OPPOSITION No B 2 921 024

Ananda Sp.Z O.O., Ul.Marynarska 14, 02-674 Warszawa, Poland (opponent), represented by Chmura & Wspólnicy, ul. J.P. Woronicza 31/142, 02-640 Warszawa, Poland (professional representative)

a g a i n s t

Oxacell AG, Helene-Lange-Str. 12, 14469 Potsdam, Germany (applicant), represented by Beckord & Niedlich Patentanwälte Partg Mbb, Marktplatz 17, 83607 Holzkirchen, Germany (professional representative).

On 24/08/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 921 024 is partially upheld, namely for the following contested goods and services:

Class 5: Pharmaceuticals, medical and veterinary preparations; medicines for human and veterinary purposes; biological preparations for medical or veterinary purposes; balsamic preparations and lotions for medical purposes; capillary lotions (medicated -); medicinal hair growth preparations; tissues impregnated with pharmaceutical lotions; burns (preparations for the treatment of -); sanitary preparations for medical purposes; plasters, materials for dressings; dressings, medical; pre-filled syringes for medical purposes; disinfectants; preparations for destroying vermin; fungicides; stem cells for medical and veterinary purposes; biological tissue cultures for medical and veterinary purposes; surgical implants grown from stem cells [living tissues]; surgical implants comprised of living tissues; transplants [living tissues]; parts and fittings for all the aforesaid goods, included in this class; all aforementioned goods not for use in connection with cosmetics.

Class 44: Medical services of physicians, hospitals and health clinics; veterinary services; hygienic and beauty care for human beings or animals; stem cell storage; human tissue bank services; medical services relating to the removal, treatment and processing of stem cells; consultancy and information services relating to all of the aforementioned; all aforementioned services exclusively provided by physicians and other medical professionals.

2. European Union trade mark application No 16 381 113 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.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR should be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 381 113 for the word mark ‘Oxacell’, namely against all the goods and services in Classes 5 and 44. The opposition is based on European Union trade mark registration No 11 575 297 for the word mark ‘OXYCELL’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

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

Class 3: Cosmetics, beauty masks, cleansing milks, cosmetic bath preparations, cosmetic creams, lotions for cosmetic purposes, ointments for cosmetic purposes, medicated soaps, cosmetic preparations for slimming purposes, make-up; none of the aforesaid goods being for skincare, including products for the treatment, alleviation, prevention or masking of acne and similar skin conditions, soaps and toiletries.

Class 5: Dietetic foods adapted for medical purposes, appetite suppressants for medical purposes, dietetic beverages adapted for medical purposes, pharmaceutical preparations not for the treatment, alleviation, prevention or masking of acne and similar skin conditions, capsules for pharmaceutical purposes, medicinal herbs, herbal supplements, medicinal drinks, nutritional additives for medical purposes, herbal tea for medical purposes, dietetic substances adapted for medical use, ointments for medical purposes not for the treatment, alleviation, prevention or masking of acne and similar skin conditions, tinctures for medical purposes not for the treatment, alleviation, prevention or masking of acne and similar skin conditions; vitamin preparations, tonics (medicines), medicated food supplements, anti-asthmatic tea, preparations enriched with microelements for medical purposes, digestives for pharmaceutical purposes, extracts for medical purposes, decoctions for pharmaceutical purposes, herbal infusions, preparations for use as food supplements; none of the aforesaid goods being for skincare, including products for the treatment, alleviation, prevention or masking of acne and similar skin conditions.

Class 32: Beverages containing fruit juices, syrups for beverages.

Class 44: Aromatherapy, massage, beauty salons, beauty therapy, medical services provided by therapeutic salons and none of the aforesaid services relating to or provided in the fields of skincare such as the treatment, alleviation, prevention or masking of acne and similar skin conditions.

After a limitation requested by the applicant on 13/02/2018, the contested goods and services are the following:

Class 5: Pharmaceuticals, medical and veterinary preparations; medicines for human and veterinary purposes; biological preparations for medical or veterinary purposes; balsamic preparations and lotions for medical purposes; capillary lotions (medicated -); medicinal hair growth preparations; tissues impregnated with pharmaceutical lotions; burns (preparations for the treatment of -); sanitary preparations for medical purposes; plasters, materials for dressings; dressings, medical; pre-filled syringes for medical purposes; disinfectants; preparations for destroying vermin; fungicides, herbicides; stem cells for medical and veterinary purposes; biological tissue cultures for medical and veterinary purposes; surgical implants grown from stem cells [living tissues]; surgical implants comprised of living tissues; transplants [living tissues]; parts and fittings for all the aforesaid goods, included in this class; all aforementioned goods not for use in connection with cosmetics.

Class 44: Medical services of physicians, hospitals and health clinics; veterinary services; hygienic and beauty care for human beings or animals; stem cell storage; human tissue bank services; medical services relating to the removal, treatment and processing of stem cells; rental and leasing of objects in connection with the providing of the aforesaid services, included in this class; consultancy and information services relating to all of the aforementioned; all aforementioned services exclusively provided by physicians and other medical professionals.

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 5

The contested pharmaceuticals, medical and veterinary preparations; medicines for human and veterinary purposes; biological preparations for medical or veterinary purposes; balsamic preparations and lotions for medical purposes (e.g. syrups, eye lotion); medicinal hair growth preparations; pre-filled syringes for medical purposes; stem cells for medical and veterinary purposes; biological tissue cultures for medical and veterinary purposes; surgical implants grown from stem cells [living tissues]; surgical implants comprised of living tissues; transplants [living tissues]; all aforementioned goods not for use in connection with cosmetics are included in the broad category of, or overlap with, the opponent’s pharmaceutical preparations not for the treatment, alleviation, prevention or masking of acne and similar skin conditions (none of the aforesaid goods being for skincare, including products for the treatment, alleviation, prevention or masking of acne and similar skin conditions). Therefore, they are identical.

The contested sanitary preparations for medical purposes; all aforementioned goods not for use in connection with cosmetics are highly similar to the opponent’s pharmaceutical preparations not for the treatment, alleviation, prevention or masking of acne and similar skin conditions (none of the aforesaid goods being for skincare, including products for the treatment, alleviation, prevention or masking of acne and similar skin conditions). Sanitary preparations are used to protect and promote health by providing a clean environment and stopping the spread of harmful agents such as bacteria, while pharmaceutical preparations are chemical substances intended for human or veterinary use that serve medical purposes. Consequently, these goods have the same purpose, insofar as both the contested and the opponent’s goods are intended to protect health. These goods also have the same producers and end users and they can be found in the same sales points and outlets, such as pharmacies and drug stores.

The contested preparations for destroying vermin; all aforementioned goods not for use in connection with cosmetics have points in common with the opponent’s pharmaceutical preparations not for the treatment, alleviation, prevention or masking of acne and similar skin conditions (none of the aforesaid goods being for skincare, including products for the treatment, alleviation, prevention or masking of acne and similar skin conditions). Bearing in mind that the word ‘vermin’ may refer, inter alia, to animal species representing a potential risk or nuisance to human health – for example, a parasitic species or a species that may be the source, by its presence or as a result of contact, of various human diseases – it is possible that some preparations for destroying vermin may be used to prevent the risks posed to human health by the species whose elimination is sought. In this sense, the use of those preparations may be complementary to the use of pharmaceutical preparations for treating ailments caused, directly or indirectly, by the presence of those animal species or contact with them. Moreover, some of those preparations, in particular some insecticides, may be sold in pharmacies. Taking into account that the contested and the opponent’s goods can have the same purpose and distribution channels and that they are complementary, they are considered similar.

The contested disinfectants; all aforementioned goods not for use in connection with cosmetics have points in common with the opponent’s pharmaceutical preparations not for the treatment, alleviation, prevention or masking of acne and similar skin conditions (none of the aforesaid goods being for skincare, including products for the treatment, alleviation, prevention or masking of acne and similar skin conditions). Disinfectants are agents whose purpose is to destroy or inhibit the activity of microorganisms that cause disease; they are ultimately related to protecting human health. Therefore, they are connected to pharmaceutical preparations to the extent that these are all products whose general purpose is to protect human health. Furthermore, the goods under comparison have the same distribution channels, target the same public and may originate from the same providers. Therefore, they are similar.

The contested capillary lotions (medicated -) (which are applied to the scalp); tissues impregnated with pharmaceutical lotions; burns (preparations for the treatment of -); plasters, materials for dressings; dressings, medical; all aforementioned goods not for use in connection with cosmetics are essentially products (pharmaceutical preparations, plasters and dressing materials) used for treating, disinfecting, cleaning and protecting wounds, burns or other skin conditions. The opponent’s pharmaceutical preparations not for the treatment, alleviation, prevention or masking of acne and similar skin conditions (none of the aforesaid goods being for skincare, including products for the treatment, alleviation, prevention or masking of acne and similar skin conditions) are pharmaceutical preparations that are not for treating the skin. These goods, however, have the same general purpose of treating human health problems. In this sense, they are sold in the same outlets and target the same public. Therefore, they are similar to at least a low degree.

The contested fungicides; all aforementioned goods not for use in connection with cosmetics are biocidal chemical compounds or biological organisms used to kill fungi or fungal spores. A number of preparations for treating fungus are used in human healthcare (e.g. to treat nails); therefore, the contested goods are considered similar to a low degree to the opponent’s pharmaceutical preparations not for the treatment, alleviation, prevention or masking of acne and similar skin conditions (none of the aforesaid goods being for skincare, including products for the treatment, alleviation, prevention or masking of acne and similar skin conditions), since these goods have the same medical or therapeutic purpose, can have the same distribution channels and are complementary.

The contested parts and fittings for all the aforesaid goods, included in this class (pharmaceuticals, medical and veterinary preparations; medicines for human and veterinary purposes; biological preparations for medical or veterinary purposes; balsamic preparations and lotions for medical purposes; capillary lotions (medicated -); medicinal hair growth preparations; tissues impregnated with pharmaceutical lotions; burns (preparations for the treatment of -); sanitary preparations for medical purposes; plasters, materials for dressings; dressings, medical; pre-filled syringes for medical purposes; disinfectants; preparations for destroying vermin; fungicides; stem cells for medical and veterinary purposes; biological tissue cultures for medical and veterinary purposes; surgical implants grown from stem cells [living tissues]; surgical implants comprised of living tissues; transplants [living tissues]); all aforementioned goods not for use in connection with cosmetics must be interpreted in conjunction with each of the goods to which these parts and fittings belong. First, account must be taken of the fact that, in general, parts and fittings refer to the pieces, sections or elements of certain goods that, when put together, form the goods themselves. It is unlikely, however, that the relevant goods, due to their specific nature, would contain parts and fittings in the sense mentioned above. For instance, pharmaceutical preparations essentially consist of the mixture of a variety of chemical substances that cannot be separated into different parts. It appears reasonable to assume that the only division of such products would be into the doses that can be taken.

As regards plasters and materials for dressings, they do not have parts but rather are divided into different units. In the case of pre-filled syringes for medical purposes, although they have different parts, such as the syringe itself, they belong to a different class in the Nice Classification and therefore they are beyond the scope of protection of Class 5, in which the contested goods are placed. It follows that the parts and fittings of the abovementioned contested goods are doses or components that ultimately share the characteristics of the product as a whole. Therefore, the findings for each of the goods already compared above as regards their identity or similarity to the opponent’s goods are applicable to their parts and fittings, provided that they are included in this class.

The contested herbicides; parts and fittings for all the aforesaid goods, included in this class; all aforementioned goods not for use in connection with cosmetics are used to destroy unwanted vegetation and are intended primarily for agricultural use, whereas the opponent’s goods are essentially pharmaceutical preparations and dietetic goods in Class 5 intended for healthcare; cosmetics and soaps in Class 3; beverages in Class 32, which are common articles of consumption; and, finally, medical and beauty services in Class 44 intended for healthcare and beautifying. The natures of the goods and services under comparison are different; they satisfy different needs and they usually have different methods of use. Furthermore, they are not substitutes for or in competition with one another. The relevant consumer will not regard these goods and services as originating from the same undertaking. Therefore, the contested goods are dissimilar to all the opponent’s goods and services.

Contested services in Class 44

The contested medical services of physicians, hospitals and health clinics (all aforementioned services exclusively provided by physicians and other medical professionals) include, as a broader category, the opponent’s medical services provided by therapeutic salons and none of the aforesaid services relating to or provided in the fields of skincare such as the treatment, alleviation, prevention or masking of acne and similar skin conditions. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested hygienic and beauty care for human beings or animals; all aforementioned services exclusively provided by physicians and other medical professionals overlap with the opponent’s beauty salons, none of the aforesaid services relating to or provided in the fields of skincare such as the treatment, alleviation, prevention or masking of acne and similar skin conditions, insofar as they both could be hygienic and beauty care services for humans or animals provided in beauty salons by physicians and other medical professionals, but are not related to skincare treatment. Therefore, these services are considered identical.

The contested medical services relating to the removal, treatment and processing of stem cells; stem cell storage; human tissue bank services; all aforementioned services exclusively provided by physicians and other medical professionals and the opponent’s medical services provided by therapeutic salons and none of the aforesaid services relating to or provided in the fields of skincare such as the treatment, alleviation, prevention or masking of acne and similar skin conditions are similar. To determine the scope of protection of the earlier mark, further interpretation of the opponent’s abovementioned services is necessary. Therapeutic treatment is designed to treat an illness or to improve a person’s health, rather than to prevent an illness (information extracted from Collins Dictionary on 26/07/2018 at https://www.collinsdictionary.com/). Therefore, a therapeutic salon should be interpreted as a salon where medical therapeutic treatments are provided. In conclusion, the services under comparison have the same nature (as they are all healthcare services) and general purpose (i.e. to maintain, preserve and restore human health). They also have the same relevant public. A link may also be established between the purpose of all the services, since the removal, treatment, processing and storage of stems cells and human tissue are intended for treating the medical conditions of patients. A close correlation exists between the services under comparison, as a medical practitioner could advise and recommend the preservation of human biological material. Furthermore, it would not be uncommon for a certain therapeutic treatment to be preceded by the preservation of human cells and tissues. Taking into account all of the above, the services under comparison are considered similar.

The contested veterinary services (all aforementioned services exclusively provided by physicians and other medical professionals) are similar to the opponent’s medical services provided by therapeutic salons and none of the aforesaid services relating to or provided in the fields of skincare such as the treatment, alleviation, prevention or masking of acne and similar skin conditions. Accordingly, they have the same nature (medical) and purpose (treating certain medical conditions). Although the opponent’s services target humans, the services under comparison nevertheless maintain a connection stemming from the fact that both relate to medical science and its application to the diagnosis and curing of diseases; therefore, the services may involve the treatment of identical or similar medical conditions.

The contested consultancy and information services relating to all of the aforementioned (medical services of physicians, hospitals and health clinics; veterinary services; hygienic and beauty care for human beings or animals; medical services relating to the removal, treatment and processing of stem cells; stem cell storage; human tissue bank services); all aforementioned services exclusively provided by physicians and other medical professionals must be interpreted in conjunction with each of the abovementioned services, as they are inherent to the previously compared services. Therefore, the findings for each of the previously compared services as regards their identity or similarity to the opponent’s services also apply to the contested consultancy and information services (restricted as indicated).

The contested rental and leasing of objects in connection with the providing of the aforesaid services, included in this class (i.e. medical services of physicians, hospitals and health clinics; veterinary services; hygienic and beauty care for human beings or animals; stem cell storage; human tissue bank services; medical services relating to the removal, treatment and processing of stem cells); consultancy and information services relating to all of the aforementioned; all aforementioned services exclusively provided by physicians and other medical professionals involve the rental and leasing of specialised equipment in the relevant fields and consultancy and information services thereof. Although, the specification states that the contested services are provided exclusively by medical practitioners, it is noted that, in the market reality, rental and leasing services are not usually rendered by the providers of services such as medical or veterinary, hygienic and beauty care services in Class 44. Even when this equipment is leased to a company providing beauty care services, this fact alone is not sufficient to result in a finding of similarity between the services, as the public would not expect equipment to be leased out by the same company that offers beauty care services. The services under comparison do not have the same nature, purpose, method of use or target public. The contested services are also not similar to the opponent’s goods in Classes 3, 5 and 32, which, in general, are cosmetics, pharmaceutical and dietetic goods and beverages, since they have nothing in common. They serve different purposes and are not interchangeable or in competition. Their distribution channels, methods of use, natures and producers/providers are also distinct. Therefore, the contested services are dissimilar to all of the opponent’s goods and services.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to various degrees are directed at the public at large and at business customers with specific professional knowledge or expertise in the pharmaceutical and medical fields. Therefore, the applicant’s assertion that the relevant public of the applicant’s goods is only the professional medical public, while the relevant public of the opponent’s goods is the general public, cannot succeed.

It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T‑331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T‑288/08, Zydus, EU:T:2012:124, § 36). As correctly stated by the applicant, medical professionals have a high degree of attention when prescribing medicines. In addition, non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. This applies to all healthcare services.

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

3. The signs

OXYCELL	Oxacell
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The Court has held that, although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words known to them (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57).

The earlier mark, ‘OXYCELL’, and the contested mark, ‘Oxacell’, are both word marks. The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether word marks are depicted in lower or upper case letters.

The component ‘OXY’ of the earlier sign is used in its combining form to indicate ‘containing or using oxygen’ (information extracted from Collins Dictionary at https://www.collinsdictionary.com/dictionary/english/oxy) and it will be associated with the word ‘oxygen’ in those countries of the relevant territory where English is understood, as well by some professionals in the medical field. Contrary to the applicant’s arguments, the prefix and component ‘OXA’ of the contested mark also has a meaning for the same part of the public as that mentioned above, since it indicates that a chemical compound contains oxygen (information extracted from Collins Dictionary on 26/07/2018 at https://www.collinsdictionary.com/). Therefore, both the components ‘OXY’ and ‘Oxa’ can be clearly linked with the contested and opponent’s relevant goods and services (i.e. pharmaceuticals, other preparations with health implications and services related to health and well-being), since they allude to the fact that the relevant goods/services contain oxygen, serve to boost the oxygen in the body or affect the oxygen in an organism in some way. Therefore, the components ‘OXY’ and ‘OXA’ have a lower than average degree of distinctiveness in respect of the relevant goods and services.

The component ‘CELL’, present in both signs, also has a meaning for the public in those countries where English is understood and for the professional public in the field of medicine owing to the Latin origin of the word ‘cell’, which refers to the fundamental, usually microscopic, structural and functional unit of all living organisms. In view of this, the degree of distinctiveness of the component ‘CELL’ is also considered lower than average, since it alludes to the fact that the goods and services in question are intended to act on cells (e.g. either to improve conditions, in the case of goods such as pharmaceuticals, or to destroy, in the case of goods such as vermin-destroying preparations).

For the part of the public that will not perceive any meaning in the components ‘OXY’, ‘OXA’ and ‘CELL’, these components are considered distinctive.

However, because the elements ‘OXY’ and ‘OXA’ convey the same general concept (being generally related to oxygen) and the signs have the concept of ‘Cell’ in common, the degree of distinctiveness of the corresponding components is the same, irrespective of whether their meanings will be perceived by the different parts of the public, and therefore none of these elements has an impact on the comparison.

Visually and aurally, the signs coincide in six out of seven letters, namely ‘OX*CELL’. They differ in their third letters, ‘Y’ in the earlier mark versus ‘A’ in the contested sign.

Therefore, the signs are visually and aurally highly similar.

Conceptually, for the part of the relevant public that neither of the signs has a meaning; therefore, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.

Nonetheless, for the part of the relevant public for which the signs have a meaning, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Therefore, taking into account the fact that the signs have the general concept of ‘oxygen’ (with slight variations, as indicated above) and the concept of ‘cell’ in common, they are considered conceptually highly similar for that part of the public.

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

4. Distinctiveness of the earlier mark

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

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

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark must be seen as lower than average for the goods and services in question, and/or for a part of the public in the relevant territory, namely the English-speaking public and the professional public in the medical field. The mark has a normal degree of distinctiveness for the remaining part of the public in the relevant territory, where it has no meaning in relation to any of the goods and services in question.

5. Global assessment, other arguments and conclusion

In the present case, the goods and services are partly identical, partly similar (to different degrees) and partly dissimilar. The relevant goods and services target both the general and a professional public, whose degree of attention varies from average to high. The earlier mark has a lower than average degree of distinctiveness in relation to the relevant goods and services for a part of the public and an average degree of distinctiveness in respect of another part of the public. The signs are visually, aurally and conceptually (for part of the relevant public) highly similar.

Although the earlier sign has a lower than average degree of distinctiveness (for part of the public), this cannot prevent the opposition against the relevant goods and services from succeeding. While the distinctive character of the earlier mark must be taken into account when assessing the likelihood of confusion (29/09/1998, C‑39/97, Canon, EU:C:1998:442), this is only one of a number of elements entering into that assessment and it is established case-law that, even in a case involving an earlier mark with a weak distinctive character, there may be a likelihood of confusion on account, in particular, of a similarity between the signs and between the goods or services covered (16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102).

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).

Account must be also taken of the fact that likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Furthermore, 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 high degree of similarity between the signs offsets any lesser degree of similarity found between some of the goods.

Taking into account the similarities between the signs, as explained above, it is concluded that the relevant public would reasonably believe that the goods and services found to be identical or similar, including to a low degree, originated from the same undertaking or economically linked undertakings, even when the degree of attention is high and the earlier mark’s degree of distinctiveness is below average.

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 various degrees (including to a low degree) to those of the earlier trade mark.

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.

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

Mads Bjørn Georg JENSEN

María del Carmen COBOS PALOMO

Irina SOTIROVA

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.