OPPOSITION No B 2 454 737

Enertrade Consultoria e Inversiones S.L, Paseo de la Habana, 56 1ºA, 28036 Madrid, Spain (opponent), represented by Segura & Maclean S.L., Calle Linaje, 2 - 3º Izquierda, 29001 Málaga, Spain (professional representative)

a g a i n s t

Energrade Kft, Batthyány utca 49. fszt.5, 1015 Budapest, Hungary (applicant), represented by SBGK Ügyvédi Iroda, Andrássy út 113, 1062 Budapest, Hungary (professional representative).

On 16/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 454 737 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 13 140 421, . The opposition is based on European Union trade mark registration No 8 369 241, as no proof of use was submitted

for Spanish trade mark No M2 851 618.

The opponent invoked Article 8(1)(a) EUTMR.

Preliminary remark

Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are
related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the
goods/services cannot be established, the Office will still examine the case under
Article 8(1)(b) EUTMR, which requires at least similarity between signs and
goods/services and likelihood of confusion. Similarity covers situations where both
marks and goods/services are similar and also situations where the marks are identical and the goods/services are similar or vice versa.

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.

1. The goods and services

Further to a partial revocation of European Union trade mark registration 8 369 241, (C12338, now final), the services on which the opposition is based are the following:

Class 35: Market studies, business consultancy and management relating to energy.

The contested goods and services are the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cashregisters; calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.

Class 35: Advertising, business management, energy, information technology, business data planning, collection, processing, analysis, and corresponding business support and commercial services and benchmarking services.

Class 41: Providing of professional training and retraining.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.

Some of the contested services are identical to services on which the opposition is based e.g the opponent’s market studies are embraced by the contested advertising services. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

2. 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 deemed to be identical are specialised and are directed at business customers with specific professional knowledge or expertise.

The degree of attention will tend to be high as these services are important for the development of the targeted entities.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

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 elements, for example.

Although the marks are each made up of a sole verbal element, the letters ‘ENER’ in both marks will be perceived throughout the territory as a reference to either the known English word element ‘energy’ or its close linguistic equivalent. It is therefore a weak element as it will be perceived as alluding to the nature or the quality of the services or of how they are provided. Although the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, the fact remains that, when perceiving a word sign, he will break it down into elements which, for him, suggest a specific meaning or which resemble words known to him (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57)

The remaining letters of the earlier mark ‘TRADE’ will be understood by the relevant professional public as alluding to the business services and will therefore be seen as a further weak element. The remaining letters of the contested sign will be perceived by part of the public as the English word ‘grade’, alluding to the quality of the services or the goods which are the subject of the services and therefore as a weak element. For that part of the public which does not perceive or understand this element, this letter-string is meaningless and distinctive.

Both marks are depicted in colour and are lightly stylised in different ways, though their respective decorative elements are non-distinctive.

Visually, aurally and conceptually, the signs coincide in ‘ENER’ which is weak. However, they differ in the word ‘TRADE’ of the earlier sign which is weak and ‘GRADE’ of the contested sign which is weak for that part of the public that understands it and distinctive for those consumers who don’t.

Therefore, the signs are similar only to a very low degree.

4. Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the services such as would materially affect the distinctiveness of the mark in question from the perspective of the public in the relevant territory, when perceived as a whole. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of weak elements in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The marks only coincide in a weak element. Their remaining elements either differentiate them due to differing weak concepts or due to the fact that the remaining element is weak in the earlier right and distinctive in the contested sign.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public, contrary to the statements of the opponent in this regard. Therefore, the opposition must be rejected.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR because the signs are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Valeria ANCHINI

Keeva DOHERTY

Edith Elisabeth VAN DEN EEDE

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.