the opponent, earlier mark 1, namely EUTM registration No 7 177 363 , has a reputation for the goods and services in Classes 9, 38 and 41 in the Czech Republic, the European Union, Germany, Ireland, Slovakia and the United Kingdom. Since the earlier mark is an EUTM, this statement must mean that the earlier mark is reputed throughout the European Union on the basis of the evidence originating from the countries listed.

As the United Kingdom is no longer a member of the EU, any claimed reputation in this territory is not relevant for the purpose of applying Article 8(5) EUTMR. Therefore, the claim relating to this territory must be dismissed.

The contested trade mark has a filling date of 19/05/2009. Therefore, the opponent was required to prove that the mark on which the opposition is based had acquired a reputation in the relevant territories prior to that date. The evidence must also demonstrate that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely all the goods and services in Classes 9, 38 and 41. The full list of these goods and services is reproduced in section a) of the ‘Likelihood of confusion’ section.

On 30/07/2012, the opponent submitted the following evidence to support this claim:

 A witness statement by P. H., Director of Brand for Telefónica Europe plc, a subsidiary of the opponent’s group of companies. Mr H. states that he has been associated with this group since 2007. Attached to the witness statement are the following items of evidence.

Evidence relating predominantly to the UK

o Mr H. briefly sets out the history of the company, which started in 2001 in the United Kingdom, by its demerger from British Telecom (Exhibit PH3). He also presents, year by year, the successes of the opponent’s brand, which was launched in the middle of 2002. A huge number of press releases, media coverage, awards, examples of marketing, advertising and sponsorship activities and market studies are referred to. The materials refer to, inter alia, a variety of services offered and mobile devices marketed by the opponent and the date the company commenced trading stock on the London Stock Exchange. Given the extensive nature of the material provided, Mr H. highlights several important events (and press releases) such as, in 2002, the implementation of the first wireless email solution; the huge growth of its client base in 2002; a sponsorship agreement with Arsenal FC whereby O2 became its exclusive mobile communications partner (in April 2002) and the opponent’s significant revenues (with the service revenue growing by 17,7% to GBP 3 672 million and the total revenue by 11,5% to GBP 4 276 million). Mention is made of the fact that O2 Germany topped 4 million customers; reference is made to agreements with high profile IT companies to market and distribute mobile data services and of the development of new messaging and interactive services with Arsenal FC, Bayer Leverkusen and Big Brother 3. The opponent was the UK market leader for SMS. Press releases mention high profile sponsorship of ‘Big Brother’, which resulted in raising the company’s profile thanks to the large viewing figures associated with this prime time reality programme.

o In evidence concerning 2003 reference is made to: the opponent as being the top text messaging provider, handling on average more than 30 million messages per day; provision of a range of interactive mobile services for ‘Pop Idol’ (popular reality show); the launch of ‘Tesco Mobile’, 50-50 joint venture, offering mobile services in Tesco stores across the UK, using the opponent’s technology and network; the launch of a new mobile video service in the UK, including exclusive Rugby World Cup content, enabling customers to download and stream video content; the launch of ‘O2 Music’, Europe's first mobile ‘over the air’ music download service enabling customers to select, download and store the latest chart hit and popular music via their mobile handset onto a specially designed ‘O2 Digital Music Player’ (in a partnership with world renown labels). Another press release refers to online subscription growing by 5% per month and the company’s online channel being the most popular in Europe, signing up a total of one million online customers. References to independently audited figures (25/11/2003) showing that the company has the best UK mobile call success rate ever, beating all figures previously published by Oftel (an independent regulator and competition authority for the UK communications industries, with responsibilities across television, radio, telecommunications and wireless media).

o 2004 evidence includes information regarding the expanse of the opponent’s services and its further growth. Of particular interest and dated 26/05/2004, a press release announced the partnership of the company with the English National Opera (ENO) regarding the first ever live opera concert in Trafalgar Square. Further partnerships with sports bodies, including Arsenal FC and Premier Rugby, are mentioned as well as the opponent being selected by the National Lottery operator Camelot to provide the SMS messaging capability that will help users to play draw-based lottery games via text message.

o 2005 includes evidence that mention further contracts and sponsorships (e.g. announcement of sponsorship of The O2 in London in a multi-year deal worth GBP 6 million per year). It refers to the launch of ‘Mobile TV’ and states that Tesco Mobile reached the one million customer milestone.

o 2006 includes further press releases regarding a partnership with BMW, new platforms for further interactive services and a contract awarded by the UK government which concerns the provision of fire and rescue services with a new secure and highly resilient digital radio system and a contract with E.ON Bayern that comprises the use of energy completely from renewable sources. Press release dated 19/09/2016 announces sponsorship of another O2 Wireless Festival with The Who, Depeche Mode, David Gray and James Blunt and offering mobile ticketing for the first time.

o Evidence for 2007 includes details concerning the opponent’s intention to improve response times and enhance patient care for Welsh ambulance services, announcing that the Welsh Ambulance Service NHS trust has signed a contract worth GBP 32 million with the opponent for the provision of advanced, secure digital communications; information concerning a contract with the AA (Automobile Association in the UK) until 2011; further information regarding broadband improvements; the launch of O2 WALLET which paves the way for the mass market use of mobile phones to pay for purchases or travel around London. Reference is also made to the ‘best service’ accolade and the opponent being named the 5^th best place to work as well as the fact that the opponent will be the exclusive UK carrier for Apple's iPhone.

o For 2008 amongst the press releases are those that show that the opponent has joined forces with LP+ to bring mobile learning to UK schools, further references to improved services and partnerships and on 27/06/2008 a feature entitled ‘The O2 celebrates its first birthday’ discussing the success of the venue. Reference is made to the opponent’s plans to launch a GBP 6 million marketing campaign and 02 Germany’s plans to increase the number of shops across Germany to 1 100. According to the press release of 28/02/2008, O2 Ireland will be the exclusive Irish carrier for Apple's iPhone and, according to the press release of 11/06/2008, Telefónica will distribute the Apple’s iPhone in 12 Latin American countries and the Czech Republic.

o In 2009, of particular interest is a release regarding the O2’s expansion into personal finance with its ‘O2 Money’ and into the laptop market. Deutsche Post World Net, the No. 1 global express and logistics provider with its DHL brand, selected Telefónica to manage its communications services across 28 European countries over the next five years. Mention is made of the fact that O2 ranks highest in customer satisfaction among UK fixed and mobile broadband Internet Service Providers (according to the J. D. Power and Associates 2008 UK Broadband ISP Customer Satisfaction Study).

o Information for 2010 includes details regarding the opponent’s social action with GBP 5 million investment in young people; the O2 brand’s further expansion into new fields and markets, such as the launch of the first location-based mobile marketing, ‘O2 Health’ to deliver better self care for patients and smarter working practices for staff, and the launch of a market leading GBP 5 per month mobile broadband tariff.

Evidence relating to Germany

o Exhibit PH1DE contains a series of printouts of press releases from the opponent’s website www.o2.com with information about the opponent’s subsidiary ‘Telefonica O2 Germany GmbH & Co OHG’ and its activities in Germany. According to these documents, O2 became the first operator in Germany to launch an operational GPRS network and introduced a number of data applications and hardware during 2001 and 2002. There is also some information about the financial performance of the opponent’s subsidiary in 2008. This exhibit also contains printouts from the website www.o2online.de with information about the opponent’s services, a joint-venture with Tchibo established in 2004, and the opponent’s ‘O2 Genion’ service, built around a location based ‘homezone’ concept that allows mobile customers to pay fixed network rates for calls initiated from their ‘home’ area. According to an article entitled ‘The Mobile Phone Plan of the Future?’, dated 20/10/2003, ‘O2 Genion’ attracted more than 5 million subscribers following its introduction in 1998, an 8 % share of the mobile market in Germany. The opponent’s subsidiary was in 4th place in relation to other telecommunication operators.

o Exhibit PH2DE contains a series of printouts of press releases from the ‘Media Centre’ section of the opponent’s website www.o2.com relating to activities in Germany between June 2003 and February 2009. These documents mention, inter alia, that O2 Germany won a major contract with BMW to equip its plant in Leipzig with the ‘O2 GENION’ mobile service in Germany (17/0/2003). They also mention the launch of the first German 3G commercial service (21/03/2004); a cooperation with Sony Music Germany (01/06/2004); a joint venture with Tchibo (30/09/2004); the acquisition of German broadcasting rights for the 2006 FIFA World Cup (24/10/2005); the number of its customers in Germany exceeding 9 million (04/11/2005) and 10 million (06/03/2006); the launch of a new integrated mobile and broadband service (31/08/2006); the company being placed first in the category ‘global satisfaction’ in Germany (25/02/2008); and O2’s coverage of nearly 100 % of the population with its mobile network by 2008 (13/11/2008).

o Exhibit PH3DE contains a series of documents with information about the opponent’s sponsorship and support of many events, such as its sponsorship of Bayer Leverkusen for the 2002-2003 and 2004-2005 football seasons and of the BMW-Sauber Formula One team from 2006 onwards. According to the presentation ‘Sponsorship ‘O₂’ / Bayer Leverkusen’ prepared by IFM, the cost of the sponsorships based on 30-second advertisements in German TV between 01/07/2002 and 30/06/2005 was EUR 1 000 000. This exhibit also contains printouts from the www.seco2.com website with information about the partnership between O2 and BMW (the BMW-Sauber Formula One sponsorship), with examples of related marketing materials. It further contains information about the ‘O2 World Arena’ (also known as ‘O₂ World’). According to various internet sources, including Wikipedia, this is a multi-use indoor arena located in Berlin, opened in September 2008, to which the opponent’s subsidiary purchased naming rights; it hosts sport events and concerts.

o Exhibit PH4DE: a copy of a report entitled ‘AD TREK o2 Private Customers Mobile’, dated December 2008, with information on the earlier mark’s brand awareness and some examples of the opponent’s branding in Germany. The report was prepared using a sample of 300 respondents between the ages of 14 and 49 and was performed through computer-aided telephone interviews, managed by the ‘Icon Added Value CATI Centre’. According to this document, the level of unprompted brand awareness of the earlier mark among other mobile providers in Germany in December 2008 was 63 %, while that of prompted awareness was 98 %. This document also gives details of advertising awareness (unprompted at 20 % and prompted at 67 %). The earlier mark, , is displayed both n the report and on the sample advertising materials.

o Exhibit PH5DE is a copy of materials showing the use of the mark ‘O₂’ for clothing merchandise together with a copy of an ‘O₂’-branded calendar for 2006.

o Exhibit PH6DE is a copy of the judgments in German issued by the Landgericht München I in cases 4HK O 4302/05 and 1HK O 389/04, concerning the infringement proceedings against, inter alia, the word mark ‘O₂ OPTIX’.

o Exhibit PH7DE is a copy of the judgment in German issued by the Landgericht München I in case 4HK O 22429/03 concerning the infringement proceedings against, inter alia, the figurative mark ‘O₂’.

Evidence relating to Ireland

o Exhibit PH1IE contains a series of printouts of press releases from the opponent’s websites www.o2.com and www.o2online.ie with information about the opponent’s subsidiary ‘Telefonica O2 Ireland’ and its activities in Ireland.

o Exhibit PH2IE contains a series of printouts of press releases from the ‘Media Centre’ section of the opponent’s website www.o2online.ie relating to activities in Ireland between 2003 and 2009. These documents mention, inter alia: the launch of the new O2 device from the end of November 2003, being the most advanced mobile communications business product on the market (11/11/2003); O2’s switch to the 3G network, covering more than 35 % of the population and major urban cities, such as Dublin, Cork, Limerick, Galway, Waterford and Kilkenny (15/12/2003); an announcement about O2 Ireland’s ‘2 Geographic Specific National Roaming Agreement’ with Meteor Mobile Communications (10/08/2004); the commercial launch of i-mode, the world’s most widely used mobile internet service, available from the opponent’s company in Ireland (05/10/2005); the signing of an agreement with the International Rugby Board for the provision of O2 BlackBerry services (14/03/2006); an announcement that the opponent’s subsidiary will become the new official sponsor of the Irish National Rugby team from 31/05/2006 until the conclusion of the 2011/2012 season (30/05/2006); the launch of O2 Broadband, which will provide wireless broadband whether consumers are at home, in the office or on the move (09/07/2007); an announcement that the opponent’s subsidiary will be the exclusive Irish carrier for Apple’s iPhone when it makes its official debut in Ireland on 14/03/2008 (28/02/2008); O2 winning an award for best customer care in lreland (December 2008); and the launch of a new version of the opponent’s ‘O2 Experience’ price plan for prepay customers offering unlimited calls and texts (24/03/2009).

o Exhibit PH3IE contains two unsigned reports by Starcom Mediavest detailing what appears to be the opponent’s subsidiary’s advertising expenditure in Ireland. The figures are divided into the folliwng categories: Television, Radio, Press, Outdoor, Internet and Cinema. The numbers for the first four categories are very substantial. The total expenditure on advertising between April and December 2003 amounted to EUR 5 892 126, and that between January 2004 and December 2004 to EUR 8 945 976. The earlier mark is displayed in both reports.

o Exhibit PH4IE contains a copy of a table showing the prompted TV, print, poster and radio advertising awareness for, inter alia, the ‘O2’ brand between May 2004 and June 2005. The document is not signed, and neither the source nor any specific details relating to this report are indicated. It does not state what goods and services this awareness refers to.

o Exhibit PH5IE contains copies of two tables prepared by TNS mrbi Ad & Brand showing, according to the opponent, unprompted and prompted advertising awareness of the opponent’s mark. However, neither the specific details of this study nor any information on the goods and services to which they refer are provided. The documents are poorly reproduced and the information they contain is barely legible.

o Exhibit PH6IE contains a series of printouts from various sources, including Wikipedia, about ‘The O2’ concert and events venue in Dublin, Ireland, which opened on 16/12/2008. It also contains a list of events held there in 2009 and some press articles from various online sources, dated 2008, about the venue and its events. According to one of the articles, O2 agreed to pay EUR 25 million for the naming rights.

Evidence relating to the Czech Republic

o Exhibit PH1CZ contains a series of printouts of press releases from the opponent’s website www.o2.com as well as the Czech websites www.telecom.cz and www.cbw.cz. They contain information about the opponent’s subsidiary ‘Telefonica O2 Czech Republic’ and its activities in the Czech Republic. According to these documents, Telefonica O2 Czech Republic replaced two earlier brands, Český Telecom and Eurotel Praha, spol. S.R.O., in 2006.

o Exhibit PH2CZ contains a series of printouts of press releases from the ‘Media Centre’ section of the opponent’s website www.o2online.ie relating to activities in the Czech Republic between 2006 and 2009. These documents mention, inter alia: the opponent’s subsidiary’s offer of a package of telecommunication and entertainment services for one price under the ‘O2 TRIO’ brand (05/03/2007); an announcement that the number of the opponent’s customers using the ADSL broadband internet access is in excess of 500 000 (05/04/2007); the fact that the opponent’s subsidiary was the only company in the Czech Republic to be awarded a certificate affirming the quality of its internal control mechanisms (16/05/2007); the fact that it was the first operator in the country to offer terrestrial broadcasting of Czech television channels in high definition (28/06/2007); its winning of a tender for a large part of the state administrations telecommunications solutions (13/07/2007); its signing of a five-year contract with Prague arena owners BESTSPORT to name the venue O2 ARENA and a five-year contract with Live Nation (04/02/2008); the fact that the opponent’s subsidiary’s television service has exceeded 80 000 customers (18/02/2008); and information on the opponent subsidiary’s cooperation with Huawei on expanding 3G network coverage (06/09/2008).

o Exhibit PH3CZ contains a series of barely legible screenshots from what the opponent claims is the website www.dancemusicawards.cz; undated photographs from the ‘O2 Dance Music Awards 2007 and 2008’ events, sponsored by the opponent’s subsidiary; and printouts from the websites www.o2extra.cz and www.o2inlinecup.cz in Czech with information about sponsorships of the ‘Seat Leon EuroCup 2009’ and ‘O2 InLine Cup’ in 2008 and 2009, which were held in the Czech Republic throughout the year. Some marketing materials for these events are attached. This exhibit also contains copies of the 2009 ‘O₂ Arena’ magazine in Czech and partly in English with information about this venue and various events held there.

Evidence relating to Slovakia

o Exhibit PH1SK contains a series of printouts of press releases, mainly from the opponent’s website, with information about the opponent’s subsidiary Telefonica O2 Slovakia and its activities in Slovakia between 2007 and 2009. These documents contain, inter alia, an announcement of the opponent’s entry into the Slovak market in 2007 with more than 400 000 pre-registered potential customers (24/01/2007); an announcement that, 12 days after the launch of its operation, Telefonica O2 Slovakia had over 110 000 active customers, breaking several records for market penetration by a mobile operator (15/02/2007); the fact that the opponent subsidiary’s company provides coverage to more than 34 % of the population (07/09/2007), which later increased to 88 % (08/09/2008); the information that 91 % of O2 customers are satisfied with the services of the O2 Slovakia network, based on a sample of 966 customers (23/04/2009); several press releases about an increase in new customers; and the fact that O2 was elected ‘Mobile Operator of the Year 2009’ during an independent public inquiry to assess Slovak mobile operators’ activities (18/01/2010).

o Exhibit PH2SK contains a series of printouts with information on various sponsorship activities of the opponent’s subsidiary in Slovakia, including the O2 Rookie Camp 2009, ‘Exclusive FM powered by O2’ (a series of FM radio programs), the Bazant Pohoda festival, the Wilsonic festival, the O2 Elite Beach Tour and the ‘Red Nose Clowndoctors’ (‘Cerveny Nos Clown Doctors’).

The evidence described under the title ‘Evidence relating predominantly to the United Kingdom’ clearly relates to the territory of the United Kingdom (UK). It follows from Article 8(5) EUTMR, worded in the present tense, that the conditions for applying it must also be fulfilled at the time of taking the decision. As the UK is no longer a member of the EU, the evidence relating to this territory cannot be taken into account to prove enhanced distinctiveness ‘in the EU’ or, indeed, in the UK as a separate territory. It would be relevant only if its content were general enough to be extrapolated to the countries of the EU. This is, however, not the case here, as this part of the evidence is strongly linked with the UK. It usually refers specifically to this territory and its public, the locations indicated are within the UK, domain names of the majority of materials are with the co.uk country code, which is specific for the UK, and the prices are mostly in pound sterling (like in exhibit PH6).

The evidence that is most relevant for the examination of the mark’s reputation in the EU has been described under the titles ‘Evidence relating to Germany’ (exhibits PH1DE, PH2DE, PH3DE, PH4DE, PH5DE, PH6DE and PH7DE), ‘Evidence relating to Ireland’ (exhibits PH1IE, PH2IE, PH3IE, PH4IE, PH5IE and PH6IE), ‘Evidence relating to the Czech Republic’ (exhibits PH1CZ, PH2CZ and PH3CZ) and ‘Evidence relating to Slovakia’ (exhibits PH1SK and PH2SK).

The opponent submitted a witness statement drawn up by Director of Brand of one of the opponent’s subsidiary companies. As far as the probative value of the affidavit is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perception of the party involved in the dispute may be more or less affected by its personal interests in the matter. However, this does not mean that such statements do not have any probative value at all. The final outcome depends on the overall assessment of the evidence in the particular case.

The affidavit submitted by the opponent contains an explanation of the evidence and exhibits attached. Although it is very extensive and detailed, not all of the statements included are supported by other items of evidence. Moreover, the vast majority of these statements are backed up only by some press releases, issued either by the opponent itself or by its dependent companies through the websites www.o2.com, www.o2online.de, www.o2online.ie, and others (i.e. the vast majority of the printouts attached as exhibits PH1DE, PH2DE, PH1IE, PH2IE, PH1CZ and PH1SK). These materials have some probative value, as they are detailed and consistent, were published regularly over the extended period of time and are available online to anyone. However, their probative value as such must be seen as not particularly high.

As the evidence must be considered as a whole, the aforementioned witness statement, together with press releases and other materials originating from third parties taken together, and in view of the relationship between them, give a sufficient overview of the recognition of the opponent’s mark in the European Union for at least some of the services in Class 38 for which a reputation has been claimed.

Reputation is a knowledge threshold requirement, implying that it must be principally assessed on the basis of quantitative criteria. In order to satisfy the requirement of reputation, the earlier mark must be known by a significant part of the public concerned by the goods or services covered by that trade mark (14/09/1999, C‑375/97, Chevy, EU:C:1999:408, § 22-23; 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 34).

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The Opposition Division will begin the examination with the evidence from the German market, where the earlier mark has been subject to the most longstanding use. The press releases show that the opponent’s German subsidiary became the first mobile operator in Germany to launch an operational GPRS network under the earlier mark. It developed and successfully commercialised novel mobile telecommunications services, such as ‘O2 Genion’, which attracted more than 5 million subscribers since its introduction in Germany in 1998, an 8 % share of the mobile market (exhibits PH1DE and PH2DE). By March 2006 the opponent’s German customer base exceeded 10 million, and by November 2008 mobile network services branded with the opponent’s mark were available to nearly 100 % of the German population (exhibit PH2DE).

As has been attested by third-party sources, the opponent has invested substantial amounts in advertising and marketing throughout the years. The earlier mark was prominently exposed during various events, including the 2006 FIFA World Cup, as well as sponsorship partnerships with Formula One and Bayer Leverkusen football club, which involved extensive and costly advertising on German television between 01/07/2002 and 30/06/2005. The opponent’s mark was promoted by displaying it as a part of the ‘O2 World Arena’, which was possible due to acquisition of the naming rights by the opponent’s subsidiary (exhibit P3DE).

Importantly, the level of recognition of the earlier mark in Germany is confirmed by the market research study performed in 2008, according to which the level of unaided brand awareness of the earlier mark was 63 % and that when aided was 98 % (exhibit PH4DE). This document provides further details of how the study was performed, what questions were asked and what methodology was used. Although the study was performed on a group of only 300 respondents, which is not a particularly large sample, taking into account the remaining evidence concerning this territory, the Opposition Division has sufficient information to conclude that the earlier mark was generally known in the relevant market in Germany in the field of mobile telecommunications and mobile telecommunications network services in Class 38 and that the earlier mark had a certain degree of reputation in that territory on the contested sign’s application date.

This conclusion does not necessarily apply to the remaining services in Class 38. Although some of them are related to mobile telecommunications and mobile telecommunications network services, the evidence does not allow conclusive findings for all of them. The evidence clearly suggests that the earlier mark has an important presence and recognition in the field of mobile telecommunications and mobile telecommunications network services, but it remains inconclusive for the remaining services in Class 38. The opponent must prove that the earlier mark is known by a significant part of the relevant public for all the specific goods and services claimed. The finding of a reputation of a mark, just as genuine use, cannot be based on probabilities or suppositions, must be demonstrated by solid and objective evidence (18/01/2011, T‑382/08, Vogue, EU:T:2011:9, § 22, 12/12/2002, T‑39/01, Hiwatt, EU:T:2002:316, § 47). Likewise, insufficient or no evidence was submitted for the goods and services in Classes 9 and 41 for which a reputation was claimed.

Furthermore, recognition of the earlier mark does not necessarily apply to other markets in which a reputation was claimed, namely the Czech Republic, Ireland and Slovakia. The period of use of the earlier mark in those territories was shorter than in Germany, and – importantly – the evidence relating to these territories is inconclusive. In particular, the majority of the items of evidence are press releases originating from the opponent or its subsidiary companies, which are not backed up by evidence from independent sources. The details of advertising expenditure in Ireland (exhibit PH3IE) are not supported by sufficient additional information or actual examples from the market of these activities. Market studies relating to Ireland are very brief and lack information that is essential to assess their reliability and correctness. As regards exhibit PH4IE, neither the source of the data nor any specific details of how the study was performed, what questions were asked, etc. were provided. As regards exhibit PH5IE, this document is poorly reproduced and the results of the study are barely legible. Moreover, there are no details of the study or its methodology and no information on the goods and services to which the results refer. The opponent did not provide any market research studies for the Czech Republic or Slovakia. Even taken as a whole, the evidence submitted for these territories does not allow unequivocal conclusions as to whether the earlier mark was known by a significant part of the public concerned and to what degree.

Nevertheless, the reputation of the earlier mark established in Germany is sufficient to conclude that this mark has a reputation in the whole European Union within the meaning of Article 8(5) EUTMR. The Court has held that an EU trade mark must be known in a substantial part of the EU by a significant part of the public concerned for the goods or services covered by that trade mark. In view of the facts of that case, the territory of the Member State in question (Austria) was considered to constitute a substantial part of the territory of the EU (06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 29-30).

Therefore, it is concluded that the earlier mark enjoyed, on the date of filing of the contested application (i.e. 19/05/2009), a certain degree of reputation in the European Union for mobile telecommunications services; mobile telecommunications network services in Class 38.

b) The signs

Earlier mark 1 has already been compared with the contested sign above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR.

c) The ‘link’ between the signs

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria. The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

The earlier mark enjoys a certain degree of reputation in the European Union for mobile telecommunications services and mobile telecommunications network services in Class 38. The earlier mark is not descriptive, allusive or otherwise weak for these services. Therefore, it is inherently distinctive to an average degree.

The opposition remains directed against the following contested goods:

Class 3: Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

The degree of distinctiveness of the element ‘O₂’ is limited for some of these goods, such as cleaning preparations; soaps; cosmetics in Class 3, and normal for other goods, such as apparatus for refrigerating in Class 11.

All the contested goods are dissimilar to the opponent’s services for which a reputation has been proven. These are various cleaning, scouring and abrasive preparations, cosmetics, perfumery and other products for personal hygiene and beautification, as well as environmental control apparatus and installations for various purposes. There is no relationship whatsoever between these contested goods and the services for which a reputation has been proved. Indeed, they clearly differ in nature, purpose, methods of use, distribution channels and outlets from the services for which a reputation has been proved. In addition, they normally have different providers and are neither complementary nor in competition. There can be no risk of confusion between them.

Moreover, the contested goods are far-removed from the services for which the earlier mark has a reputation. They belong to entirely unrelated industries and economic sectors, and the relevant public will not expect the earlier mark to be linked with these fields.

While the relevant sections of the public for the conflicting marks may overlap to some extent (given that some of the contested goods and the opponent’s services both target the public at large), the goods and services at issue are so different that the contested sign is unlikely to bring the earlier mark to the mind of the relevant public.

Although the signs are similar, the degree of similarity is relatively low, as there is only a low degree of visual and conceptual similarity and an average degree of aural similarity. Moreover, the signs are short, so even small differences between them will be noticed by the public. Although the contested sign shares the letter ‘O’ and the digit ‘2’ with the earlier mark, and despite the earlier mark’s degree of reputation, it is unlikely that the relevant public will establish a link between them. This is all the more true for the contested goods, for which ‘O₂’ has a limited degree of distinctiveness.

Taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

Therefore, since one of the necessary conditions is not met, the opposition is not well founded under Article 8(5) EUTMR and must be rejected insofar as it concerns all the contested goods in Classes 3 and 11.

CONCLUSION

Since the opposition directed against the contested goods in Classes 3 and 11 has failed on all the grounds on which it was based, it must be rejected for these goods.

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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Lars HELBERT

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.