OPPOSITION No B 2 941 626

O2 Worldwide Limited, 20 Air Street, W1B 5AN London, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, CB25 9PD Cambridge, United Kingdom (professional representative)

a g a i n s t

Wipro Limited, Doddakannelli Sarjapur Road, 560 035 Bangalore, India (applicant) represented by Finnegan Europe LLP, 1 London Bridge, SE1 9BG London, United Kingdom (professional representative).

On 29/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 941 626 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 506 321 (figurative mark: ), namely all the goods and services in Classes 9 and 42. The opposition is based on European Union Trade mark registration No 13 157 714 (figurative mark: ). 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.

a) The goods and services

The goods and services on which the opposition is based are, inter-alia, the following:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus; abacuses; accounting machines; accumulators, electric; acid hydrometers; acidimeters for batteries; acoustic conduits; acoustic couplers; actinometers; adding machines; aerials; aerometers; agendas (electronic -); air analysis apparatus; alarm bells, electric; alarms; alcoholmeters; alidades; altimeters; ammeters; amplifiers; amplifying tubes; anemometers; animated cartoons; anode batteries; anodes; answering machines; anti-glare glasses; anti-glare visors; anti-interference devices [electricity]; anti-theft warning apparatus; anticathodes; apertometers [optics]; armatures [electricity]; asbestos clothing for protection against fire; asbestos gloves for protection against accidents; asbestos screens for firemen; astronomy (apparatus and instruments for -); audiovisual teaching apparatus; automated teller machines [atm]; azimuth instruments; balances [steelyards]; balancing apparatus; bar code readers; barometers; batteries, electric; batteries, electric, for vehicles; batteries for lighting; battery boxes; battery chargers; battery jars; beacons, luminous; bells [warning devices]; betatrons; binoculars; blinkers [signalling lights]; blueprint apparatus; boiler control instruments; branch boxes [electricity]; breathing apparatus, except for artificial respiration; breathing apparatus for underwater swimming; buzzers; cabinets for loudspeakers; cables, electric; calculating disks; calculating machines; calibrating rings; calipers; camcorders; cameras [photography]; capacitors; capillary tubes; carpenters' rules; carriers for dark plates [photography]; cases especially made for photographic apparatus and instruments; cases fitted with dissecting instruments [microscopy]; cash registers; cassette players; cathodes; cathodic anti-corrosion apparatus; cell phone straps; centering apparatus for photographic transparencies; central processing units [processors]; chargers for electric batteries; chemistry apparatus and instruments; chips [integrated circuits]; choking coils [impedance]; chromatography apparatus for laboratory use; chronographs [time recording apparatus]; cinematographic cameras; cinematographic film, exposed; circuit breakers; circuit closers; cleaning apparatus for phonograph records; clinometers; clothing especially made for laboratories; clothing for protection against accidents, irradiation and fire; clothing for protection against fire; coaxial cables; coils, electric; coin-operated apparatus (mechanisms for -); coin-operated mechanisms for television sets; collectors, electric; commutation (electric apparatus for -); commutators; compact disc players; compact discs [audio-video]; compact discs [read-only memory]; comparators; compasses (directional -); compasses [measuring instruments]; computer game programs; computer keyboards; computer memory devices; computer operating programs, recorded; computer peripheral devices; computer programmes [programs], recorded; computer programs [downloadable software]; computer software, recorded; computers; conductors, electric; connections for electric lines; connectors [electricity]; contact lenses; contacts, electric; containers for contact lenses; containers for microscope slides; control panels [electricity]; converters, electric; copper wire, insulated; correcting lenses [optics]; cosmographic instruments; counter-operated apparatus (mechanisms for -); couplers [data processing equipment]; couplings, electric; covers for electric outlets; crash test dummies; cupels [laboratory]; current rectifiers; cyclotrons; darkroom lamps [photography]; darkrooms [photography]; data processing apparatus; decompression chambers; demagnetizing apparatus for magnetic tapes; densimeters; densitometers; detectors; diagnostic apparatus, not for medical purposes; diaphragms [acoustics]; diaphragms for scientific apparatus; diaphragms [photography]; dictating machines; diffraction apparatus [microscopy]; discharge tubes, electric, other than for lighting; disk drives for computers; disks, magnetic; distance measuring apparatus; distance recording apparatus; distillation apparatus for scientific purposes; distribution boards [electricity]; distribution boxes [electricity]; distribution consoles [electricity]; divers' masks; diving suits; dna chips; dog whistles; dosimeters; downloadable image files; downloadable music files; downloadable ring tones for mobile phones; drainers for use in photography; dressmakers' measures; drying apparatus for photographic prints; drying racks [photography]; ducts [electricity]; dvd players; dynamometers; ear plugs for divers; editing appliances for cinematographic films; egg-candlers; electric door bells; electric installations for the remote control of industrial operations; electric loss indicators; electricity conduits; electricity mains (materials for -) [wires, cables]; electrified fences; electrified rails for mounting spot lights; electro-dynamic apparatus for the remote control of railway points; electro-dynamic apparatus for the remote control of signals; electrolysers; electromagnetic coils; electronic notice boards; electronic pens [visual display units]; electronic pocket translators; electronic publications, downloadable; electronic tags for goods; encoded identification bracelets, magnetic; encoded magnetic cards; enlarging apparatus [photography]; epidiascopes; ergometers; exposure meters [light meters]; extinguishers; eyeglass cases; eyeglass chains; eyeglass cords; eyeglass frames; eyepieces; eyepieces (instruments containing -); facsimile machines; false coin detectors; fermentation (apparatus for -) [laboratory apparatus]; fibre [fiber (am)] optic cables; film cutting apparatus; films, exposed; filters for respiratory masks; filters for ultraviolet rays, for photography; filters [photography]; fire alarms; fire beaters; fire blankets; fire boats; fire engines; fire escapes; fire hose; fire hose nozzles; flash-bulbs [photography]; flashlights [photography]; floppy disks; fluorescent screens; fog signals, non-explosive; food analysis apparatus; frames for photographic transparencies; franking (apparatus to check -); frequency meters; furniture especially made for laboratories; fuse wire; fuses; galena crystals [detectors]; galvanic batteries; galvanic cells; galvanometers; garments for protection against fire; gas testing instruments; gasometers [measuring instruments]; gauges; glass covered with an electrical conductor; glazing apparatus for photographic prints; global positioning system [gps] apparatus; gloves for divers; gloves for protection against accidents; gloves for protection against x-rays for industrial purposes; goggles for sports; grids for batteries; hands free kits for phones; head cleaning tapes [recording]; headphones; heat regulating apparatus; heliographic apparatus; hemline markers; high-frequency apparatus; holders for electric coils; holograms; horns for loudspeakers; hourglasses; hydrometers; hygrometers; identification sheaths for electric wires; identification threads for electric wires; identity cards, magnetic; igniting apparatus, electric, for igniting at a distance; incubators for bacteria culture; inductors [electricity]; integrated circuit cards [smart cards]; integrated circuits; intercommunication apparatus; interfaces for computers; inverters [electricity]; invoicing machines; ionization apparatus not for the treatment of air or water; jigs [measuring instruments]; juke boxes for computers; juke boxes, musical; junction boxes [electricity]; junction sleeves for electric cables; knee-pads for workers; laboratory centrifuges; laboratory trays; lactodensimeters; lactometers; laptop computers; lasers, not for medical purposes; leather (appliances for measuring the thickness of -); lens hoods; lenses for astrophotography; letter scales; levelling instruments; levels [instruments for determining the horizontal]; life belts; life buoys; life jackets; life nets; life saving apparatus and equipment; life-saving rafts; light conducting filaments [optical fibers fibres]; light dimmers [regulators], electric; light-emitting diodes [led]; light-emitting electronic pointers; lighting ballasts; lightning arresters; limiters [electricity]; locks, electric; logs [measuring instruments]; loudspeakers; magic lanterns; magnetic data media; magnetic encoders; magnetic tape units for computers; magnetic tapes; magnetic wires; magnets; magnets (decorative -); magnifying glasses [optics]; manometers; marine compasses; marine depth finders; marking buoys; marking gauges [joinery]; masts for wireless aerials; material testing instruments and machines; mathematical instruments; measures; measuring apparatus; measuring devices, electric; measuring glassware; measuring instruments; measuring spoons; mechanical signs; megaphones; mercury levels; metal detectors for industrial or military purposes; meteorological balloons; meteorological instruments; meters; metronomes; micrometer screws for optical instruments; micrometers; microphones; microprocessors; microscopes; microtomes; milage recorders for vehicles; mirrors for inspecting work; mirrors [optics]; modems; money counting and sorting machines; monitoring apparatus, electric; monitors [computer hardware]; monitors [computer programs]; motor fire engines; mouse [data processing equipment]; mouse pads; nautical apparatus and instruments; naval signalling apparatus; navigation apparatus for vehicles [on-board computers]; navigational instruments; neon signs; nets for protection against accidents; nose clips for divers and swimmers; notebook computers; objectives [lenses] optics; observation instruments; octants; ohmmeters; optical apparatus and instruments; optical character readers; optical condensers; optical data media; optical discs; optical glass; optical goods; optical lamps; optical lenses; oscillographs; ovens for laboratory use; oxygen transvasing apparatus; ozonisers [ozonators]; parking meters; particle accelerators; pedometers; peepholes [magnifying lenses] for doors; periscopes; personal stereos; petrol gauges; phonograph records; photocopiers [photographic, electrostatic, thermic]; photometers; phototelegraphy apparatus; photovoltaic cells; physics (apparatus and instruments for -); pince-nez; pipettes; plane tables [surveying instruments]; planimeters; plates for batteries; plotters; plugs, sockets and other contacts [electric connections]; plumb bobs; plumb lines; pocket calculators; polarimeters; portable media players; portable telephones; precision balances; precision measuring apparatus; pressure indicator plugs for valves; pressure indicators; pressure measuring apparatus; printed circuit boards; printed circuits; prisms [optics]; probes for scientific purposes; projection apparatus; projection screens; protection devices against x-rays, not for medical purposes; protection devices for personal use against accidents; protective helmets; protective helmets for sports; protective masks; protective suits for aviators; protractors [measuring instruments]; punched card machines for offices; push buttons for bells; pyrometers; quantity indicators; radar apparatus; radio pagers; radiological apparatus for industrial purposes; radiology screens for industrial purposes; radios; radiotelegraphy sets; radiotelephony sets; railway traffic safety appliances; readers [data processing equipment]; receivers (audio-- and video- -); record player needles (apparatus for changing -); record players; reducers [electricity]; reflecting discs for wear, for the prevention of traffic accidents; refractometers; refractors; regulating apparatus, electric; relays, electric; remote control apparatus; resistances, electric; respirators for filtering air; respirators, other than for artificial respiration; resuscitation mannequins [teaching apparatus]; retorts; retorts' stands; revolution counters; rheostats; riding helmets; road signs, luminous or mechanical; rods for water diviners; rods [surveying instruments]; rulers [measuring instruments]; rules [measuring instruments]; saccharometers; safety restraints, other than for vehicle seats and sports equipment; safety tarpaulins; salinometers; satellite navigational apparatus; satellites for scientific purposes; scales; scanners [data processing equipment]; screens for photoengraving; screens [photography]; screw-tapping gauges; semi-conductors; sextants; sheaths for electric cables; shoes for protection against accidents, irradiation and fire; shutter releases [photography]; shutters [photography]; sighting telescopes for firearms; signal bells; signal lanterns; signalling buoys; signalling panels, luminous or mechanical; signalling whistles; signals, luminous or mechanical; signs, luminous; simulators for the steering and control of vehicles; sirens; skins (apparatus for measuring the thickness of -); slide calipers; slide projectors; slide-rules; slides [photography]; smoke detectors; socks, electrically heated; solar batteries; solderers' helmets; solenoid valves [electromagnetic switches]; sonars; sound alarms; sound locating instruments; sound recording apparatus; sound recording carriers; sound recording strips; sound reproduction apparatus; sound transmitting apparatus; sounding apparatus and machines; sounding leads; sounding lines; spark-guards; speaking tubes; spectacle cases; spectacle frames; spectacle glasses; spectacles [optics]; spectrograph apparatus; spectroscopes; speed checking apparatus for vehicles; speed indicators; speed measuring apparatus [photography]; speed regulators for record players; spherometers; spirit levels; spools [photography]; sprinkler systems for fire protection; stage lighting regulators; stands for photographic apparatus; starter cables for motors; steering apparatus, automatic, for vehicles; step-up transformers; stereoscopes; stereoscopic apparatus; stills for laboratory experiments; styli for record players; sulphitometers; sunglasses; surveying apparatus and instruments; surveying chains; surveying instruments; surveyors' levels; switchboards; switchboxes [electricity]; switches, electric; tachometers; tape recorders; taximeters; teaching apparatus; teeth protectors; telegraph wires; telegraphs [apparatus]; telemeters; telephone apparatus; telephone receivers; telephone transmitters; telephone wires; teleprompters; telerupters; telescopes; television apparatus; temperature indicators; terminals [electricity]; test tubes; testing apparatus not for medical purposes; theft prevention installations, electric; theodolites; thermionic tubes; thermometers, not for medical purposes; thermostats; thermostats for vehicles; ticket dispensers; time clocks [time recording devices]; time recording apparatus; time switches, automatic; tires (automatic indicators of low pressure in vehicle -); tone arms for record players; totalizators; traffic-light apparatus [signalling devices]; transformers [electricity]; transistors [electronic]; transmitters of electronic signals; transmitters [telecommunication]; transmitting sets [telecommunication]; transponders; triodes; tripods for cameras; urinometers; usb flash drives; vacuum gauges; vacuum tubes [radio]; variometers; vehicle breakdown warning triangles; vehicle radios; verniers; vests (am) bullet-proof -; video cassettes; video game cartridges; video recorders; video screens; video telephones; videotapes; viewfinders, photographic; viscosimeters; voltage regulators for vehicles; voltage surge protectors; voltmeters; voting machines; wafers [silicon slices]; waling glasses; walkie-talkies; washing trays [photography]; water level indicators; wavemeters; weighbridges; weighing apparatus and instruments; weighing machines; weights; whistle alarms; wind socks for indicating wind direction; wire connectors [electricity]; wires, electric; word processors; workmen's protective face-shields; wrist rests for use with computers; X-ray apparatus not for medical purposes; X-ray films, exposed; X-ray photographs, other than for medical purposes; X-ray tubes not for medical purposes; X-rays producing apparatus and installations, not for medical purposes; apparatus for the transmission of sound and image; telecommunications apparatus; mobile telecommunication apparatus; mobile telecommunications handsets; computer hardware; computer application software; apps; computer software downloadable from the Internet; recorded computer software; software applications; mobile software applications, downloadable applications for multimedia devices; computer games; computer game software; computer games programs; PDAs (Personal Digital Assistants); pocket PCs; mobile telephones; telecommunications network apparatus; drivers software for telecommunications networks and for telecommunications apparatus; protective clothing; televisions; global positioning system [GPS] apparatus; satellite navigation devices; computer software recorded onto CD Rom; SD-Cards (secure digital cards); glasses; protective glasses and cases therefor; cameras; camera lenses; MP3 players; audio tapes, audio cassettes; audio discs; audio-video tapes; audio-video cassettes; audio-video discs; video tapes; video discs; CDs, DVDs; downloadable electronic publications; mouse mats; mobile telephone covers; mobile telephone cases; magnetic cards; encoded cards; mobile phone application software; software for telecommunication; software for the processing of financial transactions; parts and fittings for all the aforesaid goods.

Class 42: Scientific and technological services and research and design relating

thereto; industrial analysis and research services; design and development of computer hardware and software; Analysis for oil-field exploitation; Architectural consultation; Architecture; Authenticating works of art; Bacteriological research; Biological research; Calibration [measuring]; Chemical analysis; Chemical research; Chemistry services; Cloud seeding; Computer programming; Computer rental; Computer software consultancy; Computer software design; Computer software (Updating of -); Computer system analysis; Computer system design; Computer virus protection services; Construction drafting; Consultancy in the design and development of computer hardware; Consultancy in the field of energy-saving; Conversion of data or documents from physical to electronic media; Cosmetic research; Creating and maintaining web sites for others; Data conversion of computer programs and data [not physical conversion]; Design of interior decor; Digitization of documents [scanning]; Dress designing; Duplication of computer programs; Engineering; Evaluation of wool (Quality -); Geological prospecting; Geological research; Geological surveys; Graphic arts designing; Handwriting analysis [graphology]; Hosting computer sites [web sites]; Industrial design; Installation of computer software; Laboratory (Scientific -) services; Land surveying; Maintenance of computer software; Material testing; Mechanical research; Monitoring of computer systems by remote access; Oil-field surveys; Oil prospecting; Oil-well testing; Packaging design; Physics [research]; Project studies (Technical -); Providing search engines for the internet; Provision of scientific information, advice and consultancy in relation to carbon offsetting; Quality control; Recovery of computer data; Rental of computer software; Rental of web servers; Research and development for others; Research in the field of environmental protection; Styling [industrial design]; Surveying; Technical research; Textile testing; Underwater exploration; Urban planning; Valuation of standing timber (Quality -); Vehicle roadworthiness testing; Water analysis; Weather forecasting; IT services; computer programming services; services of a programmer; recovery of computer data; consultancy in the field of computer hardware; computer programming; duplication of computer programs; computer rental; computer software design; installation of computer software; maintenance of computer software; updating of computer software; rental of computer software; rental of computer hardware; application service provider (ASP); computer system design; computer systems analysis; consultancy in the field of computer software; conversion of data or documents from physical to electronic media; creating and maintaining websites for others; data conversion of computer programs and data (not physical conversion); hosting computer sites (web sites); creating and maintaining blogs for others; services of engineers; expert advice and expert opinion relating to technology; rental of data processing apparatus and computers; technical services relating to projection and planning of equipment for telecommunications; services of information brokers and providers, namely product research for others; weather forecasting; research in the field of telecommunication technology; monitoring of network systems in the field of telecommunications; technical support services relating to telecommunications and apparatus; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network

The contested goods and services are the following:

Class 9: Computer software and systems composed of a combination of computer hardware and software for enterprise resource planning, business process management, product life cycle management, customer relationship management, supply chain management, electronic procurement of goods and services and back office transaction processing; computer software and computer systems composed of a combination of computer hardware and software for time recording, billing, auditing, subscription management and managing business processes and business workflows; data processing equipment; interfaces for computers; computer software for operating computer; information technology software for the purpose of e-commerce, digital marketing platforms, online social collaboration, and social customer relationship management (CRM); computer software for developing, recognizing, and facilitating enhancement in respect of experience and productivity, accelerating processes and process automation; computer application software for developing, recognizing, and facilitating cognitive enhancement in respect of experience and productivity, accelerating processes, automation; software for cognitive process automation, development of digital virtual agents, predictive systems, digital transformation, data analytics, IoT (Internet of Things), web based applications, visual computing applications, knowledge virtualization, robotics and drones; computer application software for enabling machine learning, natural language processing, genetic and deep learning algorithms, semantic ontologies, pattern recognition and knowledge modeling technologies.

Class 42: Consultancy and information services relating to information technology, information technology architecture and infrastructure and computer system integration; information technology consultation and information services relating to information technology in the fields of enterprise resource planning, business process management, product life cycle management, customer relationship management, supply chain management, electronic procurement of goods and services and back office transaction processing; engineering services relating to information technology; providing a database of information relating to information technology; research and design in the field of information technology, namely, design of computer software, computer firmware, computer hardware and computer software systems; implementation and maintenance of computer software, computer firmware and computer software systems; information technology testing services, namely, testing of computers, computer software, computer hardware and computer systems for others; quality control services and quality control auditing in the field of information technology for others; consultancy in the field of computer hardware, computer programming, maintenance of computer software, updating of computer software, computer software design, computer systems analysis and integration; developing, recognizing, and providing software and IT solutions in respect of experience and productivity, accelerating processes and process automation; development and implementation of software and technology solutions for the purpose of e-commerce, digital marketing platforms, online social collaboration, and social customer relationship management

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

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 assumed to be identical are specialised goods and services directed at business customers with specific professional knowledge or expertise and at the public at large.

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

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

When 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 earlier mark is a figurative mark composed of many colourful dots of different sizes arranged in a circular pattern. The dots themselves are simple geometric shapes and as such, non-distinctive. They are green, turquoise, pink, yellow and grey and the colours and sizes are arranged in a random fashion. The very small dots are grey and the others, that vary in size, have a small white dot in their centre. The central space of the circular pattern has no dots and there is a space to the left and to the bottom right of the circle where no dots appear. The result is a complex pattern that will not be possible to recall with any degree of exactitude by the relevant consumer. The figurative device that makes up the mark has a lower than average degree of distinctive character.

The contested sign is a figurative mark with the verbal element ‘wipro’, meaningless in all of the European Union languages and therefore a distinctive element. ‘wipro’ appears in a dark violet basic lower case typeface. Around the letter ‘o’ forms a figurative device composed of rings of circular dots that grow in size from the centre outwards and that merge from tones of red to orange to yellow to green to blue to indigo to violet (following the pattern of the colours of the rainbow). The dots themselves are simple geometric shape and therefore non-distinctive. The figurative device composed of basic geometric shapes has limited distinctiveness and is clearly less distinctive than the meaningless verbal element. Contrary to the view of the opponent, the verbal and figurative element vie for attention, neither being more dominant (visually outstanding) than the other in the contested sign.

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

Purely figurative signs are not subject to a phonetic assessment.

Aurally, as one of the signs is purely figurative, it is not possible to compare them aurally.

Visually, the signs coincide in that their figurative devices are made up of circular patterns made from dots of different colours, some of which coincide. They differ in the distinctive verbal element ‘wipro’ of the contested sign which has no counterpart in the earlier mark. They differ also in the layout of the dots, one being structured and the other haphazard, the colour palette used, one being more luminous that the other, the area covered by the dots, the earlier mark having a blank central area and other blank areas while the contested sign forms a more complete circle shape except for the area taken by the verbal element ‘wipro’. They differ in addition in the fact that earlier mark’s larger dots have a small white circle in the centre.

Therefore, the signs are visually similar to a low degree.

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

d) Distinctiveness of the earlier mark

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

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, and contrary to the view of the opponent, the distinctiveness of the earlier mark must be seen as lower than average for all the goods and services in question, namely the goods and services in Classes 9 and 42.

e) Global assessment, other arguments and conclusion

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.

According to the case law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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, § 22 et seq.).

Such a global assessment of a likelihood of confusion implies some interdependence between the relevant factors, and in particular, similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the marks may be offset by a lower degree of similarity between the goods, and vice versa (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 24; 29/09/1998, C-39/97, ‘Canon’, EU:C:1998:442, § 17).

In the present case the goods and services are assumed to be identical. Neither a conceptual nor an aural comparison is possible and the signs are visually similar to a low degree. The earlier mark has a lower than average degree of distinctive character and the degree of attention of the relevant public varies from average to high.

The earlier mark is a complex pattern of colourful dots placed randomly to make an incomplete circular pattern. As mentioned, such an aleatory and complex combination will be unlikely to be remembered with any degree of exactitude by the relevant public regardless of the degree of attention. The only thing it has in common with the contested sign is that the contested sign also uses colourful dots. They form, however, a more complete circle pattern and are placed in a structured way around a distinctive verbal element, which is where the consumer’s attention will be focused. As mentioned above, when signs consist of both verbal and figurative components, the verbal component tends to have the greatest impact on the consumer. This is the case of the contested sign.

The distinctive verbal element of the contested sign is clearly perceptible and sufficient to exclude any likelihood of confusion between the marks, bearing in mind also that the figurative devices of the signs, which are not the same, are of limited distinctiveness.

The opponent contends that, when viewed in isolation, the figurative elements of the marks are highly similar and that the verbal element of the contested sign is unlikely to be remembered. Therefore, due to the imperfect recollection of the consumer, when faced with the contested sign, they would see it as the mark of the opponent. However, the Opposition Division affirms that the verbal element of the contested sign is the most distinctive element of the marks and this is where the consumers’ attention will focus when faced with the contested sign. Therefore, the similarities between the figurative devices are overshadowed by this distinctive verbal element. Even taking into consideration the imperfect recollection of the consumer, the distinctive verbal element dominates the overall impression of the contested sign and is the part that is most likely to be remembered.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the opponent are not relevant to the present proceedings.

With regard to the Thomson case (06/102005 C-120/04, Medion vs Thomson, § 30 and 31), the earlier mark was included in its totality in the contested sign. The text refers to cases of when ‘an earlier mark used by a third party in a composite sign including the name of the company of the third party still has an independent distinctive role, without necessarily constituting the dominant element’. However in the present case the contested sign does not include the earlier mark in its totality as part of a composite design. This case is therefore not relevant.

In the Board of Appeal case (06/07/2016, r 2159/2015-4, Ultravox (fig.) / Device of a part of a loudspeaker (fig.) § 23) it was considered that the figurative element of the earlier mark was ‘essentially reproduced’ and played a distinctive role in the contested signs. This is not the present case scenario. In addition, the verbal element ‘ULTRAVOX’ of the contested sign had a meaning in relation to the goods. This is not so in the current proceedings. Therefore this case is also not relevant.

In both of the above cases the overall impression of the signs lead to likelihood of confusion between the marks. In the present case the distinctive verbal element ‘wipro’ has a significant impact on the overall impression of the contested sign and avoids any likelihood of confusion between it and the earlier mark, whose overall impression is dominated by its figurative device, only somewhat similar to the figurative device in the contested sign.

The opponent also argues that the earlier sign, which it considers to be highly distinctive, is often used with verbal elements in the blank spaces and examples of such use are submitted, ‘Indigo at The O2’, ‘The O2’, and ‘The O2 arena’. The opponent goes on to argue that the consumer is used to seeing the sign used in connection with verbal elements and so is likely to be confused and believe that the marks come from the same undertaking. Notwithstanding the fact that the addition of such verbal elements, completely different to the verbal element of the contested sign, would not lead to a different outcome, the Opposition Division must conduct the assessment regarding the earlier sign on which the opposition is based which contains no verbal element, and which has been considered to have a below average degree of distinctive character.

Even if the earlier sign were considered to have a normal degree of distinctive character, there still would be no likelihood of confusion between the signs because the figurative devices themselves are not so similar as to lead the consumer to believe that that the goods and services come from the same or related undertakings.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion or likelihood of association on the part of the public. Therefore, the opposition must be rejected.

COSTS

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

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

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

The Opposition Division

Tobias KLEE

Lynn BURTCHAELL

Swetlana BRAUN

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.