OPPOSITION No B 2 508 532

PPHU "KAFI" Katarzyna Fidecka, Ul. Bogusława X 6/3, 70-440 Szczecin, Poland (opponent), represented by Kaminski & Partners, Jasna 13, 05-502 Piaseczno, Poland (professional representative)

a g a i n s t

Globo Comunicação e Participações S.A., Rua Lopes Quintas, 303, Jardim Botânico, Rio de Janeiro, 22460-010, Brazil (applicant), represented by Duclos, Thorne, Mollet-Vieville et Associes, 164, rue du Faubourg Saint-Honoré, 75008 Paris, France (professional representative).

On 02/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 508 532 is upheld for all the contested goods and services.

2. European Union trade mark application No 13 439 922 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 650.

REASONS:

The opponent initially filed an opposition against part of the goods and services of European Union trade mark application No 13 439 922, namely against all of the goods in Class 9 and some of the services in Class 35. On 21/08/2015, the contested EUTM application was divided. The contested goods and services in Classes 9 and 35 remained in the original application No 13 439 922, and a new EUTM application was created under No 14 501 506 in relation to the rest of the goods and services in Classes 16, 35, 36, 38, 41, 42 and 45. Following the division, the opposition is now directed against all of the goods and services of EUTM No 13 439 922. The opposition is based on, inter alia, European Union trade mark registration No 11 826 641. The opponent invoked Article 8(1)(b) EUTMR.

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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 11 826 641.

1. The goods and services

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

Class 9: Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; Apparatus for recording, transmission or reproduction of sound or images; Magnetic data carriers, recording discs; Compact discs, DVDs and other digital recording media; Mechanisms for coin-operated apparatus; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Aerometers; Particle accelerators; Actinometers; Accumulators, electric; Alarms; Anti-theft warning apparatus; Sound alarms; Fire alarms; Alidades; Alcoholmeters; Ammeters; Air analysis apparatus; Anemometers; Anodes; Aerials; Anticathodes; Chemistry apparatus and instruments; Distance recording apparatus; Cameras [photography]; X-ray apparatus not for medical purposes; Apertometers [optics]; Apparatus and instruments for astronomy; Audiovisual teaching apparatus; Ticket dispensers; Juke boxes, musical; Answering machines; Automatic indicators of low pressure in vehicle tires; Barometers; Anode batteries; Batteries for lighting; Batteries, electric; Batteries, electric, for vehicles; Galvanic batteries; Solar batteries; Betatrons; Fuses; Fuses; Punched card machines for offices; Flash-bulbs [photography]; Marking buoys; Signalling buoys; Buzzers; Directional compasses; Shoes for protection against accidents, irradiation and fire; Battery jars; Viewfinders, photographic; Choking coils [impedance]; Electromagnetic coils; Coils, electric; Chips [integrated circuits]; DNA chips; Chromatography apparatus for laboratory use; Chronographs [time recording apparatus]; Darkrooms [photography]; Plumb bobs; Cyclotrons; Frequency meters; Gauges; Petrol gauges; Marking gauges [joinery]; Bar code readers; Readers [data processing equipment]; Optical character readers; Teleprinters; Telemeters; Densimeters; Densitometers; Distillation apparatus for scientific purposes; Light-emitting diodes [LED]; Monitoring apparatus, electric; Dosimeters; Traffic-light apparatus [signalling devices]; Printers for use with computers; Copper wire, insulated; Wires, electric; Telephone wires; Telegraph wires; Diffraction apparatus [microscopy]; Dictating machines; Dynamometers; Compact discs [audio-video]; Compact discs [read-only memory]; Disks, magnetic; Calculating disks; Optical discs; Floppy disks; Juke boxes for computers; Fire hose nozzles; Sound transmitting apparatus; Balances [steelyards]; Alarm bells, electric; Downloadable ring tones for mobile phones; Signal bells; Bells [warning devices]; Fluorescent screens; Screens [photography]; Projection screens; Radiology screens for industrial purposes; Electrolysers; Electronic pens [visual display units]; Electric door bells; Theft prevention installations, electric; Regulating apparatus, electric; Epidiascopes; Ergometers; Eyeglass cases; Eyeglass cases; Electronic tags for goods; Wavemeters; False coin detectors; Films, exposed; Cinematographic film, exposed; Animated cartoons; Filters for respiratory masks; Filters [photography]; Filters for ultraviolet rays, for photography; Apparatus and instruments for physics; Photocopiers [photographic, electrostatic, thermic]; Photometers; Cases especially made for photographic apparatus and instruments; Galena crystals [detectors]; Galvanometers; Fire extinguishers; Gasometers [measuring instruments]; Surveying chains; Hydrometers; Loudspeakers; Plugs, sockets and other contacts [electric connections]; Record players; Grids for batteries; Whistle alarms; Dog whistles; Signalling whistles; Solderers' helmets; Holograms; Styli for record players; Apparatus for changing record player needles; Inductors [electricity]; Incubators for bacteria culture; Ducts [electricity]; Electric installations for the remote control of industrial operations; Sprinkler systems for fire protection; Interfaces for computers; Spark-guards; Cables, electric; Coaxial cables; Fibre [fiber (Am.)] optic cables; Starter cables for motors; Calculating machines; Pocket calculators; Cinematographic cameras; Camcorders; Bullet-proof waistcoats; Life jackets; Holders for electric coils; Encoded magnetic cards; Integrated circuit cards [smart cards]; Video cassettes; Video game cartridges; Protective helmets; Riding helmets; Protective helmets for sports; Cash registers; Cathodes; Protractors [measuring instruments]; Computer keyboards; Hourglasses; Fire blankets; Magnetic encoders; Encoded identification bracelets, magnetic; Life buoys; Collectors, electric; Diving suits; Protective suits for aviators; Decompression chambers; Comparators; Marine compasses; Compasses [measuring instruments]; Computer peripheral devices; Computers; Laptop computers; Notebook computers; Intercommunication apparatus; Electric apparatus for commutation; Commutators; Capacitors; Optical condensers; Cosmographic instruments; Dressmakers' measures; Pedometers; Washing trays [photography]; Acid hydrometers; Acidimeters for batteries; Circuit closers; Lactodensimeters; Lactometers; Flashlights [photography]; Darkroom lamps [photography]; Vacuum tubes [radio]; Thermionic tubes; Optical lamps; X-ray tubes not for medical purposes; Electric discharge tubes, other than for lighting; Eyeglass chains; Lasers, not for medical purposes; Magic lanterns; Signal lanterns; Viscosimeters; Meters; Waling glasses; Revolution counters; Abacuses; Rulers [measuring instruments]; Plumb lines; Sounding lines; Logs [measuring instruments]; Binoculars; Sighting telescopes for firearms; Magnifying glasses [optics]; Mirrors [optics]; Mirrors for inspecting work; Measuring spoons; Magnets; Decorative magnets; Tape recorders; Video recorders; Identity cards, magnetic; Magnetic data media; Crash test dummies; Resuscitation mannequins [teaching apparatus]; Manometers; Divers' masks; Protective masks; Masts for wireless aerials; Adding machines; Materials for electricity mains [wires, cables]; Furniture especially made for laboratories; Mechanisms for coin-operated apparatus; Mechanisms for counter-operated apparatus; Coin-operated mechanisms for television sets; Megaphones; Diaphragms [acoustics]; Diaphragms for scientific apparatus; Carpenters' rules; Rules [measuring instruments]; Measures; Exposure meters [light meters]; Blinkers [signalling lights]; Shutters [photography]; Microphones; Micrometers; Microprocessors; Microscopes; Microtomes; Modems; Video screens; Monitors [computer hardware]; Monitors [computer programs]; Mouse [data processing equipment]; Transmitters of electronic signals; Transmitters [telecommunication]; Temperature indicator labels, not for medical purposes; Knee-pads for workers; Disk drives for computers; Neon signs; Identification threads for electric wires; Surveyors' levels; Levels [instruments for determining the horizontal]; Verniers; Sound recording carriers; Carriers for dark plates [photography]; Electronic agendas; Lighting ballasts; Sounding leads; Lenses for astrophotography; Objectives [lenses] [optics]; Printed circuits; Printed circuits; Voltage surge protectors; Teeth protectors; Photographic racks; Audio- and video-receivers; Lightning arresters; Distance measuring apparatus; Cassette players; DVD players; Compact disc players; Weights; Asbestos clothing for protection against fire; Clothing for protection against fire; Clothing for protection against accidents, irradiation and fire; Clothing especially made for laboratories; Photovoltaic cells; Galvanic cells; Limiters [electricity]; Electrified fences; Octants; Pince-nez; Goggles for sports; Spectacles [optics]; Anti-glare glasses; Sunglasses; Ohmmeters; Resistances, electric; Spectacle frames; Spectacle frames; Computer software, recorded; Optical data media; Light conducting filaments [optical fibers [fibres]]; Oscillographs; Asbestos screens for firemen; Covers for electric outlets; Lens hoods; Anti-glare visors; Workmen's protective face-shields; Personal stereos; Ozonisers [ozonators]; Traffic cones; Computer memory devices; USB flash drives; Parking meters; Safety restraints, other than for vehicle seats and sports equipment; Life belts; Periscopes; Ovens for laboratory use; Calibrating rings; Pipettes; Pyrometers; Safety tarpaulins; Planimeters; Downloadable image files; Downloadable music files; Plotters; Wafers for integrated circuits; Plates for batteries; Phonograph records; Clinometers; Mouse pads; Wrist rests for use with computers; Containers for contact lenses; Containers for microscope slides; Sleeves for laptops; Polarimeters; Semi-conductors; Graduated glassware; Fire pumps; Identification sheaths for electric wires; Sheaths for electric cables; Spirit levels; Mercury levels; Speed checking apparatus for vehicles; Test tubes; Material testing instruments and machines; Central processing units [processors]; Computer game software; Computer programmes [programs], recorded; Computer programs [downloadable software]; Computer operating programs, recorded; Battery chargers; Current rectifiers; Vacuum gauges; Prisms [optics]; Egg-candlers; Relays, electric; Time switches, automatic; Switches, electric; Inverters [electricity]; Portable media players; Walkie-talkies; Converters, electric; Conductors, electric; Acoustic conduits; Electricity conduits; Magnetic wires; Slides [photography]; Push buttons for bells; Surveying instruments; Azimuth instruments; Mathematical instruments; Navigational instruments; Levelling instruments; Observation instruments; Diaphragms [photography]; Electronic publications, downloadable; Distribution consoles [electricity]; Switchboxes [electricity]; Radar apparatus; Radios; Vehicle radios; Radio pagers; Tone arms for record players; Digital photo frames; Frames for photographic transparencies; Screens for photoengraving; Reducers [electricity]; Refractometers; Refractors; Voltage regulators for vehicles; Speed regulators for record players; Stage lighting regulators; Milage recorders for vehicles; Wind socks for indicating wind direction; Asbestos gloves for protection against accidents; Gloves for divers; Gloves for protection against X-rays for industrial purposes; Gloves for protection against accidents; Rheostats; Respirators for filtering air; Respirators, other than for artificial respiration; Retorts; Rods for water diviners; Capillary tubes; Pitot tubes; Slide projectors; Saccharometers; Satellites for scientific purposes; Light dimmers [regulators], electric; Sextants; Spherometers; Sulphitometers; Life nets; Nets for protection against accidents; Scanners [data processing equipment]; Socks, electrically heated; Apparatus for measuring the thickness of skins; Appliances for measuring the thickness of leather; Junction boxes [electricity]; Battery boxes; Branch boxes [electricity]; Headphones; Telephone receivers; Correcting lenses [optics]; Optical lenses; Eyepieces; Salinometers; Sonars; Marine depth finders; Spectrograph apparatus; Spectroscopes; Screw-tapping gauges; Calipers; Acoustic couplers; Couplers [data processing equipment]; Hands free kits for phones; Radiotelephony sets; Radiotelegraphy sets; Micrometer screws for optical instruments; Magnetic tape units for computers; Fire boats; Stands for photographic apparatus; Stereoscopes; Retorts' stands; Plane tables [surveying instruments]; Stroboscopes; Contacts, electric; Drying racks [photography]; Slide-rules; Slide calipers; Signals, luminous or mechanical; Fog signals, non-explosive; Simulators for the steering and control of vehicles; Sirens; Cabinets for loudspeakers; Distribution boxes [electricity]; Petri dishes; Contact lenses; Spectacle lenses; Optical glass; Glass covered with an electrical conductor; Eyeglass cords; Spools [photography]; Mechanical signs; Signs, luminous; Electronic notice boards; Switchboards; Distribution boards [electricity]; Control panels [electricity]; Signalling panels, luminous or mechanical; Laboratory trays; Tachometers; Taximeters; Metronomes; Reflecting discs for wear, for the prevention of traffic accidents; Head cleaning tapes [recording]; Sound recording strips; Magnetic tapes; Videotapes; Telephone transmitters; Portable telephones; Telegraphs [apparatus]; Facsimile machines; Telescopes; Theodolites; Thermometers, not for medical purposes; Thermostats; Thermostats for vehicles; Bags adapted for laptops; Totalizators; Transformers [electricity]; Step-up transformers; Electronic pocket translators; Transponders; Transistors [electronic]; Life-saving rafts; Triodes; Vehicle breakdown warning triangles; Tripods for cameras; Fire beaters; Horns for loudspeakers; Speaking tubes; Junction sleeves for electric cables; Armatures [electricity]; Rods [surveying instruments]; Cupels [laboratory]; Garments for protection against fire; Cell phone straps; Integrated circuits; Urinometers; Anti-interference devices [electricity]; Diagnostic apparatus, not for medical purposes; Gas testing instruments; Testing apparatus not for medical purposes; Food analysis apparatus; Steering apparatus, automatic, for vehicles; Film cutting apparatus; Cleaning apparatus for phonograph records; Stills for laboratory experiments; Invoicing machines; Apparatus for fermentation [laboratory apparatus]; Blueprint apparatus; Phototelegraphy apparatus; Voting machines; Cathodic anti-corrosion apparatus; Heat regulating apparatus; Apparatus to check franking; Chargers for electric batteries; Money counting and sorting machines; Apparatus for editing cinematographic film; Glazing apparatus for photographic prints; Sound locating instruments; Teaching apparatus; Satellite navigational apparatus; Protection devices for personal use against accidents; Breathing apparatus, except for artificial respiration; Breathing apparatus for underwater swimming; Sound reproduction apparatus; Precision measuring apparatus; Pressure measuring apparatus; Speed measuring apparatus [photography]; Enlarging apparatus [photography]; Oxygen transvasing apparatus; Data processing apparatus; Sound recording apparatus; Time recording apparatus; Demagnetizing apparatus for magnetic tapes; Hemline markers; Stereoscopic apparatus; Boiler control instruments; Drying apparatus for photographic prints; Naval signalling apparatus; Weighing machines; Balancing apparatus; Railway traffic safety appliances; Remote control apparatus; Electro-dynamic apparatus for the remote control of railway points; Electro-dynamic apparatus for the remote control of signals; Electric apparatus for remote ignition; Global Positioning System [GPS] apparatus; Heliographic apparatus; Apparatus and installations for the production of X-rays, not for medical purposes; Weighing apparatus and instruments; Nautical apparatus and instruments; Surveying apparatus and instruments; Optical apparatus and instruments; Life saving apparatus and equipment; Ionization apparatus not for the treatment of air or water; Centering apparatus for photographic transparencies; Navigation apparatus for vehicles [on-board computers]; Teleprompters; Projection apparatus; Radiological apparatus for industrial purposes; Telephone apparatus; Television apparatus; High-frequency apparatus; Protection devices against X-rays, not for medical purposes; Instruments containing eyepieces; Scales; Letter scales; Precision balances; Weighbridges; Cases fitted with dissecting instruments [microscopy]; Variometers; Fire hose; Video telephones; Automated teller machines [ATM]; Hygrometers; Laboratory centrifuges; Peepholes [magnifying lenses] for doors; Voltmeters; Fire engines; Pressure indicators; Pressure indicator plugs for valves; Light-emitting electronic pointers; Quantity indicators; Water level indicators; Speed indicators; Electric loss indicators; Temperature indicators; Fire escapes; Detectors; Smoke detectors; Metal detectors for industrial or military purposes; Circuit breakers; Telerupters; Optical goods; Altimeters; Shutter releases [photography]; Amplifiers; Amplifying tubes; Jigs [measuring instruments]; Nose clips for divers and swimmers; Wire connectors [electricity]; Locks, electric; Ear plugs for divers; Solenoid valves [electromagnetic switches]; X-ray photographs, other than for medical purposes; X-ray films, exposed; Time clocks [time recording devices]; Electrified rails for mounting spot lights; Transmitting sets [telecommunication]; Connections for electric lines; Couplings, electric; Terminals [electricity]; Connectors [electricity]; Road signs, luminous or mechanical; Beacons, luminous.

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; Cash registers, calculating machines, data processing equipment, computers; Computer software; Fire-extinguishing apparatus; Audio/visual and photographic devices; Linear or interactive data carriers for audiovisual programs; Videograms, Videocassettes, Videodiscs, interactive compact discs (cd-i's), Video compact discs (VCD), CD-ROMs, DVDs; Exposed slide films; Magnetic, digital, opto-digital tapes; Compact discs; Cinematographic films; Exposed films; Applications for tablets and smartphones.

Class 35: Online retailing of electronic, audiovisual, digital and multimedia goods.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to 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.

Contested goods in Class 9

Nautical, surveying, optical, weighing, life-saving apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; videocassettes; DVDs; magnetic tapes; compact discs; exposed films are identically contained in both lists of goods (despite minor differences in their wordings).

The contested scientific apparatus and instruments include, as a broader category, the opponent’s distillation apparatus for scientific purposes; diaphragms for scientific apparatus; satellites for scientific purposes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested photographic apparatus and instruments include, as a broader category, the opponent’s cameras [photography] and flashlights [photography]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cinematographic apparatus and instruments include, as a broader category, the opponent’s cinematographic cameras and apparatus for editing cinematographic film. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested measuring apparatus and instruments include, as a broader category, the opponent’s precision measuring apparatus; pressure measuring apparatus; jigs [measuring instruments]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested signalling apparatus and instruments include, as a broader category, the opponent’s signalling buoys; signalling whistles; signalling panels, luminous or mechanical. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested checking (supervision) apparatus and instruments include, as a broader category, the opponent’s speed checking apparatus for vehicles. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested teaching apparatus and instruments include, as a broader category, the opponent’s audiovisual teaching apparatus; resuscitation mannequins [teaching apparatus]. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested audio/visual and photographic devices overlap with the opponent’s computers, insofar as both categories of goods contain for instance tablet computers which feature audio-visual and photographic functionalities. The goods are identical.

The contested linear or interactive data carriers for audiovisual programs overlap with the opponent’s recording discs, inasmuch as these categories contain recording discs for audio-visual programs. The goods are identical.

As the contested videograms refer to physical objects containing audio-visual works, such as videotapes or DVDs, these goods overlap with the opponent’s compact discs, DVDs and other digital recording media. They are identical.

The contested videodiscs, interactive compact discs (cd-i's), video compact discs (VCD); digital, opto-digital tapes are included in the broader category of the opponent’s compact discs, DVDs and other digital recording media. Therefore, the goods are identical.

The contested CD-ROMs are synonymous to the opponent’s compact discs [read-only memory] and they are identical goods.

The contested exposed slide films are included in the broader category of the opponent’s films, exposed. They are identical.

The contested cinematographic films include, as a broader category the opponent’s cinematographic film, exposed. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested applications for tablets and smartphones are included in the broader category of the opponent’s computer software. The goods are identical.

Contested services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

In that regard, it has to be pointed out that the goods featured in the contested online retail services are defined as electronic, audiovisual, digital and multimedia goods. These broad and mutually overlapping categories contain some of the opponent’s goods in Class 9, for instance:

• the opponent’s electronic agendas are electronic and digital devices;

• the opponent’s audiovisual teaching apparatus not only are audiovisual devices, but also fall within the usual and natural meaning of electronic, digital, and possibly also multimedia equipment;

• the opponent’s digital photo frames are digital devices, which also belong in the broad categories of electronic and multimedia goods;

• the opponent’s portable media players can fall within all four of the categories concerned.

In view of the foregoing, the contested online retailing of electronic, audiovisual, digital and multimedia goods are similar to a low degree to some of the opponent’s goods in Class 9, as per examples indicated above.

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 relevant goods and services are directed at the public at large and at business customers with specific professional knowledge or expertise in the fields of, inter alia, science, engineering, education, photography, audio-visual entertainment, information and telecommunication technologies. It is considered that the relevant public’s level of attention at the moment of choosing the goods and services is, on the whole, average. Nevertheless, as some of the goods in Class 9 at issue can be inexpensive devices for mass consumption (for example basic data carriers) the habitual buying behaviour associated with those goods can result in a lower degree of attention. On the other hand, some of the goods in Class 9 are specialised, purchased rarely and imply a high sophistication on the part of the consumer (for instance equipment for scientific laboratories, and professional photographic/cinematographic apparatus). To that extent, the degree of the public’s attention may be enhanced.

3. The signs

GLOBO
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark is the word ‘GLOBO’. The contested sign is a composite sign comprising a stylised representation of the words ‘GLOBO’ and ‘GROUP’, depicted in blue. Although these elements are conjoined, they are graphically separated by the use of differing fonts and thickness of the graphemes – the ‘GLOBO’ sequence is emboldened, whilst the letters in the ‘GROUP’ sequence are reproduced in fine lines. In the middle section of the sign, the graphemes ‘OG’ are cropped as if by cut with an invisible diagonal stroke. The distinct typefaces render the element ‘GLOBO’ visually more outstanding than the rest of the sign.

The word ‘GLOBO’ present in both signs is meaningless and has an average degree of distinctiveness in the perception of a part of the relevant public. For another part of the public, it may bring to mind the concept of a ‘sphere’ or a ‘globe’ thus connoting to something ‘global’. Although the term is fanciful for the majority of the goods in Class 9 covered by both marks as it neither conveys a sufficiently direct message in relation to their objective characteristics, nor is it commonplace or laudatory, it may be seen as vaguely allusive for some other of the goods in Class 9 (for instance globes for teaching purposes, or those goods that can be expected to be distributed globally such as information technology and telecommunications equipment) and all of the contested services in Class 35 (because online retail services can have worldwide scope). For that part of the public, the distinctiveness of the term ‘GLOBO’ is somewhat weak.

In the contested sign, the English word ‘GROUP’ will be immediately discerned by the average consumer as it is clearly separated from the sign’s other element with the graphical means as described above. ‘GROUP’ is a commonly used term in business language to denote, inter alia, a form of business (e.g. an association of companies under a single ownership and control, consisting of a holding company, subsidiary companies, and sometimes associated companies). Despite the stylisation of that element in the sign, it lacks any distinguishing capacity in itself.

It follows that, despite the possibility that the distinctiveness of the term ‘GLOBO’ is somewhat weak in relation to some of the goods and services for a part of the public, the most distinctive component in the contested sign is the element ‘GLOBO’ for the entire relevant public.

Visually, the signs coincide in the element ‘GLOBO’ which, notwithstanding its stylisation in the contested sign, is present in both marks. Aside from the contested sign’s figurative elements as described above, there is a visual difference between the marks on account of the contested sign’s element ‘GROUP’ that has no counterpart in the earlier mark. However, since this element is devoid of any distinctive character, that difference only has a limited effect on the overall impression given by the contested sign.

Another important factor to consider is that the sole verbal element of the earlier mark, ‘GLOBO’, is fully included in the beginning of the contested sign in a relatively more eye-catching representation than the sign’s other element, ‘GROUP’. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the contested sign (the initial part featuring the shared component ‘GLOBO’, albeit in a slightly stylised representation) the one that first catches the attention of the reader.

Therefore, the signs are similar to a high degree visually for the part of the public which does not attribute any meaning to the word ‘GLOBO’. The same applies to the rest of the public in relation to some of the goods in Class 9 for which the element ‘GLOBO’ is fanciful. On the other hand, in the context of some other of the goods in Class 9 and all of the contested services in Class 35 (as indicated above) the common element, ‘GLOBO’, is vaguely allusive and to that extent the visual similarity between the signs is slightly below average.

Aurally, the pronunciations of the signs coincide in the two-syllable word ‛GLOBO’ that constitutes the earlier mark and is included in the beginning of the contested sign in which it is the most distinctive component. The pronunciation of the contested sign differs in the mono-syllable word ‘GROUP’ which lacks any distinctiveness in itself.

Therefore, the signs are similar to a high degree aurally for the part of the public which does not attribute any meaning to the word ‘GLOBO’. The same applies to the rest of the public in relation to some of the goods in Class 9 for which the element ‘GLOBO’ is fanciful. On the other hand, in the context of some other of the goods in Class 9 and all of the contested services in Class 35 (as indicated above) the element ‘GLOBO’ is vaguely allusive and to that extent the aural similarity between the signs is slightly below average.

Conceptually, for the part of the public to whom the shared element ‘GLOBO’ is neutral but the contested sign carries the concept of the non-distinctive element ‘GROUP’, the signs are not conceptually similar.

For the part of the public who perceives the element ‘GLOBO’ as vaguely allusive to the concept of a ‘sphere’, ‘globe’ or something ‘global’, the contested sign, taken as a whole, does not have a specific meaning which would amount to more than the sum of its parts; nevertheless, it is plausible that it will be perceived as a company name. The presence of the element ‘GLOBO’ in both signs results in a high degree of conceptual similarity in relation to some of the goods in Class 9 for which the element ‘GLOBO’ is fanciful. On the other hand, in the context of some other of the goods in Class 9 and all of the contested services in Class 35 (as indicated above) the distinctiveness of the common element, ‘GLOBO’, is somewhat weak and to that extent the conceptual similarity between the signs is slightly below average.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

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 as such has no meaning for any of the goods in question from the perspective of a part of the relevant public. Even where the public perceives the word ‘GLOBO’ as evoking some concept(s), for reasons explained in section c) of this decision the distinctiveness of the earlier mark must be seen as normal for those goods in Class 9 in relation to which the term is fanciful. However, with regard to the part of the goods for which the term ‘GLOBO’ may be vaguely allusive the distinctiveness of the earlier mark is slightly below average from the perspective of that part of the relevant public.

5. Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). This principle is crucial to the assessment of likelihood of confusion, in particular as, in the present case, the contested goods in Class 9 are identical to those of the earlier mark, the contested services in Class 35 are similar to a low degree to the opponent’s goods, and there is a strong similarity between the signs for a part of the relevant public.

The similarity between the signs results from the word ‘GLOBO’ which is the sole element of the earlier mark and is included in the beginning of the contested sign in a relatively more eye-catching manner than its second element, ‘GROUP’.

The distinctive character of the earlier mark is considered slightly below average for a part of the relevant public for some of the goods at issue, as the term ‘GLOBO’ may be seen as a vague reference to certain goods in Class 9. However, even where a trade mark has limited distinctive character, this does not automatically mean that there cannot be likelihood of confusion or of association with another trade mark if the elements that differentiate the two signs do not enable the public to distinguish between their respective commercial origins.

The main difference of the contested sign vis-à-vis the earlier mark lies in the word ‘GROUP’. Given the fact that such an element is incapable of functioning as a badge of trade origin in itself, the mere addition of the word ‘GROUP’ does not put sufficient distance between the signs that share the element ‘GLOBO’. Furthermore, there is a part of the relevant public who will not perceive the common term, ‘GLOBO’, as meaningful in relation to the goods and services in question, and for that part of the public the signs coincide in a perfectly distinctive component.

Admittedly, the contested sign features some figurative elements related to the graphical representation of the words. However, the stylisation is not of such a nature as to overshadow the words. On the contrary, it facilitates the immediate dissection of the contested sign into two words, ‘GLOBO’ and ‘GROUP’. The average consumer will not mentally register the minimal figurative elements as important components of the sign and will rather perceive them as mere carriers of the words.

In light of all the foregoing, it is considered that the English-speaking part of the public in the European Union, and especially those who will perceive the term ‘GLOBO’ as fanciful in relation to the goods and services at issue, may associate the commercial origins of the conflicting signs on the basis of that the elements which differentiate the contested sign from the earlier mark are confined to a non-distinctive component (insofar as the contested sign’s word ‘GROUP’ is concerned) and non-striking, minimal figurative elements.

In its observations, the applicant argues that the term ‘GLOBO’ is incapable in itself of constituting a likelihood of confusion. The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities. This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Although previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case. The previous case, namely decision of 05/08/2009, B 1 181 510, ‘GLOBOMEDIA’ (fig.) / ‘GLOBO TV SPORTS’ (fig.) referred to by the applicant is not relevant to the present proceedings where the element ‘GLOBO’ plays an independent role in both signs and is considered distinctive to an average degree at least for a part of the relevant public, whereas the additional component, ‘GROUP’, is incapable of differentiating the conflicting signs.

The applicant points out that there are several European Union trade marks that include the element ‘GLOBO’ for goods in Class 9. In support of its argument the applicant refers to six European Union trade mark registrations. The Opposition Division notes that the existence of several trade mark registrations is not per se particularly conclusive, as it does not necessarily reflect the situation in the market. In other words, on the basis of data concerning a register only, it cannot be assumed that all such trade marks have been effectively used. It follows that the evidence filed does not demonstrate that consumers have been exposed to widespread use of, and have become accustomed to, trade marks that include the element ‘GLOBO’. Under these circumstances, the applicant’s claim must be set aside.

In addition, the applicant argues that the opponent’s trade marks already coexist with the applicant’s European Union trade marks containing the element ‘GLOBO’ and refers to EUTMs No 721 738 REDE GLOBO (fig.), No 5 400 882 GLOBO TV SPORTS (fig.) and No 2 971 273 TV GLOBO INTERNACIONAL (fig.). The applicant also submits some evidence providing information on its activities in Brazil and in Europe.

According to case-law, the possibility cannot be entirely dismissed that, in certain cases, the coexistence of earlier marks on the market could reduce the likelihood of confusion which the Opposition Division and the Board of Appeal find exists as between two conflicting marks. However, that possibility can be taken into consideration only if, at the very least, during the proceedings before the EUIPO concerning relative grounds of refusal, the applicant for the European Union trade mark duly demonstrated that such coexistence was based upon the absence of any likelihood of confusion on the part of the relevant public between the earlier marks upon which it relies and the intervener’s earlier mark on which the opposition is based, and provided that the earlier marks concerned and the marks at issue are identical (11/05/2005, T‑31/03, Grupo Sada, EU:T:2005:169, § 86).

In this regard, it should be noted that formal coexistence on European Union registries of certain marks is not per se particularly relevant. It should also be proved that they coexist in the market, which could actually indicate that consumers are used to seeing the marks without confusing them. Last but not least, it is important to note that the Office shall in principle be restricted in its examination to the trade marks in conflict.

Only under special circumstances may the Opposition Division consider evidence of the coexistence of other marks in the market (and possibly in the registry) on a European Union level as an indication of ‘dilution’ of the distinctive character of the opponent’s mark which might be contrary to an assumption of likelihood of confusion.

This has to be assessed on a case-by-case basis and such an indicative value should be treated with caution as there may be different reasons as to why similar signs coexist (e.g. different legal or factual situations in the past, or prior rights agreements between the parties involved).

Therefore, in the absence of convincing arguments and evidence thereof, this argument of the applicant must be rejected as unfounded.

Taking into account all of the circumstances of the case and based on the interdependence principle, it is considered that the similarity between the signs resulting from the common term, ‘GLOBO’, will lead the public to believe that the identical goods or the remotely similar services offered under the contested sign have the same commercial origin, or that they originate from economically linked undertakings, as those bearing the earlier mark, even where the consumers’ degree of attention is enhanced.

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 826 641. It follows that the contested trade mark must be rejected for all the contested goods and services.

As earlier European Union trade mark registration No 11 826 641 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier right invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

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

According to Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, the costs to be paid to the opponent are the opposition fee and the costs of representation which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Carmen SANCHEZ PALOMARES

Solveiga BIEZA

Begoña URIARTE VALIENTE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) EUTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Annex I A(33) EUTMR) has been paid.