OPPOSITION No B 2 538 000

Skandinaviska Aluminium Profiler AB, Box 191, 574 01 Vetlanda, Sweden (opponent), represented by Zacco Patent- und Rechtsanwalts GmbH, Am Wall 187-189, 28195 Bremen, Germany (professional representative)

a g a i n s t

Schwarz Asia Pacific Sourcing Ltd., 33 Canton Road, 17/F 1-2A, Tower 5, Tsim Sha Tsui, Hong Kong City, Hong Kong Special Administrative Region of the People's Republic of China (applicant), represented by Harmsen Utescher, Neuer Wall 80, 20354 Hamburg, Germany (professional representative).

On 23/04/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 538 000 is upheld for all the contested goods, namely

Class 6: Small articles of metal hardware; wire rope; hooks [metal hardware]; parts of metal for hanging devices for signs, lighting apparatus, lighting fixtures or shelves; wall supports of metal for lighting fixtures, lighting apparatus, signs or shelves; supports of metal for attaching lighting fixtures, lighting apparatus, signs or shelves; metal clips for attaching lighting fixtures and lighting apparatus; screws of metal; grilles of metal; stepladders of metal; metal rails; bars of metal.

2. European Union trade mark application No 13 661 401 is rejected for all the contested goods. It may proceed for the remaining goods and services.

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

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 13 661 401 for the figurative mark , namely against all the goods in Class 6. The opposition is based on European Union trade mark registration No 463 364 for the word mark ‘SAPA’. The opponent invoked Article 8(1)(a) and (b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition, now Article 47(2) and (3) EUTMR), if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely the aforementioned European Union trade mark registration.

The request was submitted in due time and is admissible as the earlier trade mark was registered on 25/09/2002 i.e. more than five years prior to the relevant date mentioned above.

The contested application was published on 07/04/2015. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 07/04/2010 to 06/04/2015 inclusive.

Furthermore, the evidence must show use of the trade mark for the goods on which the opposition is based, namely the following:

Class 6: Metal building materials; pipes and tubes of metals; finished or semi-finished goods of common metal (not included in other classes); aluminium profiles, extruded products of metals such as brazed and bonded coils, strips and sheets, cladded and non-cladded; aluminium components for the engineering industry.

Class 19: Construction and building material and systems; pipes and tubes.

The Opposition Division notes that an interpretation of the wording of the list of goods is required to determine the scope of protection of these goods.

The term ‘such as’, used in the opponent’s list of goods, 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).

According to Rule 22(3) EUTMIR (in the version in force at the moment of filing the request for proof of use), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 22/02/2018, in accordance with Rule 22(2) EUTMIR (in the version in force at the moment of filing the request for proof of use), the Office gave the opponent until 22/04/2018 to submit evidence of use of the earlier trade mark. On 19/04/2018 and 20/04/2018, within the time limit, the opponent submitted evidence of use.

As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data.

The evidence to be taken into account is, in particular, the following:

 Affidavit signed by the Manager of CSR & Branding at the Sapa AS, a company which has the license to use the earlier mark at issue. He states i.a. that his company develops, produces and sells for example aluminium profiles as rods, bars and hexagonals, standard structural shapes, standard hollow shapes, seamless pipe and tube and custom shapes. Furthermore he claims that the core areas of business are Extrusion, Building Systems and Precision Tubing.

 Brochure in German with the title ‘Technische Informationen: Leistungsstärke im Überblick’ which includes contact details of, what seems to be, Sapa AS affiliate in Germany and refers to the goods made of aluminium. It furthermore includes photos and technical details of products made of aluminium such as profiles, bars as well as photos from the manufacturing process (Attachment 8).

 Invoices for advertisement of SAPA products in different countries as ‘SAPA pole products’ in the April 2015 issue of the UK magazine ‘Highways’; for advertisements in Slovakia, issued on 28/08/2012 to what seems to be an affiliate of Sapa AS in Slovakia; invoice for catalogue ‘Katalóg štandardných profilov’ in Slovakia (Attachments 11, 14 and 15), the latter issued on 28/09/2012.

 Excerpts from the catalogue ‘Katalóg štandardných profilov’ which is in Slovak, English and German and includes and contact details of, what seems to be, Sapa AS affiliate in Slovakia. It furthermore includes depiction and technical details of products made of aluminium such as profiles, bars, tubes (Attachment 15).

 A copy of a Spanish magazine ‘Ecoconstrucción’ from April 2012 which includes a reference to ‘Sapa profiles’ in the text and the following picture (Attachment 16).

 Excerpts from a Spanish magazine ‘Galicia Construccion’ from 25/05/2012 including the following advertisement (Attachment 20).

 A copy of the ‘issue 274’ of the UK magazine ‘Business and Industry today’ informing that Sapa has added its Design Manual in Apple’s app store as a new channel to reach customers in order to inform them i.a. about aluminium and aluminium profiles (Attachment 21).

 Brochures in German and English. The brochures include photos of some products, such as aluminium profiles. The German brochure is from January 2014. Both of them cover the same content and inform i.a. about the operations of the Sapa company such as profile extrusion, big press, anodizing, powder coating, fabrication and indicate countries where the respective operations are executed. Apart from Norway, all of the countries are EU members (Attachments 26 and 40)

 Sapa Newsletter from Mai 2011, in German. It includes references to aluminium products and for example to the SAPA presence on the exhibition in Hannover in 2011 while the following photo is shown (Attachment 26).

 Extract from the online Spanish magazine ‘Aluminio’, from 18/05/2012, where a reference to Sapa Profiles and their presence on the exhibition Veteco could be understood. The following pictures are also included there , . Both products clearly bear the trade mark ‘Sapa’. Extract from the Spanish online magazine ‘vidrioperfil.com’ including a reference and a photo of SAPA Profiles presence at the Veteco 2012 exhibition (Attachment 26).

 Brochures ‘Hydro and Sapa become Sapa. Sapa Precision Tubing’ in English and Portuguese, from August 2013, informing about the two companies joint ventures but also about their productions units (six of them within the EU) and their product ranges such as aluminium tubes, bars, precision shapes, cables and wires, forging material, fuel coolers, internal heat exchangers (Attachment 31).

 Printouts from the Sapa Group’s website - www.sapagroup.com, from the website www.sapabuildingsystem.com, both dated 29/11/2016 informing about different aluminium products and their application; brochures informing about different aluminium products applicable in different industries. All the brochures include the figurative mark ‘sapa:’ depicted in standard lowercase bold letters followed by a colon (Attachments 42 - 56).

 Annual report (Attachment 63). It informs i.a. that Sapa develops, manufactures, and markets value-added profiles, profile-based building systems, and tubing solutions for automotive and heating, ventilation, air conditioning & refrigeration application in lightweight aluminium. The report includes Sapa’s market shares and revenues in three fields (Extrusion, Building Systems, Precision Tubing) i.a. in Europe while the revenues for individual European countries (some of them i.a. also for Germany and Spain) are available too. The data included in the report refer to 2015 but also to 2014. Furthermore, concrete examples of application of Sapa products are included, e.g. glass doors and windows made by Sapa Building System used on the houseboat in Amsterdam. The report is signed by the state authorised Public Accountant of Norway.

 Copies of the Sapa Group’s magazine ‘Shape’ from 2010 until 2016 in several languages such as English, German, French, Spanish. According to the opponent this magazine is handed out in printed version to clients (Attachments 65 - 74). For example the issue 1/2010 includes an article about the co-operation between Sapa and Jaguar while i.a. the following information could be found there ‘…and while this alloy has been used for structural applications in the past, it is the first time it has been used with hydro-forming’ and an article about use on a building in Italy, honoured with a Spezial Prize at the 2008 Real Estate Awards in Italy, which glass façade is supported by Sapa aluminium structure. The issue 2/2010 informs about a big investment by Sapa used on updating its plant in Italy, which produces hard alloy custom semi-finished and finished products. It also informs about the use of Sapa aluminium products as support for the new glazing units when renovating Slovak University of Technology in Bratislava and about the use of Sapa RC Profiles on the new façade of the Aviva Stadium in Dublin, Ireland, which afterwards won the Best Project and innovation Award in 2010 European Polycarbonate Sheet Extruders ward competition. The issue 1/2011 informs about use of the aluminium panels and steerable sections, manufactured by Sapa when building a temporary roadway for the Pope in September 2010 in London. The issue 2/2012 includes an article about the co-operation between British Waterways and Sapa Profiles UK, it states i.a. the following: ‘British Waterways called upon Sapa to design and manufacture a fully-fabricated, extending aluminium stop plank assembly in spring 2011 and trials in London and Derbyshire have now begun.’

On 23/11/2018, after expiry of the time limit, the opponent filed a further affidavit. However, it is just a slightly amended version of the affidavit which was submitted within the time limit, the only difference being one sentence, which does not introduce any new facts.

In any case, the issue of whether or not in the present proceedings the Office may exercise the discretion conferred on it by Article 95(2) EUTMR to take into account the abovementioned affidavit (submitted on 23/11/2018), can remain open, as the evidence submitted within the time limit is sufficient to prove the required genuine use of the earlier trade mark.

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The applicant argues that the evidence does not comply with Article 55 EUTMDR (referring to structured submission of the evidence) and therefore shall not be taken into account. Although, the evidence submitted could have been indexed in more reader friendly way, the fact remains that the opponent provided description of the attachments submitted even if scarce and the attachments were numbered, which allowed the Opposition Division to identify the evidence as well as to establish to which ground or argument the respective evidence refers. Therefore, the applicant’s argument in relation to the lack of structure and indexing of the evidence submitted must be set aside.

The applicant furthermore argues that not all the items of evidence indicate genuine use in terms of time, place, extent, nature and use of the goods for which the earlier mark is registered.

The applicant’s argument is based on an individual assessment of each item of evidence regarding all the relevant factors. However, when assessing genuine use, the Opposition Division must consider the evidence in its entirety. Even if some relevant factors are lacking in some items of evidence, the combination of all the relevant factors in all the items of evidence may still indicate genuine use.

A part of the evidence submitted is not translated. However, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR, former Rule 22(6) EUTMIR in force before 01/10/2017). The self-explanatory character of the documents that have not been translated and are considered relevant for the present proceedings, such as some brochures and excerpts from the magazines (e.g. Attachments 8, 16, 20, 26), is sufficient to take them into consideration in the present assessment.

Although some of the documents show use of the mark outside the relevant territory, the above listed evidence show that the mark has been used, for example, in the UK, Germany, Spain and Slovakia. Therefore, a significant part of the evidence relates to the relevant territory.

A substantial part of the evidence is dated within the relevant period. Some of the documents refer to the time subsequent to the relevant time period (e.g. Attachments 42 - 56) or are undated (e.g. Attachments 15, 40). Although these documents originate from outside the relevant period, respectively are undated, they cannot be dismissed as irrelevant, as they further corroborate the use of the sign and attest its long-standing presence on the market in the relevant territory. Besides, for example, even if the catalogue submitted as a part of the Attachment 15 does not bear any date, the invoice for the catalogue with the same title (submitted in the same set of evidence) is from 2012. Consequently, the evidence submitted suffices to establish that the sign was present in the market in the relevant time.

The applicant argues that the term ‘SAPA’ is not used as a trade mark but as a company name.

However, it is noted that the use of a sign as a business, company or trade name can be regarded as trade mark use provided that the relevant goods or services themselves are identified and offered on the market under this sign (13/04/2011, T-209/09, Alder Capital, EU:T:2011:169, § 55-56), that is when a party affixes the sign constituting its company name to the goods or, even though the sign is not affixed, that party uses that sign in such a way that a link is established between the company name and the goods (11/09/2007, C-17/06, Céline, EU:C:2007:497, § 21-23).

The term ‘SAPA’ appears for example at the top of most pages of the opponent’s brochures, catalogues and clearly in relation to samples of goods. Furthermore, the opponent has submitted some extracts from the magazines, on which the trade mark ‘SAPA’ is depicted on some goods (Attachments 16, 20, 26).

Therefore, the applicant’s argument is unfounded. The evidence shows use as trade mark.

For the sake of completeness, the Opposition Division notes that the use of the figurative mark constitutes valid evidence in relation to the registered word marks given that differing elements do not alter the distinctive character of the mark in the form in which it was registered (Article 18(1), second subparagraph, point (a), EUTMR).

In the present case, the earlier mark is registered as a word mark ‘SAPA’ and the majority of the evidence submitted show mostly the following sign .

This use does not alter the distinctive character of the mark in the form in which it was registered because the stylisation of the mark as well as the additional colon are of merely decorative nature. Therefore, the Opposition Division considers that the evidence does show use of the sign as registered within the meaning of the aforementioned Article 18(1), second subparagraph, point (a), EUTMR.

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods or services and the characteristics of the market concerned, the territorial extent of use, and its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The evidence filed, especially the above listed documents, which includes brochures, annual report, advertisements, catalogues, evidence about presence at the exhibitions, provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

Some of the materials originate from the opponent (e.g. the affidavit, the screenshots from the opponent’s websites, some of the brochures, the extracts from the (opponent’s) magazine ‘Shape’), however, their findings are supported by the rest of the evidence, such as the articles and publications from independent sources, as well as the data included in the annual report. Besides, even if the ‘Shape’ magazine is not widely distributed, the articles published in its various issues refer to concrete projects on a rather bigger scale.

Although no invoices for the products themselves have been provided, it can be inferred from the above listed evidences that some sales and promotional activity has taken place in the relevant period and territory. Therefore, even in the face of a complete absence of invoices (for the sale of the products), it would be unrealistic to hold that the mark has not been used on the market during the relevant time period at least in the UK, Slovakia, Germany and Spain.

Under certain circumstances, even circumstantial evidence such as catalogues featuring the trade mark, despite not providing direct information on the quantity of goods actually sold, can be sufficient by themselves to prove the extent of use in an overall assessment (judgments of 15/07/2015, T-398/13 TVR ITALIA (fig.) / TVR et al., EU:T:2015:503, § 57-58; 08/07/2010, T-30/09, Peerstorm, EU:T:2010:298, § 42 et seq.).

In any case, the revenue figures published in the annual report in combination with the brochures including information as regards various types of aluminium products and including information about their production in several countries within EU, the advertisements in different magazines, the reference to several projects on a rather bigger scale where the opponent’s products has been used (Attachments 65 - 74) provide the Opposition Division sufficient information regarding the commercial activities of the opponent throughout the relevant period and proves that use of the mark has been more than mere token use.

Therefore, the Opposition Division considers that the opponent has provided sufficient indications concerning the extent of the use of the earlier mark.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory.

However, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

In the present case, the evidence shows genuine use of the trade mark only for the goods of Class 6. The evidence submitted shows and refers to various building materials, pipes, tubes, bars, profiles, components for the engineering industry yet all of them only from aluminum. Also the above listed annual report describes the opponent’s activities as follows: ‘Sapa develops, manufactures, and markets value-added profiles, profile-based building systems, and tubing solutions for automotive and heating, ventilation, air conditioning & refrigeration application in lightweight aluminium’.

As far as the remaining opponent’s goods in the registration are concerned, namely the goods in Class 19, which includes building and constructions goods and materials not of metal, the opponent did not submit any evidence in regard to the use of the mark for those goods.

Therefore, the Opposition Division will only consider the opponent’s goods in Class 6 in its further examination of the opposition.

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

Preliminary remark

An opposition has to be expressed in writing and must specify, in order to be admissible, the indications and elements laid down in Article 2(2)(a)-(i) EUTMDR (former Rules 15 EUTMIR in force before 01/10/2017), inter alia, an indication of the goods or services against which the opposition is filed. Furthermore, the opponent can only complete or extend the notice of opposition on its own initiative during the three-month opposition period following the publication of the European Union trade mark application concerned (07/04/2015 in the case at hand).

In the notice of opposition, filed on 23/06/2015, the opponent indicated as the extent of the opposition only (all) the goods in Class 6. However, in its observations dated 16/11/2017, the opponent included in the comparison all the goods and services of the contested mark and elaborated arguments in favour of identity and/or similarity between the earlier goods and the contested goods in Classes 6 and 17. Bearing in mind the above, the opponent cannot amplify the extent of the opposition once the opposition period has expired and, therefore, the opposition is admissible only in relation to the goods in Class 6 as indicated in the opposition notice. Consequently, only those goods will be taken into account for the purpose of the examination in the present case.

The goods on which the opposition is based (and for which use has been proven) are the following:

Class 6: Metal building materials; pipes and tubes of metals; finished or semi-finished goods of common metal (not included in other classes); aluminium profiles, extruded products of metals such as brazed and bonded coils, strips and sheets, cladded and non-cladded; aluminium components for the engineering industry.

The contested goods are the following:

Class 6: Small articles of metal hardware; wire rope; hooks [metal hardware]; parts of metal for hanging devices for signs, lighting apparatus, lighting fixtures or shelves; wall supports of metal for lighting fixtures, lighting apparatus, signs or shelves; supports of metal for attaching lighting fixtures, lighting apparatus, signs or shelves; metal clips for attaching lighting fixtures and lighting apparatus; screws of metal; grilles of metal; stepladders of metal; metal rails; bars of metal.

Regarding the scope of protection of these goods, as already mentioned above, the term ‘such as’, used in the opponent’s list of goods, 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).

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.

The opponent’s metal building materials are used in construction to create buildings and structures. The contested grilles of metal; metal rails; bars of metal may be used as metal building materials and are, therefore, included in metal building materials protected by the earlier mark. Consequently, these goods are identical.

The contested small articles of metal hardware include, as a broader category, the opponent’s pipes and tubes of metals as the latter may well come also in small(er) sizes. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contrary to the applicant’s view, the Opposition Division finds the contested wire rope; hooks [metal hardware]; parts of metal for hanging devices for signs, lighting apparatus, lighting fixtures or shelves; wall supports of metal for lighting fixtures, lighting apparatus, signs or shelves; supports of metal for attaching lighting fixtures, lighting apparatus, signs or shelves; metal clips for attaching lighting fixtures and lighting apparatus; screws of metal similar to the opponent’s metal building materials, which cover all metal products potentially used for building, including small finished goods ready for use in the construction sector. These goods all have the same nature (metal hardware) and purpose (to hold objects or parts together, to fix them and/or to position objects). They can have the same distribution channels and points of sale, are sometimes used in a complementary way, and they are likely to be manufactured by the same undertakings.

As regards the contested stepladders of metal these are considered similar to the opponent’s metal building materials since they are generally made of the same materials and constituent elements, have the same nature (being building construction goods) and purpose. Furthermore, they are likely to be produced by the same type of undertakings and could be aimed at the same relevant public in the building construction area.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

c) The signs

SAPA
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.

Neither the earlier trade mark nor the verbal element ‘SAPS’ of the contested mark are meaningful in, for example, the German, Slovak and Spanish-speaking parts of the relevant territory. They are also both inherently distinctive. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-, Slovak- and Spanish-speaking part of the public such as Germany, Slovakia and Spain.

According to the applicant the relevant public will perceive the earlier mark as the abbreviation for ‘Skandinaviska Aluminium Profiler AB’, the name of the opponent, and the contested sign as the abbreviation for ‘Schwarz Asia-Pacific Sourcing’, the name of the applicant. However, the Opposition Division points out that when assessing identity or similarity, the signs have to be compared as they were registered or as they appear in the trade mark application. Moreover, the applicant did not provide any evidence in support of its claim and in the Opposition Division’s view such perception would require too many mental steps. Therefore, in the absence of convincing arguments and evidence thereof, the above argument of the opponent must be rejected as unfounded and set aside.

The figurative element of the contested sign is rather of a decorative nature, resembling a leaf-like shape, which is framing the verbal element and therefore is of a limited distinctive character.

In any case, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Furthermore, the contested sign has no element that could be considered clearly more dominant than other elements. Due to its size, colour and position the verbal element is equally eye catching as the figurative element of the contested sign and this despite the shape and size of the latter.

Visually, the signs coincide in their first three letters ‘SAP’ and differ in their respective fourth letter ‘A’/’S’ and the figurative elements of the contested sign.

Therefore, the signs are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the earlier mark will be pronounced in two syllables while the contested sign in one. Nevertheless, the fact remains that the pronunciation of the signs coincides in the sound of the first three letters ‛SAP’, present identically in both signs and differ in their respective last letters. The figurative elements are not subject to a phonetic assessment.

Therefore, the signs are similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) Distinctiveness of the earlier mark

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

Neither in the opposition notice nor in the arguments or evidence submitted in order to substantiate the earlier mark, respectively in order to support the opposition, did the opponent claim that its mark is particularly distinctive by virtue of intensive use or reputation. In the submission dated 17/04/2018, the opponent mentioned for the first time that the earlier trade mark is highly distinctive and refers to the evidence submitted. However, the Opposition Division points out that the degree of enhanced distinctiveness acquired through use of the earlier sign is a matter of law and fact, which the Office cannot examine unless the opponent claims and substantiates it in due time, i.e. within the substantiation period. Therefore, neither the opponent’s claim nor the evidence submitted in response to the applicant’s proof of use request can be taken into account in the present proceedings as it was filed after the substantiation time limit (which in the case at hand expired on 18/11/2017).

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 a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

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 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).

In the present case, the goods in question were found to be identical and similar and are aimed at the public at large and professional public whose level of attention is deemed average to high. The inherent distinctive character of the earlier mark is normal.

The similarities between the signs result from the coincidence in the three letters ‘SAP’, placed at the beginnings of both signs, which makes them visually and aurally similar to an average degree. Contrary to the applicant’s claims, the Opposition Division does not find that the figurative element of the contested sign is dominant or that it contributes significantly to the different overall perception of the two signs. Albeit not of a purely decorative nature, the figurative element is rather a simple combination of two waved lines, which are framing the verbal element of the contested sign. In fact, due to this element the relevant public may perceive the contested mark as a label-like sign. Furthermore, none of the signs at issue has a meaning that could help to differentiate them.

Hence, the differences between the two marks do not contribute sufficiently to their different overall impression in order to allow the consumers to distinguish between them. Therefore, even the consumers with higher degree of attention will likely to assume that the relevant goods bearing either one or another sign come from the same undertaking or from economically-linked undertakings

It is pointed out that, although it is true, as the applicant submits, that the length of the signs may influence the effect of the differences between them (the shorter a sign, the more easily the public is able to perceive all of its single elements), however the Court has also held that there is a high degree of similarity between two signs which consist of four letters, three of which were identical and in the same order, and the signs differed only in their first letters example judgments of 15 July 2011, ERGO T-220/09, EU:T:2011:392, § 30 and of 7 November 2013, Three- N-Products v OHIM — Munindra (AYUR), T-63/13, EU:T:2013:583, § 45 and the case-law cited).

The applicant furthermore 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).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, there is a likelihood of confusion on the part of the German-, Slovak- and Spanish-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 aforementioned European Union trade mark. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

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 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 Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Claudia MARTINI

Renata COTTRELL

Tu Nhi VAN

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.