OPPOSITION No B 2 899 501

BAE Systems plc, 6 Carlton Gardens, London SW1Y 5AD, United Kingdom (opponent), represented by CMS Cameron Mckenna Nabarro Olswang LLP, Cannon Place, 78 Cannon St., London EC4N 6AF, United Kingdom (professional representative)

a g a i n s t

Shenzhen Outu Intelligent Technology Co. Ltd., 8/F,6A,Taihua Wutong Industrial Garden, Gushu Development Zone, Xixiang St., Baoan, Shenzhen, People´s Republic of China (applicant), represented by Al & Partners S.R.L., Via C. Colombo ang. Via Appiani (Corte del Cotone), 20831 Seregno (MB), Italy (professional representative).

On 16/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 899 501 is partially upheld, namely for the following contested and services:

Class 12: Bicycles; electric vehicles; trolleys; mopeds; dining cars [carriages]; bicycle wheels; bicycle frames; bicycle pedals; bicycle saddles; vehicles for locomotion by land, air, water or rail; motorcycles; tramcars; cable cars; remote control vehicles, other than toys; sports cars; electric bicycles; mopeds; tricycles; launches; baskets adapted for bicycles.

Class 25: Clothing; cyclists' clothing; shoes; boots; outerclothing; headgear for wear; gloves [clothing]; overcoats; childrens' clothing.

Class 36: Insurance brokerage; insurance consultancy; instalment loans; credit bureau services; banking; mutual funds; capital investment; exchanging money; loans [financing]; fiscal valuation; financial evaluation [insurance, banking, real estate]; lease-purchase financing; financial analysis; electronic funds transfer; antique appraisal; art appraisal; jewelry appraisal; tax services [not accounting].

2. European Union trade mark application No 16 362 601 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 362 601 for the figurative mark . The opposition is based on European Union trade mark registrations No 12 340 121 and No 11 400 702, both for the figurative mark , European Union trade mark registration No 12 452 331 for the figurative mark , the United Kingdom well-known word marks ‘BAE’ and ‘BAE SYSTEMS’, and the United Kingdom non-registered trade marks, trade names and company names ‘BAE’ and ‘BAE SYSTEMS’. The opponent invoked Article 8(1)(b) and 8(5) EUTMR in relation to the European Union trade mark registrations, Article 8(1)(b) in conjunction with Article 8(2)(c) EUTMR in relation to United Kingdom well-known word marks, and Article 8(4) EUTMR in relation to the United Kingdom non-registered trade marks, trade names and company names.

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 registrations No 12 340 121 and No 11 400 702, both for the figurative mark , since between them they cover the broadest scope of goods and services.

a) The goods and services

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

European Union trade mark registration No 12 340 121

Class 6: Armour (of metal) for land and water vehicles; armour (of metal) for aircraft; landing docks (of metal) for helicopters.

Class 7: Generators of electricity; electrical power generators; electrical power generators for use in aircraft; electrical power generators for use in avionics; electric propulsion systems for use in power generators; controls for use in power generators; electrical power systems, namely, networks of components which generate, supply, transmit, distribute and use electrical power; electrical propulsion systems and electric motors for ships and boats; engines other than for land vehicles; alternators; load carrying (lifting) machines; load carrying [lifting] mechanisms for vehicles; hybrid propulsion systems which combine conventional fuel with electricity for use in ships and boats; machines for use in assembly; 3D printers [machines]; submarine propulsion systems; robots; electronic chaff dispensers; laser cutting and drilling equipment; electrical and electronic apparatus, instruments and systems for generating artificial fog or smoke, including smoke screens; vehicle parts and fittings for obstacle and mine clearance, earth moving, excavation, digging, dozing, loading, gripping, winching and route-marking; parts and fittings for all of the aforesaid goods included in this class.

Class 9: Computer hardware, computer firmware, computer software and computer programs; computer hardware, computer firmware, computer software and computer programs for military, defence, aerospace, aviation, engineering, transport, security, national security, cyber security and law enforcement purposes; computer hardware, computer firmware, computer software and computer programs for aircraft, aerial vehicles, land vehicles, amphibious vehicles, marine vehicles, ships, boats and submarines; computer hardware, computer firmware and computer software for analysing, processing, storing, and modelling data; apparatus for the recording, storing, transmission, displaying, processing and/or reproduction of data, sounds and/or images; magnetic data carriers and recording disks; electrical, electronic and optronic apparatus, instruments, systems, equipment, components, controls and displays for security purposes; electrical, electronic and optronic components, controls and displays for military, defence, aerospace, aviation, engineering and transport purposes; electrical, electronic and optronic components, controls and displays for aircraft, aerial vehicles, land vehicles, amphibious vehicles, marine vehicles, ships, boats and submarines; interface apparatus and cards; computers; data processors; parallel processors; signal processors; data recording apparatus; printed circuit boards; thick and thin film and hybrid circuits and display devices; data display systems and apparatus; transponders; computer based learning systems; computer programs; electronic and optical data storage and retrieval devices; timer devices and circuitry; image processing apparatus; calibration apparatus; apparatus for testing electrical or electronic equipment; acoustic processing apparatus; noise and vibration control systems; echo sounding apparatus; high frequency sonar arrays; acoustic countermeasure devices; voice systems, namely, computer software and hardware for identifying, receiving, recording, storing and transmitting voice sounds; sonar systems; anti-submarine acoustic processing systems; speech intelligibility systems; active noise reduction systems; adaptive noise cancellation systems; sonar detectors; electronic equipment and systems for interfacing weapons to on-board control systems of air, land and marine vehicles; control systems; apparatus for guidance, control, testing and operation of civil and military aircraft; operational analysis systems; apparatus for the guidance, control, testing and operation of weapons and weapon systems; computer software for use in the guidance, control, testing and operation of weapons and weapon systems: airborne, marine and land electronic warfare systems and electronic countermeasure systems; weapons systems, namely computer software and hardware for launching, controlling, guiding and detonating weapons; missile guidance systems; anti-aircraft systems, namely computer software and hardware for identifying, tracking and targeting enemy aircraft; command and control systems for battlefield force control; combat management systems, namely computer software and hardware for use in warfare for weapon control, troop command, planning, tactics and decision making purposes; artillery fire and control systems, namely computer software and hardware for firing, controlling, monitoring, managing and guiding weapons and projectiles; air defence systems, namely computer software and hardware for identifying, tracking and targeting hostile aircraft or air attacks and for reducing and nullifying hostile air threats; strategic command, control, communications and intelligence systems for land, sea, air and joint operation centres; naval command and control systems; stand-alone command tactical data systems; command support systems, namely computer software and hardware to enable personnel in charge of a military or emergency situation to communicate, improve situational awareness, and collaborate with other personnel in response to an incident; weapon systems databus; local area networks for submarines; weapon system operator training equipment including image projection equipment; equipment usage training devices; electronic apparatus for identifying aircraft, ships or targets; airborne early warning systems; surveillance systems and equipment; target detection, identification and/or target tracking systems; missile trackers; display apparatus; target location apparatus; target seekers; homing heads; homing head control circuits; monitoring systems; target surveillance apparatus; direction finding apparatus; missile detectors; air data systems, namely computer software and hardware for capturing, storing, managing and transmitting data, for use with fixed wing aircraft (aeroplanes) and rotary wing aircraft (helicopters); avionics systems; module avionics systems; autostabilisers, namely computer software, hardware and sensors to correct the movement of an aircraft or marine vessel to enable it to remain level; autopilots; "fly-by-wire" active controls for combat and commercial aircraft, remote piloted vehicles or unmanned air vehicles; avionics systems for remote piloted vehicles or unmanned air vehicles; accelerometers; control surface actuators; electrohydraulic actuator control systems; electro-mechanical servo actuators; multiplex equipment; control consoles; flight recorders; flight control apparatus; electronic throttle boxes; precision digital stabilisation and pointing sensors; electro-optical sensor systems; sensors; seeker stabilisation rate sensors; head up display apparatus; integrated helmets; night vision goggles; helmet mounted display apparatus; digital terrain systems including solid state map databases and displays; guidance and navigation aids; doppler navigation systems; integrated doppler/GPS navigation systems and velocity sensors for air vehicles, missiles and weapons pods; tactical mid-course guidance components and systems, namely electrical components, computer software and computer hardware which enable the course and flight of a weapon or projectile to be adjusted; inertial navigation apparatus; gyro sensors; submarine navigation apparatus; under-ice navigation apparatus; gyroscopes; altimeters; terrain navigation and avoidance systems; global positioning by satellite systems; collision warning systems; altitude loss warning systems; wind shear warning systems; radar apparatus; radar systems; radomes; air surveillance radar apparatus for air traffic control; air surveillance apparatus for long rand air defence; multi-function naval and land radar apparatus for surveillance and/or fire control; fixed radar apparatus; transportable radar apparatus; two-dimensional air surveillance radar apparatus; three-dimensional air surveillance radar apparatus; monopulse surveillance radar apparatus; control radar apparatus for land and naval weapon systems; long range high frequency radar apparatus for air and surface surveillance; active array radar apparatus; battlefield surveillance radar apparatus; radar altimeters; muzzle velocity radar apparatus; millimetre wave systems; compact laser radar apparatus; airborne radar fire control apparatus for military air vehicles; surveillance radar apparatus for air vehicles; signal processors for radar apparatus; radar warning equipment; weather radar systems; communications systems; intercommunications apparatus; ultra high frequency satellite communications apparatus; antennae; intelligent antennae systems for cellular communication systems; antenna array systems; planar array for radio; active array modules; tactical communications apparatus; in-flight telephone systems; telecommunications apparatus; programmable digital radio and/or satellite communications apparatus; network command and control systems management apparatus; adaptive wireless network systems; airborne receivers; software programmable radios; remote monitoring apparatus; anti-submarine receivers; communications link apparatus; radio data link apparatus; airborne computers, central or distributed systems; landing systems apparatus, namely radar sensors, computer software and computer hardware to enable aircraft of all types to land safely in all types of environment; ku-band transmitters; radio transmitters and receivers; electronic and optical intercommunications apparatus; secure communications systems; encoders; decoders; fibre-optic data communications apparatus; thermal imaging apparatus; forward looking infrared systems; directed infrared countermeasure apparatus; infrared detectors; intruder detection apparatus; thermal imaging cameras and surveillance equipment; night-sights; bomb-sights; gun-sights; periscopes; signal processors; anechoic chambers; laser warning receivers; laser designator pods; rotary mirror scanners; optical systems; optical apparatus and instruments including lenses, mirrors, windows, and radiation detectors for use in the visible or infrared wavelength ranges; optical imaging apparatus; optical filters; holograms; cameras; mine disposal apparatus, namely sensors, computer software and computer hardware for use in the disposal of mines (explosives); mine-sweeping systems, namely sensors, computer software and computer hardware for use in the detection and removal of mines (explosives); mine avoidance systems; mine simulators; weapon motion simulators; flight simulation apparatus; ship motion simulators; flight training simulators; virtual reality equipment; aerial combat training systems; tank turret management systems equipment, namely computer software and hardware for operating, controlling and managing turrets on tanks (armoured vehicles); infrared missile decoy apparatus, namely computer software and hardware for the launch of flares by an aircraft or helicopter to act as a decoy to counter an incoming missile; data encryption apparatus; flight termination receiver for space launch vehicles; motor ignition delay units; blast suppression materials and containers, namely containers (safety equipment) for storage purposes which protect the contents from damage by explosions; software, hardware, communications systems, apparatus, components, instruments and equipment for the firing or launching of decoy targets to lure underwater guided missiles, torpedoes and depth charges lifejackets, flotation vests and flotation collars; electronic sensors and electronic monitoring apparatus and instruments to record and monitor acceleration and pressure in individuals in support of the diagnosis and treatment of traumatic brain injury CD-ROM and web-based interactive multimedia training systems, including software and table-top training systems for land and armaments systems, including for vehicles, armoured vehicles, combat vehicles, weapons systems, artillery systems, intelligent munitions, firearms, explosives, computer software, computer hardware, sensors, electronics, communications equipment, navigations systems, radar systems, information systems and electrical power systems; CD-ROM and web-based interactive multimedia training systems for naval ship operation and combat, including pc based software incorporating scenario generation and animation; diagnostics systems for vehicles; fire extinguishing and detection systems and apparatus for vehicles; fire hoses; water cannons; temperature control apparatus for use in vehicles; electronic camouflage systems for vehicles, including panels of pixels which are individually heated and cooled to match surroundings; electric and electronic systems associated with the arm, deploy, operation, guidance and control of rockets, missiles, projectiles and torpedoes; nuclear, biological and chemical filtration systems (safety equipment) for vehicles, namely filters for removing nuclear, biological and chemical threats from the air in order to protect the driver and crew inside the vehicle; electro-optical gun sights; video trackers and target detection systems; tilt sensors for vehicles; GPS receiving, guidance and navigation systems for vehicles and weapons; anti-jamming technologies for GPS systems, namely computer hardware and software to prevent global positioning systems (GPS) from being jammed (prevented from operating) by enemy forces; computer hardware and software used in military operations for tactical planning, command, control, communications, intelligence, decision making, navigation, and diagnostics; non-line-of-sight voice, video and data communications software, hardware, apparatus and instruments; fire control systems for weapons; vehicle-mounted electronic devices which project the magnetic signature ahead of the host vehicle for detonating explosive devices with a magnetic influence fuse; stealth technology systems comprised of computer hardware, software, electrical and/or electronic apparatus for ships, submarines, aircraft, helicopters, amphibious vehicles and land vehicles; electrical and electronic apparatus and instruments for monitoring, collection and compilation of environmental information and data, including underwater conditions, weather, and population and distribution of marine animals; software tools for monitoring and predicting environmental impact; satellite reception apparatus; hardware and software providing meteorological and oceanographic data; navigation systems, sonar systems, battery systems and acoustic homing systems for torpedoes, underwater missiles and depth charges; underwater acoustic transducers; circuit boards; hardware, software electrical and electronic components for 3D printers; software, hardware, communications systems, apparatus, components, instruments and equipment used in connection with geographic information systems and remote sensing technology; equipment for open architecture avionics test systems; applications to support software generation for customised military and naval mission controls; clothing and equipment for aircraft pilot protection, safety and control, including helmet, visor and suit with position monitoring and data display capabilities, oxygen mask, microphone, radio, arm restraints, and pressure capabilities; aircraft, land vehicle and marine vehicle simulators; head-up displays; electronic helmet-mounted displays for use by pilots, drivers and crew of aircraft, land vehicles and marine vehicles; protective clothing, body armour, armoured and bullet-proof vests, protective headgear, protective helmets, protective footwear, protective eyewear, protective masks and respiratory masks (not for medical use); parts and fittings for all of the aforesaid goods; publications, newsletters, magazines, brochures, reports, certificates, user manuals, user guides, technical manuals, technical datasheets, and educational, training and instructional manuals, all in electronic and/or downloadable form; power management systems, namely, networks of components which monitor and regulate the generation, supply, transmission, distribution and use of power; power management systems for land vehicles, trucks, buses, trains, light rail transit, ships and boats, namely, networks of components which monitor and regulate the generation, supply, transmission, distribution and use of power and fuel; satellites; ground erosion preventative apparatus for very short take off and landing aircraft, namely, computer software and hardware for very short take off and landing aircraft to protect the aircraft's exterior from erosion caused by contact with the ground; weapons and firearms simulators for training purposes; combat vehicle, amphibious vehicle and tank (weapons) simulators for military training purposes; computer software for interpreting fingerprints or palm prints.

Class 12: Aircraft; fixed wing aircraft; rotary wing aircraft; prototype aircraft; military aircraft; combat aircraft; training aircraft; fast jet training aircraft; aircraft for aerial and acrobatic display purposes; unmanned air vehicles; autonomous air vehicles; remotely piloted air vehicles; drones; unmanned air vehicles for the transport and release of guided weapons; land vehicles; armoured land vehicles; military land vehicles; tracked land vehicles; land vehicles for combat purposes; land vehicles for command and control purposes; land vehicles for the transport of military personal and equipment; land vehicles for emergency, search and rescue purposes; land vehicles for mine clearance purposes; land vehicles for site clearance purposes; autonomous land vehicles; tanks; motorised and non-motorised land vehicles equipped for the transport, launch and operation of weapons and/or equipped with apparatus for control and guidance of weapons; amphibious vehicles; autonomous amphibious vehicles; marine and submersible vehicles; ships; patrol ships; boats; rigid inflatable boats (RIBs); aircraft carriers; frigates; destroyers; corvettes; submarines; nuclear submarines; autonomous underwater vehicles; weapon carriage and release equipment for installation in or on military aircraft, land vehicles or marine vehicles; parts and fittings for all of the aforesaid goods; aircraft; helicopters; aerial vehicles; air cushion borne vehicles; pilotless aircraft; unmanned air vehicles; remotely piloted vehicles; drones; pilotless aircraft for the transport and release of guided weapons (missile buses); stand-off weapon carriers; land vehicles; tanks; motorised and non-motorised land vehicles equipped for the transport, launch and operation of weapons and/or equipped with apparatus for control and guidance of weapons, including radar apparatus, target surveillance apparatus, target recognition apparatus, target tracking apparatus and military communications apparatus; weapon carriage and release equipment for installation in or on military aircraft, land or marine vehicles; spacecraft; marine and submersible vehicles; ships; patrol ships; frigates; tanker ships; merchant ships; destroyers; corvettes; submarines; nuclear submarines; conventional submarines; amphibious vehicles; autonomous underwater vehicles; propellers for air vehicles, air cushion vehicles, or sea vehicles; wing-in-ground effect vehicles; load carrying (lifting) attachments for vehicles; load carrying vehicles; parachutes, vacuum sealed parachutes, and parachute packs; shock absorbers for vehicles and vehicle parts; energy-absorbing and shock-absorbing seats for use in vehicles; blast-absorbing seats for use in vehicles; safety restraints and harnesses for use in vehicles; armoured bodies for land and water vehicles; armoured bodies for aircraft; mine protected vehicles; armoured military vehicles; armoured commercial vehicles; armoured and mine protected utility vehicles; land vehicles for transporting military cargo personnel, and hazardous and non-hazardous materials and waste; strengthened chassis for use in armoured vehicles; strengthened and armoured parts for vehicles, including fuel tanks, floors, tires, batteries, seats, benches, and ballistic resistant windscreens and windows; ram bumpers for vehicles; vehicles implementing hybrid drive technology which combines conventional fuel with electricity; vehicles and armoured vehicles used for medical treatment and evacuation; vehicles and vehicle parts and fittings operated by remote control; removable modular arm systems for vehicles; aircraft carriers; electrical propulsion systems and electric motors for land vehicles, trucks, buses, trains, light rail transit; hybrid propulsion systems which combine conventional fuel with electricity for use in land vehicles, trucks, buses, trains, light rail transit; aircraft decoys; ground combat vehicles; masked gun ports for vehicles; vehicle parts and fittings for towing; yachts and parts and fittings for all the aforesaid goods.

Class 13: Firearms; ammunition and projectiles; explosives; bombs and mortars; weapons and weapon installations; free fall bombs; mortar bombs; guided projectiles; guided bombs; guided mortar bombs; guided rockets; missiles; guided missiles; ballistic missiles; cruise missiles and stand-off weapons; underwater guided missiles; laser guided missiles; heat seeking missiles; missile launching apparatus; precision guided munitions; air to surface weapons; air to air missiles; torpedoes and depth charges; torpedo launching apparatus; rockets; rocket launchers; pyrotechnic gas actuators; pyrotechnic gas generators; pyrotechnic thrust generators for steering airborne weapons; detonators; fuzes; proximity fuzes; contact fuzes; containers for storing and for launching weapons; apparatus and instruments for the firing or launching of weapons; infrared flares, decoys and jammers; shells, bullets; cartridges; explosives charges; hand grenades; smoke screen dischargers; explosive cutting charges; linear cutting charges; warheads; shaped charge warheads; penetrator warheads; blast fragmentation warheads; hand held guns; machine guns; fixed and mobile cannons and artillery guns; howitzers; self-propelled howitzers; field guns; tank guns; mortar bomb launchers; arming devices; minefield breaching devices; explosive armour plating; propelling charge systems; gun propellant; rocket propellant; initiators; gatling guns; mines; naval guns; decoy targets for hostile underwater guided missiles, torpedoes and depth charges; decoy targets for military use; carrying cases adapted for firearms; apparatus and equipment for carrying materials to be deployed in defence, weapon installations and decoy bandoliers for holding cartridges, ammunition cases, magazines, grenades and weapons; pouches for carrying cartridges, ammunition cases, magazines, grenades and weapons; machine gun systems and automatic weapons for shipboard defence; portable towed guns; remotely operated weapons and weapon systems; ammunition carrying vehicles; tanks (weapons); weapon and ammunition storage for vehicles; weapon stations for vehicles, including weapon mounts and weapons; smoke grenades for generating smoke screens; smoke grenade launchers; surface to surface missiles; anti-surface weapons systems; long range projectiles; armoured gun shields for vehicles; weapons for detecting, identifying, targeting and detonating mines; air, sea and land weapon systems; parts and fittings for all the aforesaid goods.

Class 16: Writing instruments; printed matter, publications, newsletters, magazines, brochures, reports, certificates, user manuals, user guides, technical manuals, technical datasheets, and educational, training and instructional manuals, brochures, posters, wall charts, books and photographs; maps and navigational charts; instructional, training and teaching materials; publicity materials; decals; paper tapes and cards for the recordal of computer programs.

Class 37: Construction, installation, maintenance, servicing, refurbishment, renovation, upgrading and repair services, all relating to civil engineering installations, buildings, structures and transport infrastructure; construction, installation, maintenance, servicing, refurbishment, renovation, upgrading and repair services, all relating to the defence, aerospace, aviation, transport and security industries, or utilising defence, aerospace, aviation, transport or security technology; construction, installation, maintenance, servicing, refurbishment, renovation, upgrading and repair of aircraft, fixed wing aircraft, rotary wing aircraft, prototype aircraft, military aircraft, combat aircraft, training aircraft, fast jet training aircraft, aircraft for aerial and acrobatic display purposes, unmanned air vehicles, autonomous air vehicles, remotely piloted air vehicles, drones, unmanned air vehicles for the transport and release of guided weapons, land vehicles, armoured land vehicles, military land vehicles, tracked land vehicles, land vehicles for combat purposes, land vehicles for command and control purposes, land vehicles for the transport of military personal and equipment, land vehicles for emergency, search and rescue purposes, land vehicles for mine clearance purposes, land vehicles for site clearance purposes, autonomous land vehicles, tanks, motorised and non-motorised land vehicles equipped for the transport, launch and operation of weapons and/or equipped with apparatus for control and guidance of weapons, amphibious vehicles, autonomous amphibious vehicles, marine and submersible vehicles, ships, patrol ships, boats, rigid inflatable boats (RIBs), aircraft carriers, frigates, destroyers, corvettes, submarines, nuclear submarines and autonomous underwater vehicles; construction, installation, maintenance, servicing, refurbishment, renovation, upgrading and repair of parts and fittings within aircraft, aerial vehicles, land vehicles, amphibious vehicles, marine vehicles and submersible vehicles (excluding computer software); construction, installation, maintenance, servicing, refurbishment, renovation, upgrading and repair of computer hardware, data processing and transmission apparatus, computer networks, communications networks, communications equipment and wireless communications equipment; construction, installation, maintenance, servicing, refurbishment, renovation, upgrading and repair of weapons and weapons systems; construction, installation, maintenance, servicing, refurbishment, renovation, upgrading and repair of optical apparatus, mechanical apparatus, instruments, equipment, components, systems, controls and displays for military, defence, aerospace, aviation, transport and security purposes (excluding services relating to computer software); contracting for availability services, namely, providing maintenance, servicing and preparatory services for aircraft, aerial vehicles, land vehicles, marine vehicles and submersible vehicles so that the vehicles are always available, fit and ready for use; information, advice and consultancy relating to all of the aforesaid services; construction, civil engineering, installation, maintenance, servicing, refurbishment, renovation or repair services, all relating to civil engineering installations, buildings, structures, or to the aerospace, transport or defence industries or utilising aerospace, transport or defence technology; maintenance, servicing, refurbishment, renovation, overhaul or repair services, all relating to aircraft, helicopters, aerial vehicles, air cushion borne vehicles, spacecraft, land vehicles, amphibious vehicles, marine and submersible vehicles, combat vehicles, armoured vehicles, weapons, weapon systems, artillery systems, intelligent munitions, firearms, computer hardware, sensors, telecommunication, communications, or data processing and transmission apparatus, optical and mechanical apparatus and instruments, avionics equipment, navigations systems, radar systems, information systems and electrical power systems, defence equipment, and parts and fitting within aircraft; weapon systems maintenance and equipment maintenance; rental leasing of construction equipment; maintenance, repair and overhaul of apparatus, instruments and communications systems for the firing or launching of decoy targets for hostile underwater guided missiles, torpedoes and depth charges; maintenance and repair services in the field of hybrid drive technology which combines conventional fuel with electricity; through life support services, namely maintenance and repair of electronics products; through life support services, namely maintenance and repair of underwater acoustic transducers; assembly (installation) of mechanics, chassis, wiring, electrics, electronics, cabinet, body and other parts, components and/or accessories in relation to aircraft, helicopters, aerial vehicles, air cushion borne vehicles, spacecraft, land vehicles, amphibious vehicles, marine and submersible vehicles, combat vehicles, armoured vehicles, weapons, weapon systems, artillery systems, intelligent munitions, firearms, computer software, computer hardware, sensors, telecommunication, communications, or data processing and transmission apparatus, optical and mechanical apparatus and instruments, avionics equipment, navigations systems, radar systems, information systems and electrical power systems, defence equipment, and parts and fitting within aircraft; paint spraying services; repair and maintenance of electronic circuit boards; repair and maintenance services in relation to geographic information systems and remote sensing technology; customisation, installation, integration and configuration of electronics, electronic systems, electronic displays, head-up displays, helmet-mounted displays, night vision instruments, sensors, avionics, flight instruments, flight controls, land vehicle controls, throttles, control sticks, marine vehicle controls, weapons and weapons systems; installation, integration and configuration of computer hardware; integration and upgrading of aircraft, land vehicle and marine vehicle simulators; construction services in relation to ships and submarines; construction services in relation to radar systems; advice and consultancy relating to all of the aforesaid services.

Class 41: Design, development and provision of training, education, workshops, seminars and courses for the military in relation to the use, operation, deployment and maintenance of land and armaments systems, including vehicles, armoured vehicles, combat vehicles, ambulances, land vehicles, armoured land vehicles, military land vehicles, tracked land vehicles, land vehicles for combat purposes, land vehicles for command and control purposes, land vehicles for the transport of military personal and equipment, land vehicles for emergency, search and rescue purposes, land vehicles for mine clearance purposes, land vehicles for site clearance purposes, autonomous land vehicles, tanks, motorised and non-motorised land vehicles equipped for the transport, launch and operation of weapons and/or equipped with apparatus for control and guidance of weapons, amphibious vehicles, autonomous amphibious vehicles, marine and submersible vehicles, ships, patrol ships, boats, rigid inflatable boats (RIBs), aircraft carriers, frigates, destroyers, corvettes, submarines, nuclear submarines, autonomous underwater vehicles, weapon carriage and release equipment for installation in or on military aircraft, land vehicles or marine vehicles, weapons systems, artillery systems, intelligent munitions, firearms, explosives, computer software, computer hardware, sensors, electronics, communications equipment, navigations systems, radar systems, information systems and electrical power systems; CD-ROM and web-based interactive multimedia training, tabletop training, classroom presentations, laboratory sessions and peer coaching, all in relation to the use, operation, deployment and maintenance of land and armaments systems including vehicles, armoured vehicles, combat vehicles, weapons systems, artillery systems, intelligent munitions, firearms, explosives, computer software, computer hardware, sensors, electronics, communications equipment, navigations systems, radar systems, information systems and electrical power systems; design, development and provision of training, education, workshops, seminars and courses for the navy and coastguard in relation to ship operations and combat systems including command, radar, sonar, electronic surveillance measures, electronic counter-measures, electro-optical, missile, gun, close in weapon systems, torpedo, data link, information, communications, navigation, meteorological and oceanographic systems; training and educational services associated with the transfer of technology; training and educational services in the field of intelligence and security; linguistics consultancy, language translating and interpreting services; military base training; preparing training material and on-site training in relation to socio-cultural, human terrain and geopolitical aspects of foreign countries; avionics systems training services; advice and consultancy relating to all of the aforesaid services.

Class 42: Engineering services; engineering consultancy; research, design and development services; industrial analysis and research services; laboratory testing services; metrology and calibration of equipment; electromagnetic compatibility testing services for military and civilian equipment; tool design services; air, sea and land vehicle design, testing and certification services; project management services; defence consultancy, namely technical consultancy in relation to the procurement, deployment and use of defence software, defence hardware, military vehicles, military aircraft, military marine vehicles, and weapons; combat systems requirement analysis; design, development, installation, integration, testing, maintenance, support, repair, updating and upgrading of computer software; design, development, installation, integration, testing, maintenance, support, repair, updating and upgrading of computer software for military, defence, aerospace, aviation, engineering, transport, security, national security, cyber security and law enforcement purposes; operational support services for computer software; design, development, installation, integration, testing, maintenance, support, repair, updating and upgrading of computer software for aircraft, aerial vehicles, land vehicles, amphibious vehicles, marine vehicles, ships, boats, submarines, weapons and weapons systems; design, development and testing of electronics, electronic systems, electronic displays, head-up displays, helmet-mounted displays, night vision instruments, sensors, avionics, flight instruments, flight controls, land vehicle controls, throttles, control sticks, marine vehicle controls, weapons and weapons systems; design, development, customisation and testing of computer hardware; systems integration services for defence and aerospace systems; circuit board design services; design, development and testing of aircraft, land vehicle and marine vehicle simulators; preparation of maps in digital form; generation of reports, namely, preparation of reports containing data, information and analysis relating to pilot, driver or crew member decision-making and performance of aircraft, land vehicles and marine vehicles; information technology consultancy services; research, design, development and customisation of computer software, computer firmware, computer hardware, computer systems and computer architectures; preparation of reports relating to computer data, computer software, computer firmware, computer hardware, computer operating systems, computer networks, communications networks, the security of computer networks and the security of communications networks; monitoring, diagnostic and maintenance services for computer operating systems; analytical services relating to computers, computer networks and communications networks; forensic analysis of computer operating systems; forensic analysis, reverse engineering, storage, recovery, conversion, compression and migration of computer data; analytical services relating to computers, computer software, computer networks and communications networks; incident investigations and management relating to threats and malicious behaviour in connection with computer operating systems, computer networks and communications networks; information, advice and consultancy relating to computer security, computer network security and communications network security; advising and consulting on how to reduce vulnerability to cyber-attacks, how to minimise the damage caused by cyber-attacks, and how to recover from cyber-attacks; computerised data services, namely identifying, capturing, searching, exploring, analysing, processing, storing, managing, monitoring, aggregating and modelling of data and transactions, and of patterns and networks in data and transactions; preparation of technology reports; information, advice and consultancy relating to all of the aforesaid services; engineering consultancy; technical consultancy; environmental consultancy; project management services; air defence consultancy, namely technical consultancy in relation to the procurement, deployment and use of military aircraft and weapons therefor for defence purposes; software and programming services; combat systems requirement analysis, design, integration, test, trials and/or support services; ship design consultancy; submarine design consultancy; circuit board design services; laboratory testing services including simulated environments, environmental stress screening, metrology and/or calibration of equipment; tool design services; electromagnetic compatibility testing services for military and civilian equipment; systems integration services for aerospace systems; nuclear power engineering consultancy including safety, nuclear power generation, operational support, waste management, decommissioning; technical engineering and support services in the field of hybrid electric technology information services in relation to engineering; design and development of hybrid drive technology which combines conventional fuel with electricity; design and development of electronic camouflage technology for vehicles; engineering, development and testing services in relation to ships and submarines; design, engineering, construction, development, testing and consultancy services in relation to land and armaments systems (consisting solely of computer systems), including for vehicles, armoured vehicles, combat vehicles, weapons systems, artillery systems, intelligent munitions, firearms, explosives, computer software, computer hardware, sensors, electronics, communications equipment, navigations systems, GPS, radar systems, information systems and electrical power systems; design and development of stealth technology for ships, submarines, aircraft, helicopters, amphibious vehicles and land vehicles; monitoring, collection and compilation of environmental information and data, including underwater conditions, weather and population and distribution of marine animals; monitoring and predicting environmental impact; testing of military weapons and electronic systems; scientific and technological services and research and design relating to electronic systems in the sectors of naval, land and air defence; scientific and technological services and research and design in connection with oil and gas; scientific and technological services and research and design in connection with renewable energy; scientific and technological services and research and design in connection with space technology; scientific, technological services, research, design and testing in connection with electronics; scientific and technological services and research and design in connection with electronics systems, subsystems and modules, including the development of prototypes, in-house testing, thermal stress screening, vibration stress screening, temperature screening, environmental stress screening and functional testing; scientific and technological services and research, design and testing in connection with underwater acoustic transducers; chemical and metallurgical analysis services; design, research and development in relation to 3D printing; design, research and development in relation to encapsulation, metallisation and metal plating; design, engineering, development, testing and consultancy services in relation to radar techniques and systems; construction services in relation to radar techniques; research and analysis in relation to electronic data, including geospatial images, signals and radar; computer and data security services; research and consultancy in relation to social science; design, development, research, consultancy, analysis, modeling and testing services in relation to geographic information systems and remote sensing technology; design, development, research, consultancy, analysis, modeling and testing services in relation to intelligence, surveillance and reconnaissance systems; open architecture avionics test systems services; design and development of applications to support software generation for customised military and naval mission controls; diagnostic services for computers and computer networks; maintenance, repair and updating of software for the firing or launching of decoy targets for hostile underwater guided missiles, torpedoes and depth charges; advice and consultancy relating to all of the aforesaid services.

European Union trade mark registration No 11 400 702

Class 9: Computer software, firmware and hardware for searching, mining, collecting, analysing, viewing, processing, storing, managing, monitoring, aggregating and modeling data; computer software, firmware and hardware for searching for, identifying, viewing, analysing, processing, storing, managing, monitoring, aggregating and modeling transactions; computer software, firmware and hardware for searching, exploring, identifying, viewing, analysing, processing, storing, managing, monitoring, aggregating and modeling patterns and networks in data; computer software, firmware and hardware for detecting suspicious behaviour; computer software, firmware and hardware for analysing and predicting customer behaviour; computer software, firmware and hardware for use in customer relationship management; computer software, firmware and hardware for information technology and communications technology security purposes; computer software, firmware and hardware for use in detecting, preventing, combating and defending against fraud, financial fraud, debit and credit card fraud, Internet fraud, financial crime, money laundering, terrorism and smuggling operations; computer software, firmware and hardware for identifying, recording, investigating, analysing and reviewing financial crime of all types; computer software, firmware and hardware for the purposes of enabling, improving and monitoring regulatory compliance, operational efficiency, corporate governance, risk management, risk prevention, and the reduction of monetary losses; computer software, firmware and hardware for the purposes of carrying out due diligence, background checks and vetting of customers and potential customers; computer software, firmware and hardware for use in defence, law enforcement, and business process optimisation; data processing apparatus and instruments; computer software, firmware, hardware and electronic sensors for data security, computer security, computer network security and communications network security purposes; computer software, firmware, hardware and electronic sensors to identify threats and malicious behaviour on the Internet and within enterprises; computer software, firmware and hardware for reducing vulnerability to cyber-attacks, minimising the damage caused by cyber-attacks, and for recovering from cyber-attacks; computer software, firmware, hardware and electronic sensors for identifying and reporting intrusions into computer networks and communications networks; computer firewalls; computer software, firmware and hardware for identifying, collecting, viewing, recording, analysing, sharing, processing, managing, filtering, storing, monitoring and transmitting data; computer software for real-time situational awareness and workflow management; computer software, firmware and hardware for receiving, collecting, storing, viewing, sharing, monitoring, managing, processing, configuring, analysing, sanitising, cleansing, anonymising, de-anonymising, encrypting, decrypting, masking, hashing, filtering, redaction, tokenisation, transmitting, sharing and validating of data, of information, and of electronic communications; computer software, firmware and hardware which provide a gateway for anonymising, de-anonymising, transmitting, encrypting, decrypting, masking, hashing, filtering, redaction, tokenisation and validating data, information and electronic communications; computer software for receiving, processing, converting, translating, validating, encrypting, decrypting, recording, sending and distributing data; computer software for checking the integrity of data; computer software for transferring data between networks; computer software for message brokering; computer software for protecting the quality, integrity and security of data and information, in particular when transmitted between networks; computer software, firmware and hardware for minimising the risk of data leaks, data breach, data loss and other risks associated with the transmission of data between networks; computer software for the creation and operation of a data firewall which intercepts and transforms data sent between different networks, interfaces or security domains; computer software for checking data for viruses, malware and spyware; computer software for monitoring data levels; computer software, firmware, hardware, sensors and apparatus for gathering intelligence and evidence; computer software, firmware, hardware, sensors and apparatus relating to explosive ordnance disposal; computer software, firmware, hardware, sensors and apparatus for the purposes of countering improvised explosive devices (IEDs), including minefield clearance; parts and fittings for computer firmware and computer hardware; publications, brochures, reports, certificates, user manuals, user guides, technical manuals, instruction manuals, training manuals, educational, training and instructional materials in electronic form.

Class 16: Printed matter; printed reports; printed publications; technical manuals; instruction manuals; user manuals; user guides; educational, training and instructional materials; certificates; newsletters; pamphlets; brochures; catalogues; printed advertising materials.

Class 35: Compilation and systematization of information into computer databases; management of computer databases; computer data processing; providing data searches in computer files for others; data logging, data storage and data retrieval services; data services, namely managing data; business consulting; business project management services; management consulting; strategy consulting; provision of business information; provision of business management information; business analysis services; business data analytics; analytics, namely business intelligence and business lifecycle analysis; business operational analysis and research services; carrying out business studies to provide evidence to support informed decision making; business consulting relating to operational availability, operational capability, capability planning, capability audits, cost analysis and effectiveness analysis; business modelling; business process modelling; supply chain modelling; business modelling to support operational risk analysis and capability audits; advice and consultancy relating to business risk management; preparation of business reports, commercial reports and economic reports; business simulation to understand and explain business performance; enterprise mapping, namely, developing a breakdown of the key activities required to support a complex multi-organisational enterprise in the achievement of its goals; business facilitation services, namely, designing, running, guiding or chairing meetings to facilitate the reaching of a common goal or to facilitate a productive or successful exchange of information or ideas; identification of business or organisational performance indicators; information, advice and consultancy relating to all of the aforesaid services; information, advice and consultancy relating to regulatory compliance, operational efficiency and corporate governance.

Class 36: Information, advice and consultancy relating to the monitoring of financial transactions, detecting and preventing suspicious financial behaviour and reducing monetary losses; information, advice and consultancy relating to risk management.

Class 37: Installation, configuration, customisation, servicing, maintenance, updating, upgrading, repair and operational support services for computer hardware, computer networks, communications networks, communications equipment and wireless communications equipment; diagnostic and maintenance services for computers and computer networks; information, advice and consultancy relating to all of the aforesaid services.

Class 38: Communications technology consultancy services; information, advice and consultancy relating to all of the aforesaid services.

Class 42: Information technology consultancy services; research, design, development and customisation of computer software, computer firmware, computer hardware, computer systems and computer architectures; preparation of technical reports; preparation of reports relating to computer data, computer software, computer firmware, computer hardware, computer operating systems, computer networks, communications networks, the security of computer networks and the security of communications networks; installation, integration, implementation, configuration, servicing, maintenance, updating, upgrading, repair and operational support services for computer software; computer software services relating to the searching, mining, collection, gathering, storage, exploration, analysis, processing, management, aggregation, modelling, viewing, sharing and monitoring of data and transactions, including patterns and networks in data and transactions; computer software services relating to the detection and prevention of fraud, on-line fraud, financial fraud, financial crime, suspicious behaviour, terrorism operations, smuggling operations, money laundering operations and monetary losses; computer software services relating to identifying, investigating, reviewing and managing cases of financial crime of all types; computer software services relating to predictive modelling, regulatory compliance, operational efficiency, risk management, risk prevention, corporate governance and customer relationship management; computer software services relating to due diligence investigations on customers and potential customers; computer software services relating to the analysis and prediction of customer behaviour; computer system monitoring services; diagnostic and maintenance services for computer operating systems; analytical services relating to computers, computer networks and communications networks; forensic analysis of computer operating systems; forensic analysis, reverse engineering, storage, recovery, conversion, compression and migration of computer data; computer software services relating to the matching, transforming, sampling, partitioning and analysis of data; analytical services relating to computers, computer software, computer networks and communications networks; artificial intelligence and neural network modelling; technical and technological project management services; industrial analysis and research services; providing analytical tools for raising threat alerts; computer virus, malware and spyware protection services; recovery of computer data and computer operating systems; incident management and investigations relating to threats and malicious behaviour in connection with computer operating systems, computer networks and communications networks; geographic mapping and spatial modelling; information, advice and consultancy relating to computer security, computer network security and communications network security; advising and consulting on how to reduce vulnerability to cyber-attacks, how to minimise the damage caused by cyber-attacks, and how to recover from cyber-attacks; computer software services relating to the gathering of intelligence and evidence; computer software services relating to explosive ordnance disposal; computer software services relating to the countering of improvised explosive devices (IEDs), including minefield clearance; installation, configuration, customisation, servicing, maintenance, updating, upgrading, repair and operational support services for computer firmware; data security services; technical data services, namely identifying, capturing, searching, exploring, analysing, processing, storing, managing, monitoring, aggregating and modelling of data and transactions, and of patterns and networks in data and transactions; information, advice and consultancy relating to all of the aforesaid services.

Class 45: Security services; security project management services; information, advice and consultancy relating to security; analysis, consulting and advice in relation to national security; homeland security advisory and consultancy services, namely, advising and consulting on now to reduce vulnerability to terrorism, how to minimise the damage caused by terrorist attacks, and how to recover from terrorist attacks; information, advice and consultancy relating to detecting, combating and defending against financial crime, including money laundering, financial fraud, debit and credit card fraud and on-line fraud; information, advice and consultancy relating to due diligence, background checks and vetting of customers and potential customers; information, advice and consultancy relating to the identification, investigation, review and management of cases of financial crime of all types; consultancy and advice relating to the gathering of intelligence and evidence; consultancy and advice relating to explosive ordnance disposal; consultancy and advice relating to the countering of improvised explosive devices (IEDs), including minefield clearance; military and defence analysis and consulting.

Following a partial refusal of the contested application pursuant to the final decision rendered on 22/03/2018 in parallel opposition B 2 897 224,Tte contested goods and services are the following:

Class 12: Bicycles; electric vehicles; trolleys; mopeds; dining cars [carriages]; bicycle wheels; bicycle frames; bicycle pedals; bicycle saddles; vehicles for locomotion by land, air, water or rail; motorcycles; tramcars; cable cars; remote control vehicles, other than toys; sports cars; electric bicycles; mopeds; tricycles; launches; baskets adapted for bicycles.

Class 18: Pocket wallets; school bags; card cases [notecases]; travelling trunks; leather laces; trimmings of leather for furniture; rucksacks; wheeled shopping bags; shopping bags; attaché cases; handbags; travelling bags; mountaineering sticks; vanity cases, not fitted; key cases; bags for sports; bags; reins for guiding children; umbrellas; leather, unworked or semi-worked.

Class 25: Clothing; cyclists' clothing; sweaters; tee-shirts; skorts; shoes; skirts; boots; outerclothing; headgear for wear; hosiery; gloves [clothing]; scarfs; neckties; suits; overcoats; cheongsams (chinese gowns); childrens' clothing; trouser straps; girdles; down jackets.

Class 31: Trees; grains [cereals]; oats; plants; aloe vera plants; germ grains; malt germs.

Class 36: Insurance brokerage; insurance consultancy; instalment loans; credit bureau services; banking; mutual funds; capital investment; exchanging money; loans [financing]; fiscal valuation; financial evaluation [insurance, banking, real estate]; lease-purchase financing; financial analysis; electronic funds transfer; antique appraisal; art appraisal; jewelry appraisal; real estate agency services; real estate management; tax services [not accounting].

Class 43: Accommodation bureau services [hotels, boarding houses]; rental of temporary accommodation; boarding house services; hotel services; hotel reservations; holiday camp services [lodging]; motel services; food sculpting; providing campground facilities; tourist home services; rental of meeting rooms; retirement home services; day-nursery [crèche] services.

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

The terms ‘in particular’ and ‘including’, used in the opponent’s list of goods and services, indicate that the specific goods and services are only examples of items included in the categories and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

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

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 12

The contested bicycles; electric vehicles; trolleys; mopeds; dining cars [carriages]; bicycle wheels; bicycle frames; bicycle pedals; bicycle saddles; vehicles for locomotion by land, air, water or rail; motorcycles; tramcars; cable cars; remote control vehicles, other than toys; sports cars; electric bicycles; mopeds; tricycles; launches; baskets adapted for bicycles are included in the respective broad categories of, or overlap with, the opponent’s aircraft; land vehicles; marine and submersible vehicles; parts and fittings for all of the aforesaid goods. Therefore, they are identical.

Contested goods in Class 18

The contested pocket wallets; school bags; card cases [notecases]; travelling trunks; leather laces; trimmings of leather for furniture; rucksacks; wheeled shopping bags; shopping bags; attaché cases; handbags; travelling bags; mountaineering sticks; vanity cases, not fitted; key cases; bags for sports; bags; reins for guiding children; umbrellas; leather, unworked or semi-worked have a different nature, purpose and method of use compared to all the goods and services of the opponent in Classes 6, 7, 9, 12, 13, 16, 35, 36, 37, 38, 41, 42 and 45. Furthermore, they have different manufacturers/providers, distribution channels and users. Therefore, these goods are dissimilar.

Contested goods in Class 25

The broad categories of the contested clothing; cyclists' clothing; shoes; boots; outerclothing; headgear for wear; gloves [clothing]; overcoats; childrens' clothing are similar to a low degree to the opponent´s respective broad categories of protective clothing, protective headgear, protective footwear in Class 9, as they can have the same nature, and may coincide in relevant public and method of use.

However, the contested down jackets; sweaters; tee-shirts; skorts; skirts; hosiery; scarfs; neckties; suits; cheongsams (chinese gowns); trouser straps; girdles are dissimilar to all the goods and services of the opponent in Classes 6, 7, 9, 12, 13, 16, 35, 36, 37, 38, 41, 42 and 45, including to the goods in Class 9, since the nature of these goods is different, as well as their purpose: the specific items of ‘ordinary’ clothing in Class 25 are used to cover various parts of the human body, but not to protect against accidents or injury. The producers are different and these goods are usually sold in different outlets. They are neither complementary nor in competition.

Contested goods in Class 31

The contested trees; grains [cereals]; oats; plants; aloe vera plants; germ grains; malt germs have a different nature, purpose and method of use compared to all the goods and services of the opponent in Classes 6, 7, 9, 12, 13, 16, 35, 36, 37, 38, 41, 42 and 45. Furthermore, they have different manufacturers/providers, distribution channels and users. Therefore, these goods are dissimilar.

Contested services in Class 36

The contested instalment loans; credit bureau services; banking; mutual funds; capital investment; exchanging money; loans [financing]; fiscal valuation; financial evaluation [insurance, banking, real estate]; lease-purchase financing; financial analysis; electronic funds transfer; antique appraisal; art appraisal; jewelry appraisal; tax services [not accounting] are all services of a financial nature which are often offered by the same undertakings as the opponent´s services in Class 36 information, advice and consultancy relating to the monitoring of financial transactions, detecting and preventing suspicious financial behaviour and reducing monetary losses which are also of a financial nature and may be provided through the same distribution channels. Therefore these services are at least similar.

The contested insurance brokerage; insurance consultancy, are insurance-related services that are at least similar to the opponent´s information, advice and consultancy relating to risk management, since they are all related to the management of risks, and may be provided to the same relevant public by the same undertakings through the same distribution channels.

The contested real estate agency services; real estate management are dissimilar to all the goods and services of the opponent in Classes 6, 7, 9, 12, 13, 16, 35, 36, 37, 38, 41, 42 and 45, including to the opponent´s financial services in Class 36, in respect of which it has to be said that they do not have the same nature, the same intended purpose or the same method of use. While financial services are provided by financial institutions for the purposes of managing their clients’ funds, real estate services are services connected with a property, in particular, the lease, the purchase, the sale or the management of such a property.

Furthermore, it cannot be validly argued that financial and banking services and real estate services are offered to customers without distinction in the same agency or branch of a bank. In principle, real estate services are provided by separate branches of financial institutions, so that financial activities are separate from any real estate activities and, therefore, the distribution channels do not coincide (17/09/2015, T-323/14, ‘Bankia / BANKY’, EU:T:2015:642, § 34-38).

As regards whether the services in question are complementary, it should be noted that, while financial and banking services may play a significant role in the purchase of a property, it cannot be inferred from that fact alone that consumers would be led to believe that the same undertaking was responsible for real estate services and financial services. Any other conclusion would mean that all non-financial transactions subject to funding would be complementary to a financial service. It must therefore be concluded that these services are dissimilar even if financial services are essential or important for the use of real estate. The consumers would not attribute responsibility for both services to the same company (11/07/2013, T-197/12, Metro, EU:T:2013:375, § 47-51).

Contested services in Class 43

The contested accommodation bureau services [hotels, boarding houses]; rental of temporary accommodation; boarding house services; hotel services; hotel reservations; holiday camp services [lodging]; motel services; food sculpting; providing campground facilities; tourist home services; rental of meeting rooms; retirement home services; day-nursery [crèche] services have a different nature, purpose and method of use compared to all the goods and services of the opponent. Furthermore, they have different manufacturers/providers, distribution channels and users. Therefore, these services are dissimilar to all of the opponent´s goods and services.

b) Relevant public — degree of attention

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

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

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, specialised nature, or terms and conditions of the goods and services purchased.

For example, in the case of sports cars, taking into consideration their price, consumers are likely to pay a higher degree of attention than for less expensive purchases. It is to be expected that these consumers will not buy a car, either new or second-hand, in the same way as they would buy articles purchased on a daily basis. The consumer will be an informed one, taking all relevant factors into consideration, for example, price, consumption, insurance costs, personal needs or even prestige (22/03/2011, T‑486/07, CA, EU:T:2011:104, § 27-38; 21/03/2012, T‑63/09, Swift GTi, EU:T:2012:137, § 39-42).

c) The signs

Earlier trade marks	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.

The element ‘SYSTEMS’ of the earlier marks is meaningful in certain territories, for example in those countries where English is understood (although it may also be understood in other languages with similar equivalent terms). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public.

The earlier trade marks consist of a figurative mark made up of the verbal elements ‘BAE SYSTEMS’ in white upper-case letters in a standard typeface on a red rectangle. The sign has no element that is more dominant than others. The verbal element ‘BAE’ is meaningless for the relevant public and therefore normally distinctive. The word ‘SYSTEMS’ will be understood by the relevant public under analysis as the plural of ‘SYSTEM’ which refers to ‘a set of things working together as parts of a mechanism or an interconnecting network; a complex whole’ (information extracted from https://en.oxforddictionaries.com/definition/system). This word is deemed non-distinctive in relation to the goods and services concerned, since they can all form part of a structure or be used or rendered in combination. The red rectangular background is a less distinctive figurative element of a purely decorative nature.

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).

The contested sign is a figurative mark made up of the verbal element ‘Bai’, which is meaningless for the relevant public and therefore normally distinctive, and the less distinctive figurative element of a purely decorative nature consisting of a black circular background.

In addition, it is also true 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. Therefore, in short words, small differences may frequently lead to a different overall impression.

Visually, the signs coincide in the letters ‘B’ and ‘A’ at the beginning of the distinctive verbal elements, and differ in the last letter ‘E/I’ respectively as well as in the non-distinctive verbal element of the earlier marks, and the less distinctive figurative elements of the signs, to which consumers will pay less attention for the reasons set out above.

Therefore, the signs are visually similar to a below average degree.

Aurally, for the part of the public under analysis that will pronounce the signs as words and not as initials, the sound of the sequences of letters ‘BAE’ and ‘BAI’ is very similar, since the differences in pronunciation between them are so slight as to be overlooked, and they have the same number of syllables and the same rhythm and intonation. The signs differ in the pronunciation of the non-distinctive verbal element of the earlier marks.

Therefore, the signs are aurally similar to an above average degree.

Conceptually, although the additional verbal element of the earlier marks ‘SYSTEMS’ is meaningful, it is not sufficient to establish a difference in terms of concept between the signs since this concept is non-distinctive and cannot indicate the commercial origin of the goods. Therefore, the consumer’s attention will be drawn to the verbal element ‘BAE’ of the earlier marks, which has no meaning, and since the contested sign is also meaningless, a conceptual comparison is not possible and 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 marks

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

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks as a whole have no meaning for any of the goods and services in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a non‑distinctive element in the marks, as stated above in section c) of this decision.

e) 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).

In the present case, the goods and services have been found partly identical, partly similar to different degrees and partly dissimilar. The signs are visually similar to a below average degree, aurally similar to an above average degree, while a conceptual comparison is not possible so the conceptual aspect does not influence the assessment of the similarity of the signs. The distinctiveness of the earlier marks has been considered as normal, and the public’s degree of attentiveness varies from average to high.

Taking into account the above, there is a likelihood of confusion because the differences between the signs cannot counteract the similarities between them.

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).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion, even for goods found to be similar only to a low degree, on the part of the English-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 12 340 121 and No 11 400 702. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees to those of the earlier trade marks.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods and services cannot be successful.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier marks, there is no need to assess the enhanced degree of distinctiveness of the opposing marks due to their reputation as claimed by the opponent and in relation to identical and similar goods and services. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing marks in relation to dissimilar goods and services, as the similarity of goods and services is a sine qua non for there to be likelihood of confusion. The result would be the same even if the earlier marks enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 12 452 331 for the figurative mark , in Classes 6, 7, 9, 12, 13, 16, 37, 41 and 42.

 United Kingdom well-known word marks ‘BAE’ and ‘BAE SYSTEMS’ in Classes 9, 12, 13, 41 and 42.

Since these marks cover the same or a narrower scope of goods and services and are thus also dissimilar to the remaining contested goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

REPUTATION — ARTICLE 8(5) EUTMR

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

According to the above, the relevant territory for establishing the reputation of the earlier mark is the territory of protection: the earlier mark must have a reputation in the territory where it is registered. Therefore, for national marks the relevant territory is the Member State concerned, whereas for EUTMs the relevant territory is the European Union.

However, the Court has clarified that for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (judgment of 06/10/2009, C-301/07, Pago, EU:C:2009:611). In general, however, when evaluating whether the part of the territory in question is a substantial one, account must be taken both of the size of the geographical area concerned and of the proportion of the overall population living there, since both these criteria may affect the overall significance of the specific territory.

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

 The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

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

a) Reputation of the earlier trade marks

According to the opponent, the earlier European Union trade mark registrations No 12 340 121 and No 11 400 702, both for the figurative mark and the European Union trade mark registration No 12 452 331 for the figurative mark have a reputation in the United Kingdom. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 12 340 121 and No 11 400 702, both for the figurative mark .

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 14/02/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely:

Class 9: Computer hardware, computer firmware, computer software and computer programs; computer hardware, computer firmware, computer software and computer programs for military, defence, aerospace, aviation, engineering, transport, security, national security, cyber security and law enforcement purposes; computer hardware, computer firmware, computer software and computer programs for aircraft, aerial vehicles, land vehicles, amphibious vehicles, marine vehicles, ships, boats and submarines; interface apparatus and cards; computers; data processors; parallel processors; signal processors; data recording apparatus; electronic equipment and systems for interfacing weapons to on-board control systems of air, land and marine vehicles; control systems; apparatus for guidance, control, testing and operation of civil and military aircraft; operational analysis systems; apparatus for the guidance, control, testing and operation of weapons and weapon systems; computer software for use in the guidance, control, testing and operation of weapons and weapon systems: weapons systems, namely computer software and hardware for launching, controlling, guiding and detonating weapons; missile guidance systems; anti-aircraft systems, namely computer software and hardware for identifying, tracking and targeting enemy aircraft; command and control systems for battlefield force control; combat management systems, namely computer software and hardware for use in warfare for weapon control, troop command, planning, tactics and decision making purposes; artillery fire and control systems, namely computer software and hardware for firing, controlling, monitoring, managing and guiding weapons and projectiles; air defence systems, namely computer software and hardware for identifying, tracking and targeting hostile aircraft or air attacks and for reducing and nullifying hostile air threats; strategic command, control, communications and intelligence systems for land, sea, air and joint operation centres; naval command and control systems; stand-alone command tactical data systems; command support systems, namely computer software and hardware to enable personnel in charge of a military or emergency situation to communicate, improve situational awareness, and collaborate with other personnel in response to an incident.

Class 12: Aircraft; unmanned air vehicles; drones; land vehicles; armoured land vehicles; military land vehicles; parts and fittings for all the aforesaid goods; marine and submersible vehicles; ships.

Class 13: Firearms; ammunition and projectiles; explosives; bombs and mortars; weapons and weapon installations.

Class 41: Design, development and provision of training, education, workshops, seminars and courses for the military in relation to the use, operation, deployment and maintenance of land and armaments systems; CD-ROM and web-based interactive multimedia training, tabletop training, classroom presentations.

Class 42: Engineering services; engineering consultancy; research, design and development services; industrial analysis and research services; laboratory testing services; metrology and calibration of equipment; electromagnetic compatibility testing services for military and civilian equipment; tool design services; air, sea and land vehicle design, testing and certification services.

The opposition is directed against the following remaining goods and services:

Class 18: Pocket wallets; school bags; card cases [notecases]; travelling trunks; leather laces; trimmings of leather for furniture; rucksacks; wheeled shopping bags; shopping bags; attaché cases; handbags; travelling bags; mountaineering sticks; vanity cases, not fitted; key cases; bags for sports; bags; reins for guiding children; umbrellas; leather, unworked or semi-worked.

Class 25: Down jackets; sweaters; tee-shirts; skorts; skirts; hosiery; scarfs; neckties; suits; cheongsams (chinese gowns); trouser straps; girdles.

Class 31: Trees; grains [cereals]; oats; plants; aloe vera plants; germ grains; malt germs.

Class 36: Real estate agency services; real estate management.

Class 43: Accommodation bureau services [hotels, boarding houses]; rental of temporary accommodation; boarding house services; hotel services; hotel reservations; holiday camp services [lodging]; motel services; food sculpting; providing campground facilities; tourist home services; rental of meeting rooms; retirement home services; day-nursery [crèche] services.

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

On 27/11/2017 the opponent submitted, in particular, the following evidence:

- Witness statement of Mr David Parkes, Company Secretary of the opponent, explaining the relevance of the other documents submitted and providing information on the number of visitors to the opponent´s UK website and ‘the approximate annual turnover generated under the BAE Brands, including in the UK, since 2012’, as well as the number of followers that the opponent has on different social media platforms.

- Printouts from the website www.baesystems.com of the opponent and from https://en.wikipedia.org explaining the history and providing current information on the opponent, BAE Systems plc, as well as on their products and services offered such as, inter alia, their ‘Hawk’, ‘Typhoon’, ‘Tornado GR4’, ‘Eurofighter Typhoon’ aircraft, ammunition, explosives and weapons such as guns and artillery. There are also articles obtained from the opponent´s website, some financial data from the ‘investor’ section of the opponent´s website, articles from the blog section of the opponent´s website, information on past events in which the opponent has participated, some product datasheets from the opponent´s website, as well as screenshots from the website WayBack Machine showing what the opponent´s website looked like in earlier years such as 2015 and 2016.

- Printouts from the opponent´s website www.baesystemseducationprogramme.com on the opponent´s educational programmes.

- Extracts of the Annual Report 2016 of the opponent, showing BAE Systems ranked third amongst the top ten global defence contractors (by revenue – based on 2015 numbers), as well as showing the opponent´s key products and services (inter alia, manufacture of major Typhoon assemblies and sub-assemblies, aircraft assembly, electronic warfare), and some financial data pertaining to the opponent´s Group.

- Copy of a 2015 report titled “The impact of BAE Systems on the UK Economy” published by Oxford Economics and commissioned by the opponent, showing the contribution BAE Systems has made to the UK economy through, inter alia, taxation, employment and exports.

- Press article published by The Independent on 21 August 2008 on BAE Systems´ 15-year deal with the UK Ministry of Defence to supply ammunition to British troops.

- Press article published by Reuters on 17/02/2013 on BAE Systems´ 5-year deal with mobile phone operator Vodaphone to work together on cyber security solutions.

- Printout of two blogposts on www.contracts.mod.uk (undated), one on the opponent´s new suite of cloud-based cyber security products, and another on the DPRTE (Defence Procurement, Research, Technology & Exportability) 2016 event (‘the UK's leading defence procurement event’ held on 16 March 2016) where the opponent was an exhibitor. There is also information on the 2013 edition of this event, where the opponent was also an exhibitor.

- Two screenshots of the results returned by the search engine Google for searches for ‘BAE systems’, ‘BAE 2001’ and ‘bae’ showing the opponent´s website in first place.

- Undated examples of brand campaigns, including an undated copy of a poster from an armed forces campaign titled ‘We protect those who protect us’ and images from an advertising campaign for hybrid buses. There is also a copy of the campaign dated 2017 on the partnership between the opponent and UK Sport to create innovation for athletes. All show the earlier figurative mark .

- Webinars accessible on the opponent´s website on ‘Incident Response’ (undated) and ‘GDPR as a business enabler’ (25/01/2017).

- Documentation relating to the opponent´s presence at the science, technology, engineering and maths fair Big Bang 2016 (Birmingham, UK - Early Careers).

- A copy of the opponent´s Graduate Programme Brochure dated 2013 and the brochure on opportunities for graduates and undergraduates dated 2017.

- A copy of the opponent´s ‘Good Recruitment Campaign’.

- Printout from the websites www.forcesrecruiting.com and www.ctp.org.uk on recruitment possibilities with the opponent.

- An article from UK Sport (www.uksport.gov.ukv - the UK´s high performance sports agency investing in Olympic and Paralympic sport) dated 02/01/2008 highlighting its partnership with BAE Systems.

- An article published on www.theengineer.co.uk on 20/09/2010 on the partnership between the opponent and UK Sport.

- Printout from www.m-is.com on BAE Systems attendance at DSEI in 2015 and 2017, details of the opponent´s attendance at the MRO Europe show in 2017, a photograph of the opponent´s stand at ITEC 2016 in London, as well as other photographs detailing events that took place outside the European Union (Canada, Qatar).

- Screenshots of BAE’s social media presence on LinkedIn, Facebook, Twitter, YouTube and Instagram.

- Screenshot from online UK store Key Shop advertising the bookazine ‘BAE Systems History of an Aerospace Giant’.

- A copy of a CMS law firm report on press coverage of the opponent dating from 2002 to 2012, some of which relates to the UK.

- Screenshots from Amazon UK showing publications on BAE Systems which include ‘BAE systems: a proud heritage in aviation’ written by Peter March and published in 2000; and ‘BAe Systems Hawk: Reference Guides for Modellers and Enthusiasts’ written by Andy Evans and published in November 2008.

- Screenshots from Amazon UK showing various BAE Systems merchandising products available, including replica planes and jewellery with plane figures.

- Screenshot from www.rankingthebrands.com on the ranking from 2008 to 2017 of BAE Systems, for example, position 35 in 2017 ranking of UK most valuable brands by Brand Finance, 41 in same ranking for 2016 and 38 in 2015, position 95 in 2015 UK RepTrak 100 ranking by Reputation Institute.

- Excerpt from Superbrands Annual 2015 on the BAE Systems brand and the BAE SYSTEMS INSPIRED WORK mark.

- Details of worldwide trade mark registrations of the opponent.

It is clear from the evidence that the figurative mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, conveying an image of sophisticated technology and reliability, as has been attested by diverse independent sources. Most of the documents provided show the earlier figurative mark . The brand rankings consistently show BAE Systems as a highly ranked brand from 2008 to 2017, further supported by the Superbrands Annual 2015 excerpt on the BAE Systems brand. The sales figures, marketing expenditure and advertising campaigns, as well as the contracts signed with the UK government, shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public. This is further demonstrated by the amount of investment in training and education, as well as sponsorship in sporting events and the development of new technologies with a positive impact on the environment.

On the basis of the above the Opposition Division concludes that the figurative mark has a strong reputation in the United Kingdom, which taking into account the significance of the United Kingdom in the European Union owing to its geographical size, its population and its economic weight, suffices to establish reputation in the European Union.

However, the evidence does not succeed in establishing that the trade mark has a reputation for all the goods and services on which the opposition is based and for which reputation has been claimed. The evidence mainly relates to aircraft, cyber security, ammunition, electronic warfare, explosives and weapons, for which it can be said that there is a strong reputation in the United Kingdom (evidenced especially by the press articles and other evidence on the importance of the opponent for national security and forces), whereas there is less reference to the remaining goods and services. Therefore, it is considered that the earlier the figurative mark has a strong reputation for firearms; ammunition and projectiles; explosives; bombs and mortars; weapons and weapon installations in Class 13, covered only by European Union trade mark registration No 12 340 121.

b) The signs

The signs have already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR. Here, as there, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, for whom the signs are most similar.

c) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51‑52.)

In the present case, the remaining contested goods and services are wallets, bags, cases, trunks, leather and leather items, sticks, reins for guiding children and umbrellas in Class 18; ordinary items of clothing in Class 25; plants and grains in Class 31; real estate services in Class 36 and accommodation, food and crèche services in Class 43. The earlier mark has a strong reputation among the relevant public for firearms; ammunition and projectiles; explosives; bombs and mortars; weapons and weapon installations in Class 13.

The opponent’s reputed goods are very specific products used in the areas of defence, security and warfare, which are aimed at professionals involved in these specific areas. The remaining contested goods and services, by contrast, are aimed at general consumers with essentially different needs, as they are non-specialist goods and services that aim to fulfil ordinary day-to-day needs. It is obvious that even assuming certain overlap of the different segments of the public, the opponent’s reputed goods remain of a very distinct nature from the contested sign’s goods and services; moreover, these goods and services rely on different marketing strategies and promotional tools, address their target groups in the corresponding specific way and do not, in any stage, coincide in their distribution channels.

Consequently, it is highly improbable to consider an association between the reputed mark and the applied for sign on the basis of the different established degrees of visual and aural similarities between them when the latter would be encountered in a sufficiently remote commercial field, that is to say, in a commercial area which, in the market reality, is not established as a typical ancillary sector or natural extension of the opponent’s product lines.

In the light of the above findings, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them. The signs would be even less similar for the non-English-speaking public who would thus be even less likely to make a link. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

For the sake of completeness, it has to be noted that the opposition would have failed also for the other earlier right on which it is based, namely . It may be deduced from the evidence above that in any case this other mark could not enjoy reputation for other goods than the ones already taken into account above. Furthermore, the earlier right containing the additional verbal elements ‘INSPIRED WORK’ is even more distant from the mark examined above and no link would have been established for those marks either.

NON‑REGISTERED MARK OR ANOTHER SIGN USED IN THE COURSE OF TRADE — ARTICLE 8(4) EUTMR

The opponent also based its opposition on United Kingdom non-registered trade marks, trade names and company names ‘BAE’ and ‘BAE SYSTEMS’ for the following goods and services:

Class 9: Computer hardware, computer firmware, computer software and computer programs; computer hardware, computer firmware, computer software and computer programs for military, defence, aerospace, aviation, engineering, transport, security, national security, cyber security and law enforcement purposes; computer hardware, computer firmware, computer software and computer programs for aircraft, aerial vehicles, land vehicles, amphibious vehicles, marine vehicles, ships, boats and submarines; interface apparatus and cards; computers; data processors; parallel processors; signal processors; data recording apparatus; electronic equipment and systems for interfacing weapons to on-board control systems of air, land and marine vehicles; control systems; apparatus for guidance, control, testing and operation of civil and military aircraft; operational analysis systems; apparatus for the guidance, control, testing and operation of weapons and weapon systems; computer software for use in the guidance, control, testing and operation of weapons and weapon systems: weapons systems, namely computer software and hardware for launching, controlling, guiding and detonating weapons; missile guidance systems; anti-aircraft systems, namely computer software and hardware for identifying, tracking and targeting enemy aircraft; command and control systems for battlefield force control; combat management systems, namely computer software and hardware for use in warfare for weapon control, troop command, planning, tactics and decision making purposes; artillery fire and control systems, namely computer software and hardware for firing, controlling, monitoring, managing and guiding weapons and projectiles; air defence systems, namely computer software and hardware for identifying, tracking and targeting hostile aircraft or air attacks and for reducing and nullifying hostile air threats; strategic command, control, communications and intelligence systems for land, sea, air and joint operation centres; naval command and control systems; stand-alone command tactical data systems; command support systems, namely computer software and hardware to enable personnel in charge of a military or emergency situation to communicate, improve situational awareness, and collaborate with other personnel in response to an incident.

Class 12: Aircraft; unmanned air vehicles; drones; land vehicles; armoured land vehicles; military land vehicles; parts and fittings for all the aforesaid goods; marine and submersible vehicles; ships.

Class 13: Firearms; ammunition and projectiles; explosives; bombs and mortars; weapons and weapon installations.

Class 41: Design, development and provision of training, education, workshops, seminars and courses for the military in relation to the use, operation, deployment and maintenance of land and armaments systems; CD-ROM and web-based interactive multimedia training, tabletop training, classroom presentations.

Class 42: Engineering services; engineering consultancy; research, design and development services; industrial analysis and research services; laboratory testing services; metrology and calibration of equipment; electromagnetic compatibility testing services for military and civilian equipment; tool design services; air, sea and land vehicle design, testing and certification services.

According to Article 8(4) EUTMR, upon opposition by the proprietor of a non‑registered trade mark or of another sign used in the course of trade of more than mere local significance, the trade mark applied for will not be registered where and to the extent that, pursuant to the Union legislation or the law of the Member State governing that sign:

(a) rights to that sign were acquired prior to the date of application for registration of the European Union trade mark, or the date of the priority claimed for the application for registration of the European Union trade mark;

(b) that sign confers on its proprietor the right to prohibit the use of a subsequent trade mark.

Therefore, the grounds of refusal of Article 8(4) EUTMR are subject to the following requirements:

 the earlier sign must have been used in the course of trade of more than local significance prior to the filing of the contested trade mark;

 pursuant to the law governing it, prior to the filing of the contested trade mark, the opponent acquired rights to the sign on which the opposition is based, including the right to prohibit the use of a subsequent trade mark;

 the conditions under which the use of a subsequent trade mark may be prohibited are fulfilled in respect of the contested trade mark.

These conditions are cumulative. Therefore, where a sign does not satisfy one of those conditions, the opposition based on a non‑registered trade mark or other signs used in the course of trade within the meaning of Article 8(4) EUTMR cannot succeed.

The Opposition Division will therefore first undertake an analysis of the rights under the applicable law, assuming that the earlier signs have been used in the course of trade of more than local significance prior to the filing of the contested trade mark. If the conditions regarding the rights under the applicable law are met, the Opposition Division will then proceed to examine the use of the earlier signs in the course of trade.

a) The right under the applicable law

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

According to Rule 19(2)(d) EUTMIR (in the version in force at the time when the adversarial part of the proceedings started), if the opposition is based on an earlier right within the meaning of Article 8(4) EUTMR, the opposing party must provide evidence of its acquisition, continued existence and scope of protection.

Therefore, the onus is on the opponent to submit all the information necessary for the decision, including identifying the applicable law and providing all the necessary information for its sound application. According to case-law, it is up to the opponent ‘… to provide OHIM not only with particulars showing that he satisfies the necessary conditions, in accordance with the national law of which he is seeking application … but also particulars establishing the content of that law’ (05/07/2011, C‑263/09 P, Elio Fiorucci, EU:C:2011:452, § 50). The evidence to be submitted must allow the Opposition Division to determine safely that a particular right is provided for under the law in question, as well as the conditions for acquisition of that right. The evidence must further clarify whether the holder of the right is entitled to prohibit the use of a subsequent trade mark, as well as the conditions under which the right may prevail and be enforced vis-à-vis a subsequent trade mark.

As regards national law, the opponent must cite the provisions of the applicable law on the conditions governing acquisition of rights and on the scope of protection of the right. The opponent must provide a reference to the relevant legal provision (Article number, and the number and title of the law) and the content (text) of the legal provision either as part of its submission or by highlighting it in a publication attached to the submission (e.g. excerpts from an official journal, a legal commentary or a court decision). The information on the applicable law must allow the Office to understand and apply the content of that law, the conditions for obtaining protection and the scope of this protection, and allow the applicant to exercise the right of defence.

Furthermore, the opponent must submit appropriate evidence of fulfilment of the conditions of acquisition and of the scope of protection of the right invoked, as well as evidence that the conditions of protection vis-à-vis the contested mark have actually been met. In particular, it must put forward a cogent line of argument as to why use of the contested mark would be successfully prevented under the applicable law.

Where the opponent relies on national case-law to prove its case, it must also provide the Office with the relevant case-law in sufficient detail and not merely by reference to a publication somewhere in the legal literature.

In the present case, the opponent only submitted a two-page extract taken from an English law textbook describing, in the most general terms, the foundation and nature of the English common law tort of passing off (but not the rights conferred on the proprietor of the earlier mark as a consequence), and the Special Eurobarometer Report on Europeans and their languages (the relevance of which to the present case is not evident and has not been clarified by the opponent). The opponent did not submit any reference to the relevant legal provision and/or jurisprudence establishing that a trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, it did not provide information on the legal protection granted to the type of trade sign invoked by the opponent, nor did it submit any information on the possible content of the rights invoked or the conditions to be fulfilled for the opponent to be able to prohibit the use of the contested trade mark under the laws in the United Kingdom. Crucially, there is nothing in either the opponent´s submissions nor in the annexes provided that allows the Opposition Division to conclude that, based on the English common law tort of passing off, the proprietor of an earlier right is entitled to prohibit use of a later trade mark.

Therefore, the opposition is not well founded under Article 8(4) 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Catherine MEDINA

Helen Louise MOSBACK

Sam GYLLING

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.