OPPOSITION No B 2 989 237

Banco Comercial Português, S.A., Praça D. João I, 28, 4000-295 Porto, Portugal (opponent), represented by Gastão Da Cunha Ferreira, LDA., Rua dos Bacalhoeiros, nº. 4, 1100-070 Lisboa, Portugal (professional representative)

a g a i n s t

Marke Creative Merchandise Ltd, Units 6-8, Liongate Enterprise Park, CR4 4NY Mitcham, United Kingdom (applicant), represented by Maguire Boss, 24 East Street, PE27 5PD St. Ives, United Kingdom (professional representative).

On 25/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 989 237 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services in Class 35 of European Union trade mark application No 16 646 101 for the figurative mark . The opposition is based on following earlier rights:

1. European Union trade mark registration No 5 005 591 for the figurative mark ;

2. European Union trade mark registration No 5 475 751 for the figurative mark ;

3. Portuguese trade mark registration No 473 563 for the figurative mark .

The opponent invoked Article 8(1)(a) and (b) EUTMR.

PRELIMINARY REMARK

According to Article 2(2)(c) EUTMDR, the notice of opposition must contain the grounds on which the opposition is based, namely a statement to the effect that the respective requirements under Article 8(1), (3), (4), (5) and (6) EUTMR are fulfilled.

In particular, the grounds are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is ticked or if it can be inferred from the opponent’s arguments filed within the opposition period. The grounds are also considered to be properly indicated if the earlier marks are identified and it is possible to unequivocally identify the grounds.

According to Article 5(3) EUTMDR, if the notice of opposition does not contain grounds for opposition in accordance with Article 2(2)(c) EUTMDR, and if the deficiency has not been remedied before the expiry of the opposition period, the Office will reject the opposition as inadmissible.

On 07/11/2017, the opponent filed notice of opposition against the contested application. The opponent correctly indicated that the opposition is based on the three earlier marks stated above and identified for each of these registrations Article 8(1)(a) and Article 8(1)(b) EUTMR as grounds. The notice of opposition was not accompanied by any arguments from the opponent.

On 15/03/2018, the opponent filed arguments to substantiate its opposition and mentioned that the earlier marks are very well-known and enjoy reputation in Portugal and in the European Union.

This late invocation of the reputation of the earlier marks cannot be taken into account, because the opponent failed to indicate in the notice of opposition that it also relied on the grounds of Article 8(5) EUTMR.

Therefore, the opposition must be rejected as inadmissible, as far as it is based on Article 8(5) EUTMR.

Furthermore, the opponent indicated on the opposition form that as regards Portuguese trade mark registration No 473 563, the opposition is based on part of its goods and services, namely services in Classes 35, 36, and 38.

However, in its arguments in support of the opposition submitted after the opposition period, the opponent stated that registration No 473 563 is based also on goods in Class 16.

Pursuant to Article 2(2)(g) EUTMDR, the notice of opposition has to contain an indication of the goods or services on which each of the grounds of the opposition is based and, in the absence of this indication, the opposition has to be considered to be based on all of the goods or services of the grounds.

In particular, the goods or services on which the opposition is based are to be considered properly indicated if one of the relevant boxes in the notice of opposition form is ticked or if they are unequivocally identified in the opponent’s arguments filed within the opposition period.

The contested mark was published on 08/08/2017 and, therefore, the opposition period ended on 08/11/2017. The opposition notice was filed on 07/11/2017 and the arguments in support of the opposition were submitted on 15/03/2018, after the opposition period had elapsed.

As the opponent expressly based its opposition only on some of the goods and services of Portuguese trade mark registration No 473 563 within the three-month opposition period, which ended on 08/11/2017, the subsequent indication on 15/03/2018 that registration No 473 563 is based also on goods in Class 16 constitutes an inadmissible extension of the basis of the opposition.

Consequently, the Opposition Division will consider that the opposition is based on part of the goods and services of Portuguese trade mark registration No 473 563, namely, those in Classes 35, 36, and 38, and on all the services of the two European Union trade mark registrations.

PROOF OF USE

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

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

On 16/11/2018 the applicant requested that the opponent submit proof of use of all trade marks on which the opposition is based.

The request was filed in due time and is admissible given that the earlier trade marks were registered more than five years prior to the relevant date mentioned above.

On 30/11/2018 the opponent was given two months to file the requested proof of use. After the suspension of the proceedings this time limit expired on 13/08/2019.

The opponent did not submit any evidence concerning the use of the earlier trade marks on which the opposition is based. It did not argue that there were proper reasons for non-use either.

However, on 15/03/2018, the opponent had filed arguments to substantiate its opposition and accompanied them with evidence on the reputation in Portugal and in the European Union of the earlier marks.

As this evidence was submitted by the opponent before the expiry of the time limit for providing proof of use, the Opposition Division will take it into account for assessing proof of use.

The date of filing of the contested application is 26/04/2017. The opponent was therefore required to prove that the trade marks on which the opposition is based were put to genuine use in the European Union as regards European Union trade mark registrations No 5 005 591 and No 5 475 751, and in Portugal as regards Portuguese trade mark registration No 473 563 from 26/04/2012 to 25/04/2017 inclusive.

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

European Union trade mark registration No 5 005 591

Class 36: Insurance; monetary and financial affairs, including via the internet; real estate affairs.

European Union trade mark registration No 5 475 751

Class 35: Advertising; business management.

Class 36: Insurance; monetary and financial affairs, including via the internet; real estate affairs.

Portuguese trade mark registration No 473 563

Class 35: Advertising services; business management; dissemination of advertising material, especially brochures, prospects and printed products; market studies; assistance in the directorate of companies; business advisory services; all services referred to excluded from business consulting services in hotel management, catering business consultancy, hotel management and catering services, business advisory services related to franchising.

Class 36: Insurance and financial services including those provided through the internet or other telecommunication mean.

Class 39: Telecommunication services and electronic transmission related to the financial area.

According to Article 10(3) EUTMDR (former Rule 22(3) EUTMIR, in force before 01/10/2017), the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

Before proceeding to list the evidence of use, it is noted that the opponent requested to keep the evidence confidential vis-à-vis third parties. The Opposition Division cannot accept this request, as no reason or justification has been given as to why the documentation has to remain confidential. Moreover, it is noted that the evidence consists of information that is already in the public domain (including available to the public, either in mass media or on the websites of the applicant). Therefore, this evidence is not confidential and will not be treated as such.

The opponent submitted the following evidence, comprising documents mostly in Portuguese with an English translation thereof:

• Document 1: an article from the web page Millenniumbcp.pt on the trade mark mentioning that the opponent is the largest Portuguese financial institution and an international superbrand. The trade mark is also visible. The document is undated but includes references to the period 2002-2005.

• Document 2: a screenshot from the web page Millenniumbcp.pt concerning the internationalisation of the group in 31/12/2014. The trade mark is visible.

• Document 3: a screenshot from the web page Millenniumbcp.pt showing the press release of 28/06/2011 concerning the award of ‘Best Bank in Portugal’ given to the opponent by an international financial magazine.

• Document 4: a screenshot dated 23/06/2015, from the web page Forbes.com, describing ‘Millennium bcp’ as an international commercial bank operating in retail banking, corporate and investment banking, private banking and asset management and foreign activity. The trade mark is visible.

• Document 5: a list from the publication The Banker in February 2015 including ‘Millennium bcp’ at No 335 in 2015 among the ‘top 500 banking brands’.

• Document 6: a press release of 03/03/2015 from the opponent giving information on the position of ‘Millennium bcp’ by the prestigious US magazine The Banker. The trade marks and are visible.

• Document 7: The annual report on the world’s most valuable banking brands of February 2015, published by Brand Finance (the world’s leading independent brand valuation and strategy consultancy).

• Document 8: three press clips featuring publicity in respect of the trade mark from various sources: i) web journal www.expresso.pt (undated), ii) unknown of 28/03/2009 and iii) Negocios of 03/10/2005.

• Document 9: a screenshot from the web page economico.sapo.pt with untranslated information of 17/04/2013.

• Document 10: a screenshot from the web page Millenniumbcp.pt on the history of the brand from 1985 to 2007. The trade mark is visible.

• Document 11: an agenda in respect of an event on 12th March, but with no reference to the year, featuring promotional material in respect of the trade mark .

• Document 12: a screenshot of 17/04/2016 from the web page e-cultura.sapo.pt. in Portuguese, untranslated. The trade mark is visible.

• Document 13: a screenshot of 22/04/2016 from the web page marketer.pt with reference to 06/05/2010, in Portuguese, untranslated.

• Document 14: a screenshot of 17/04/2016 from the web page portaldosprogramas.com with no date reference, in Portuguese, untranslated.

• Document 15: a press release of 28/07/2015 from the opponent giving information on the award of the Medal of Cultural Merit to Fundaçao ‘Millennium bcp’. The trade mark is visible.

• Document 16: a promotional booklet from the opponent on its brands in Portugal in 2014. The trade marks and are visible.

• Document 17: a screenshot from the web page melosepublicidade.pt on superbrands in 2008, 2009 and 2010, in Portuguese and untranslated.

• Document 18: an untranslated screenshot of 15/07/2015 from the web page tvi24.iol.pt with reference to 2014, in Portuguese.

• Document 19: a screenshot of 14/08/2015 from the web page worldfinance.com giving information on the opponent’s activity in the insurance market in 2011.

Most of the documents such as the publication The Banker, the press releases, the screenshots from web pages or the press clips, show that the place of use is Portugal and the European Union. This can be inferred from the language of the documents, Portuguese, the currency mentioned, euros, and some indications of European countries where the trade marks are present. Therefore, the evidence relates to the relevant territory.

Evidence referring to use made outside the relevant timeframe is disregarded unless it contains conclusive indirect proof that the mark must have been put to genuine use during the relevant period of time as well. Events subsequent to the relevant time period may make it possible to confirm or better assess the extent to which the earlier mark was used during the relevant time period and the real intentions of the EUTM proprietor at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50).

In the present case, the evidence referring to use outside the relevant period confirms use of the opponent’s marks within the relevant period. This is because the use it refers to only just prior the relevant period.

Overall, the documents filed provide the Opposition Division with sufficient information concerning the commercial volume, the territorial scope, the duration, and the frequency of use.

The evidence shows that the marks have been used in accordance with their function and as registered.

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

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

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

In the present case, all the documents refer to the opponent as operating in the banking sector, defining the company as a financial institution from Portugal with a global presence. As an international commercial bank, it operates in retail banking, corporate and investment banking, private banking, asset management, and the insurance market.

Accordingly, the evidence shows genuine use of the trade marks for the following services:

European Union trade mark registration No 5 005 591

Class 36: Insurance; monetary and financial affairs, including via the Internet; real estate affairs.

European Union trade mark registration No 5 475 751

Class 36: Insurance; monetary and financial affairs, including via the Internet; real estate affairs.

Portuguese trade mark registration No 473 563

Class 36: Insurance and financial services including those provided through the internet or other telecommunication mean.

The evidence furnished by the opponent is insufficient to prove that the earlier trade marks were genuinely used in the relevant territories during the relevant period of time for the rest of the services.

Therefore, the Opposition Division will only consider the abovementioned services in its further examination of the opposition.

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

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

1. The services

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

European Union trade mark registration No 5 005 591

Class 36: Insurance; monetary and financial affairs, including via the Internet; real estate affairs.

European Union trade mark registration No 5 475 751

Class 36: Insurance; monetary and financial affairs, including via the Internet; real estate affairs.

Portuguese trade mark registration No 473 563

Class 36: Insurance and financial services including those provided through the internet or other telecommunication mean.

The contested services are the following:

Class 35: Retail services relating to catering supplies, cleaning supplies, computer hardware and software, computer accessories, furniture, information technology apparatus and instruments, ink and toner supplies, janitorial supplies, office furniture, office supplies, post room supplies, stationery, telecommunication apparatus and instruments, chemicals used in industry, de-icers, de-icing salt, disinfecting chemicals, oil for shredders, road grit, road salt, rock salt, salts, paints, ink and toner cartridges for photocopiers, ink and toner cartridges for printers and facsimile machines, ink and toner for computer printers, ink cartridges, ink cartridges for franking machines, inks contained in cartridges, paints for office use, printing compositions, printing ink, printing toner, toner cartridges, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, absorbent wipes, air dusters, anti-bacterial screen cleaning wipes, bleach for household use, bleach for use in cleaning, canned pressurized air dusters, carpet cleaner, cleaning agents and preparations, cleaning cloths, cleaning fluid for dry wipe boards, cleaning wipes, cleaning kits for water coolers, cleaning preparations, cleaning preparations for bathroom use, cleaning preparations for computers, cleaning preparations for household use, cleaning preparations for office use, cleaning preparations for use on various surfaces, computer screen and keyboard cleaner, computer screen wet and dry cleaner, descaler tablets, detergents, detergent soaps, dishwasher tablets, disinfectant soaps, disposable pre-moistened cleaning wipes impregnated with cleaning chemicals for label remover, cleaning computer screens and keyboards, mobile phones, laptops and notebook computers, disposable and reusable fabric and microfiber wipes, disposable cleaning wipes for a wide variety of products and surfaces, disposable pre-moistened cleaning wipes impregnated with cleaning chemicals for personal hygienic use as hand wipes, disposable sanitizing wipes, disposable wipes impregnated with cleaning chemicals or compounds for household, industrial and commercial use, drain cleaning preparations, dry erase cleaners, dry wipe board foam cleaner, floor-care preparations, floor finishing preparations, floor finish stripper preparations, furniture care products, furniture polish, general purpose cleaner, glass and surface cleaner, glass cleaning preparations, hand cleaners, hand gels, hand sanitizers, hand soap, hand washes, hand wipes, hand wipes impregnated with non-medicated or toilet preparations, label remover, laptop/notebook wipes, leather care products, limescale remover, liquid soaps, mobile phone wipes, non-medicated preparations for the relief of scalds and burns, polishing preparations, pre-moistened cleaning wipes, preparations for dishwashing purposes, preparations for the care and treatment of fabrics, screen and keyboard cleaner, screen wet and dry cleaner, substances for laundry use, toilet and urinal cleaner and odour eliminator, toilet blocks, toilet cleaners, toilet seat sanitizer sprays, urinal cakes, urinal channel blocks, washroom tub and tile cleaner, washing powder, washing up liquid, whiteboard cleaning spray, wipes incorporating cleaning preparations, sanitary preparations for medical purposes, plasters, materials for dressings, disinfectants, preparations for destroying vermin, adhesive plasters, air fresheners, air purifiers, anti-bacterial cleaning preparations, antiseptics, bandages for dressings, bin fresheners, cleaning cloths, cleaning wipes, deodorants, other than for human beings or for animals, disinfectants, disinfecting wipes, dressings for burns, first-aid boxes, filled, hand sanitizing preparations, hand wipes impregnated with medicated or antiseptic preparations, insecticides, insect repellents, preparations for application to the skin for treatment of stings and bites, preparations for the relief of scalds and burns, preparations for the treatment of scalds and burns, sanitary preparations, sticking plasters, wipes for hygienic [cleaning] purposes, other than impregnated with cleaning preparations, ironmongery, small items of metal hardware, trinkets of common metal, 3-sided sign holders of metal, adhesive hooks of metal, bins of metal, broom handles of metal, cash boxes, coat hangers of metal, desktop name holders of metal, fire-safe chests and cabinets, foils of metal for cooking, covering or wrapping, key cabinets of metal, key fobs made of metal, key rings made of metal, kick stools of metal, lockers of metal, metal name plates, metal name plates for desks, metal name plates for doors, mop handles of metal, mounted ash bins of metal, padlocks of metal, safes, safety boxes, signage systems, sign boards, sign holders of metal, signs, sign stands, step stools of metal, step ladders of metal, steps of metal, swing bins, towel dispensers, fixed, of metal, machines and machine tools, air dusters, bags of paper for vacuum cleaners, bags of plastics for vacuum cleaners, binding machines, floor cleaning machines and apparatus, heat sealers, heat sealing machines, labelling machines [other than for office use], label printers [other than for office use], laminating machines [other than for office use], strapping apparatus, strapping machines, strapping tools, tensioners (machines), tools and machines for sealing containers, vacuum cleaner replacement bags, vacuum cleaners, hand tools and implements (hand-operated), cutlery, forks, knives, scissors, shovels, snow shovels, spoons, scientific, 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, cash registers, calculating machines, data processing equipment, computers, computer software, fire-extinguishing apparatus, 2-way radios, accounting software, adaptors, alarms, answering machines, anti-virus software, application software, audio speakers, backpacks for computers, backpacks for laptop and tablet computers, bags adapted to carry video apparatus, photographic apparatus, computers or computer apparatus, batteries, blank compact discs, blank computer disks, blank DVDs, buffers, cable covers, cable covers [conduits], cables, calculators, camcorders, cameras, carbon monoxide alarms, car chargers, carriers adapted for mobile phones, carriers adapted for MP3 and other digital format players, cases and covers for computers, tablet computers, laptop computers, netbooks and PDAs, cases and covers for e-readers, cases and covers for MP3 and other digital format players, cases and covers for telephones and smartphones, CCTV apparatus, CCTV cameras, CD-R discs, CD-RW discs, CD cases, CD disc holders having an adhesive for mounting on a surface, CD disc storage containers, CD wallets, central processing units, chargers, charging apparatus, charging apparatus for use in vehicles, clock radios, clocks, compasses, computer cables, computer disks, computer furniture, computer hardware, computer hubs, computer memory cards, computer mouses, computer parts and peripherals used in the installation, repair and maintenance of computer hardware, software and wireless networks, computer peripherals, computer printers, computer routers, computer software for use in spreadsheets, database management, word processing, computer storage media [blank], computer storage media [recorded], computer switches, consumer electronics, copiers, cordless telephones, cords, data cables, data storage devices, data storage media [blank], data storage media [recorded], data transmission cables, desktop computers, desktop publishing software, dictation machines and apparatus, digital audio and video devices, digital audio and video players with multimedia and interactive functions, digital camera cases, digital cameras, digital cameras, digital frames, digital photo frames, digital projectors, disk boxes, disc drives, disk holders, dividers for use with storage racks that hold a stack of CDs or DVDs, external hard disk drives, docking stations for MP3 and other digital format players, DVD cases, DVD discs, DVD wallets, DVD+R discs, DVD+RW discs, e-readers, ear defenders, ear plugs, ear protecting devices, electric adaptors, electrical sockets, electric cables, electric filters, electronic typewriters, extension cables, eyewear, fax machines, fire blankets, fire extinguishers, flash drives, flash memory, facsimile machines, games (apparatus for- ) adapted for use with an external display screen or monitor, games software, gloves for protection against accidents or injury, GPS personal navigation devices, hand held calculators, handsets for telephones, hard drives, headphones, headphone adaptors, headsets, imaging apparatus, Internet cables, Internet safety and security software, joy sticks, keyboards, laptop computers, laptop stands, laser pointers, laser printers, lens cleaners, lens cleaners for DVD players, loudspeakers, luggage scales, magnetic recording media [blank], magnetic recording media [recorded], magnets, magnets for dry wipe boards, media cards, media card readers, media storage, memory apparatus, memory cards, memory devices, mice, microphones, migration cables, mini and portable DVD players, mobile telephone covers, mobile telephones, modem cables, modem routers, modems, monitor arms, monitor cables, monitor risers, monitors, monitor stands, motion and entry alarms, mounts and holders for satellite navigation systems, mounts and holders for telephones, computers, MP3 players and other digital format players, mounts and holders for use in vehicles for navigation devices and mobile phones, mouse mats, mouse pads, mouse devices, mouses, MP3 and other digital format players, MP3 portable media players, multimedia projectors, neoprene sleeves for laptop and tablet computers, netbooks, network adaptors, network hubs, notebook computers, number pads for computers, operating systems software, optical discs [blank], optical discs [recorded], optical media, optical recording media [blank], optical recording media [recorded], overhead projectors, parcel scales, pass holders, PDA devices, personal stereo speaker apparatus, photocopiers, pockets, pouches, holsters and sleeves for computers, tablet computers, laptop computers, netbooks, PDAs, telephones and smartphones, pockets, pouches, holsters and sleeves for MP3 and other digital format players, portable hard drives, portable media players and docking stations, post scales, pouches adapted to carry video apparatus, photographic apparatus, computers or computer apparatus, power adaptors, power apparatus, power cables, power chargers and adapters, including hand crank chargers, power strips, printer cables, printers, privacy filter screens for computers, processors (central processing units), projection screens, projectors, protective clothing, footwear, headgear and eyewear, protective ear coverings, protective eye covers, protective gloves for use in industry for the prevention of accident or injury, protective helmets, protective work gloves, PVC-coated gloves, radios, remote control devices, risers for computers and computer peripherals, routers, routers for cable broadband, safety goggles, safety spectacles, scales, scanners, screen guards, screens, SD memory cards, SDHC memory cards, servers, shredders, signage systems, sign boards, signs, sirens, smartphones, smoke alarms, socket strips, software for organizing and analyzing data, software to create personalized business cards, sound, video and data recordings, speakers, speaker systems, stands for computers, stylus pens, surge-protected extension leads, surge protectors, switches, tablet computers, telecommunications apparatus, telecommunication cables, telecommunication servers, telephone cables, telephone handsets, telephones, telephones, including USB digital phones, television cabinets, television stands, USB adaptors, USB chargers, USB hubs, USB ports, USB cables, USB flash disks, USB flash drives, USB flash memory, USB hard disk drives, video tape [blank], video tape [recorded], voice recorders, webcams, wireless cards, wireless range extenders, wireless repeaters, wireless routers, workstations (computer apparatus), wrist rests, wrist rests for use with keyboards, medical, apparatus and instruments, first aid kits (filled), lumbar supports, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, air conditioning filters, catering urns, coffee machines, desk lamps, fan heaters, fans, fin heaters, halogen heaters, heaters, kettles, lamps, LED torches, light bulbs, light bulbs for the lighting of offices, restrooms, workspaces and living spaces, light bulbs for urinals, microwave ovens, ovens, radiators, toasters, torches, refrigerators, urinal screens, water cooler apparatus, water coolers, water dispensers, vehicles, apparatus for locomotion by land, carts, cleaning trolleys, janitorial trolleys, non-motorized cleaning carts and caddies, platform trucks, sack trucks, sledges, snow sledges, trolleys (vehicles), paper and cardboard, printed matter, bookbinding material, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites, instructional and teaching material, plastic materials for packaging, printers’ type, printing blocks, accident report books, accounts books, activity pads, address books, address labels, adhesive labels, adhesive materials for office use, adhesive pads, adhesive tape, adhesive tape dispensers for household and commercial use, adhesive message notes, alphabet labels, analysis books, annual planners, apparatus for displaying pictures, apparatus for mounting pictures, appointment books, appointment diaries, archive boxes, art folders, articles of paper or cardboard for mailing purposes, articles for mailing discs, artists’ brushes, badge labels, badges made of paper or cardboard, bags made of paper for packaging, bags made of plastics for packaging, ballpoint pens, banners of paper or cardboard, battery operated pencil sharpeners, binder clips, binders, binding machines for office use, binding covers, binding rings, blank business cards, blotters, board erasers, bond paper, book covers, bookends, books, boxes of paints for use by children, box files, brochure holders, brushes for painting, bubble roll, bubble wrap, bulldog clips, bulletin boards, business card holders that contains software to create personalized business cards, business books, business card albums, business card holders, business cards, business envelopes, business forms, calculator rolls, calendar planners, calendars, cardboard cartons, cardboard tubes, cardboard tubes for mailing purposes, carrier bags, cash books, cash register rolls, CD labels, certificates, chalks for drawing, writing or colouring, charts, chinagraph pencils, cling film, clipboards, clips, clips for stationery use, coloured paper and card, coloured pens, pencils and marker pens, compasses, compliment slips, computer listing paper, computer paper, computer printer ribbon, computer printout ribbons, continuous feed paper, convector heaters, copy paper, correction markers, correction pens, correction tape, corrugated paper and cardboard, copier paper, correction fluid, correction tape rollers, counterfeit money detector apparatus, counterfeit money detector machines, counterfeit money detector pens, craft knives, crayons, cupboards [other than furniture] for filing purposes, cutters for office use, cutting mats for office use, design paper, desk accessories, desk blotters, desk caddies, desk calendars, desk calendars and markers, desk file trays, desk mats, desk organizers, desk pads, desk sets, desk stands, desktop business card holders, desktop document racks, desktop organizers, desktop sorters, desk tidies, diaries, diary refills, dispensers for packaging materials, display books, disposable absorbent wipes not impregnated with chemicals, divider cards, dividers, dividers for binders, document wallets, drawer boxes, drawer tray organizers, drawing pins, dry erase boards, [dry erase] erasers, dry erase markers, [dry erase] markers, [dry erase] pens, dry erase products,[dry erase] writing boards, dry wipe board accessories, dry wipe boards, dry wipe board erasers, dry wipe board pens, dry wipe board pen and eraser holders, duplicate books, easels, easels for presentation boards, educational books, envelopes, erasers, exercise and writing practice books, expansion disks for notebooks, expanding files, facial tissue, fax paper, felt boards, felt-tip pens, fibre tip pens, file boxes, file binders, file dividers, file folders, file folders, file storage boxes, filing cards, filing card apparatus, filing card boxes, filing boxes, filing pockets, first aid wall charts, flat-bar files, flat-packed cardboard boxes, flipchart easels, flipchart pads, flip-top pads, foam packaging materials, fold-back clips, folders, franking labels, fountain pens, geometry sets, gel pens, glue, glue sticks, graph paper, guillotines for office use in cutting paper, hand wipes [paper], hanging files, hanging folders, heat sealers, heat sealing apparatus for office use, heat sealing machines, highlighters, highlighters, holders for pens and pencils, hole punchers, index dividers, ink cartridges for pens, ink delivery systems comprised of pen ink cartridges, ink for writing instruments, inkjet labels, inkjet paper, ink ribbons, ink rollers, invoice forms, jotters, journals, kitchen roll, label printing machines, labels, labelling machines for office use, labelling tape, labelling tape (laminated), labelling tape (non-laminated), label makers, label printers, label writers, laminating films, laminating machines for office use, laminating pouches, laminators, laser paper, laser printer film, laser printing paper, leads for mechanical pencils, leaflets, letter and document sorters (office requisites), letter sorters, letter trays, lever arch file accessories, lever arch file labels, lever arch files, L-folders, literature files, loose leaf binders, loose leaf paper, magazine files, magazine racks, magnetic dry wipe board erasers, magnetic dry wipe boards, magnetic whiteboards, mailing bags, mailing boxes, manuscript books, map pins, maps, marker pens, marker pens for dry wipe boards, markers, marking tape, masking tape, maths sets, mechanical pencils, mechanical pens, message boards, message pads, mileage record books, mini highlighters, mini staplers, modular storage boxes, mounts, multi-draw cabinets for office use, multipurpose paper, name badges, name badge holders, napkins, napkins made of paper, non-electric hole punchers, non-electric staplers, notebooks, notepads, note paper, note paper dispensers, note tabs, notice boards, number labels, office desk accessories, office machine ribbons, office machines, office supplies, order forms, packaging material, packaging materials made of foamed plastics, packaging of paper and/or cardboard, packaging string, packaging tape dispensers, packing tape dispensers, padded envelopes and bags, padded mailing articles, pads, pads of paper, paper, paper and plastic garbage bags, paper and plastic garbage bags, paper bags, paper binders, paper calculator rolls, paper clip dispensers, paper clips, paper cutters, paper cutters (stationery), paper hand towels, paper knives (office requisites), paper napkins, paper rolls, paper shredders, paper shredders for home or office use, paper staplers, paper staples, paper staples, paper storage boxes, paper table covers, paper towels, paper trimmers, parcel tags, payslip forms, pencil cases, pencil cups, pencil holders, pencil pots, pencil leads, pencils, pencil sharpeners, pencil sharpeners, pens, permanent markers, personal organisers [stationery], personal planners [stationery], petty cash books, petty cash slips, photocopier paper, photograph storage pockets, photograph paper, photo paper, pins [stationery], planners (printed matter), plastic bags for the storage and disposal of waste, plastic folders and wallets, plastic packaging foil, pocket dividers, polythene bags for wrapping or packaging, polythene films for wrapping or packaging, popper files, portable hole punches, portable hole punches for personal organisers, portable typewriters, portfolio cases, portfolios, postage stamps, postal boxes, postal tubes, posters, post room requisites, post room supplies, pouches [stationery], presentation and display books, presentation boards, pricing gun ink rollers, pricing gun labels, pricing guns, pricing labels, printing calculators, printing machines for stationery purposes, printing paper, printed and embossed matter, printer paper, printer ribbons, project files, protractors, publicity leaflets [flyers], punched pockets, purchase order forms, push pins, raffle ticket books, receipt books, record cards, recycled paper, refill pads, refill paper, refills for personal organisers and personal planners, remittance advice forms, record card boxes, record car holders, record cards, refills for dry wipe board erasers, refills for pens, marker pens and highlighter pens, removal boxes, report files, reporters notebooks, ring binders, rotary card files, rubber band balls, rubber bands, rulers, security pass holders, self-adhesive hooks, self-adhesive labels, self-adhesive loops, self-adhesive material, set squares, shipping labels, shredder bags, shredder lubrication sheets, shredders, shredders for office use, shrink wrap film, shrink wrap machines for office use, sketch books, sketch pads, spine bars for binding purposes, stamp inks, stamp pads, standard size highlighters, stamps, staple removers, staplers, statement forms, stationery clips, stationery files, stationery folders, stationery pockets, stationery stickers, sticker notes, stickers, sticky note cubes, sticky note dispensers, sticky notes, sticky tape, stock boxes, storage boxes, storage boxes for office use, storage boxes made of cardboard, storage cabinets for office use, storage cupboards for office use, storage drawers for office use, storage drawers [other than furniture] for filing purposes, storage racks for office use, storage towers for office use, storage trunks for office use, storage units [other than furniture] for filing purposes, stretchable fabric book covers, stretch film dispensers, stretch wrapping films, string, stud wallets, subject dividers, suspension files, synthetic stretch packaging films of plastic, synthetic stretch wrapping films of plastic, T-card planners, T-cards, T-card systems, tapes (adhesive- ) [stationery], tape dispensers, tape (double sided), telephone address books, telephone book binders, things-to-do list books, things-to-do lists, things-to-do pads, thumb tacks, tickets, tissue paper, tissues, toilet paper, toilet roll, toilet seat covers, toilet tissue, toner cartridges and ink cartridges for computer printers and facsimile machines, digital cameras, scanners, calculators, and computers, towels made of paper, transfers, trash can liners, treasury tags, typewriter ribbons, wage envelopes, wallets (stationery), wall file systems, wall planners, waste bags of paper, waste bags of plastic, waterproof pens, weekly planners, whiteboards, wipes for whiteboards, wipes [other than impregnated or for medical use], wrapping paper, writing instruments, writing paper, writing pencils, zipper bags, zipper bags (clear), trunks and travelling bags, attaché cases, backpacks, bags made of leather, bags made of plastics materials, book bags, briefcases, business card cases, carrier bags, carry straps, cellular telephone cases, computer bags, document cases, duffel bags, easel carry bags, imitation leather for use with office furniture, knapsacks, luggage, messenger bags, MP3 portable media player cases, pass holders, PDA cases, pilot cases, portfolios, roller bags, wallets, 3-sided sign holders (non-metallic), barrier tape, bins [non-metallic structures], floor signs, grit bins, non-metallic signs (non-luminous, non-mechanical), road grit bins, sign holders, signs, sign stands, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, adhesive hooks (non-metallic) for wall hangings, adhesive loops (non-metallic) for wall hangings, aluminium frames for pictures, cork boards, felt boards, dry wipe boards, message boards and presentation boards, art and craft work stations, bins, boardroom tables, bookcases, bottle racks, broom handles, cash boxes, certificate frames, chairs, coat hangers, coat stands, computer furniture, conference tables, corkboards, cupboards, desk chairs, desks, desk screens, desktop name holders, not of metal, display cases, display panels, drawer boxes, exhibition furniture, exhibition panels, exhibition stands, filing cabinets, folding metal chairs, foot rests, foot stools, frames, frames for pictures, cork boards, felt boards, dry wipe boards, message boards and presentation boards, garment racks, grit bins, key cabinets, key fobs, not of metal, key rings, not of metal, kick stools, not of metal, literature displays, literature display shelves, literature holders, lockers, magazine racks, mobile literature displays, modular desks [furniture], modular furniture units for use as work stations, modular shelving [furniture], modular storage boxes, mop handles, not of metal, mounts, office furniture, office screens, packaging containers of plastic, padlocks, not of metal, pedestals (furniture), photo frames, polypropylene storage boxes and crates, poster frames, projector trolleys, racks, racks for water cooler bottles, reception seating, recycle bins, room dividers, safes, not of metal, safety boxes, not of metal, seat covers for office furniture, seating, secretarial chairs, screens, shelves, shelving, sign boards, sofas, step stools, not of metal, step ladders, not of metal, steps, not of metal, stools, storage boxes (polypropylene), straws, swing bins, table extensions, tables, towel dispensers, fixed, not of metal, traffic cones, wall mounted displays, water tanks (non-metallic- ) [containers], wooden frames for pictures, cork boards, felt boards, dry wipe boards, message boards and presentation boards, workstations (furniture), household or kitchen utensils and containers, sponges, brushes, articles for cleaning purposes, glassware, porcelain and earthenware, bins, bowls, brooms, brushes for cleaning electrical equipment, buckets, carton openers, cleaning cloths, cleaning sponges, cleaning wipes, coffee machines, combs and sponges, crockery, crockery for kitchen use, cup dispensers, cutlery dispensers, cups, dish brushes, dish drainers, drinking cups, drinking glasses, drinking glasses made of plastics, drink stirrers, dustpan and brushes, dustpans, flasks, gloves, gloves for cleaning, gloves for household and office cleaning purposes, hinged containers, latex gloves, latex gloves for household and office cleaning purposes, litter pickers, lunch bags, lunch boxes, mop buckets, mop heads, mops, paper and plastic hot and cold drink cups and lids, paper and plastic plates and bowls, paper hot cup sleeves, paper plates, paper dispensers, picnic boxes, picnic crockery, picnic utensils, picnic ware, plates, recycle bins, recycling waste baskets, rubber gloves, scourers, screen cleaning wipes, sign boards, soap and sanitizer dispensers, sports bottles, spray bottles and sprayers, steam mops, straws, swing bins, toilet roll dispensers, towel dispensers [not fixed], trash cans, washing up bowls, washing up gloves, waste baskets, windscreen scrapers, wipes for cleaning, string, sacks and bags, padding and stuffing materials, raw fibrous textile materials, bags for storage purposes, mail bags, strapping, twine, textiles and textile goods, table covers, adhesive fabric for application by heat, banners, iron-on transfers of textile, place mats, not of paper, tablemats, not of paper, tea towels, towels (textile), clothing, footwear, headgear, gloves, high-visibility clothing, high-visibility jackets, high-visibility waistcoats, heat-fusible transfers (textile- ) for attachment to garments, hook-and-loop fasteners, lanyards for wear, necklaces for name badges and security badges, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings, chair mats, door, floor and chair mats, entrance mats, floor and restroom mats, floor coverings, floor mats, non-slip pads, games and playthings, sporting articles, cards (playing), games, sledges, snow sledges, toy buttons, coffee, tea, cocoa and artificial coffee, confectionery, sugar, biscuits, chocolate confectionery, coffee machine refills, condiments, confectionery, hot chocolate, snack food products, sweets (non-medicated), tea bags, mineral and aerated waters and other non-alcoholic beverages, fruit beverages and fruit juices, syrups and other preparations for making beverages, bottled water, drinking water, non-alcoholic drinks, soft drinks, spring water, water and water for water coolers and dispensers; advertising; promotional services; online retail store services and mail order catalogue services relating to promotional general merchandise and general consumer goods with company brand logos and tag lines to the order and specification of the customer, namely catering supplies, cleaning supplies, computer hardware and software, computer accessories, furniture, information technology apparatus and instruments, ink and toner supplies, janitorial supplies, office furniture, office supplies, post room supplies, stationery and telecommunication apparatus and instruments; computerized online ordering featuring business promotional general merchandise and general consumer goods with company brand logos and tag lines to the order and specification of the customer; promoting the sale of goods and services of others through the custom preparation of specialty apparel, promotional items and incentive merchandise.

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.

The contested services can be grouped in the market of retailing (retailing, online retail store and computerized online ordering of a wide list of different goods) and in the market of advertising (advertising, promotional services and promoting the sale of goods).

Retail services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. Many different means and products can be used to fulfil this objective. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc.

The opponent’s insurance consists of accepting liability for certain risks and losses. Insurers usually provide monetary compensation and/or assistance in the event that a specified contingence occurs, such as death, accident, sickness, contract failure or, in general, any event giving rise to damages.

The opponent’s monetary and financial affairs, including via the internet (or other telecommunication mean) are financial or monetary services provided by banking establishments, credit institutions or exchange brokers. These types of companies provide all the services necessary for savings or commercial purposes concerning the receiving, lending, exchanging, investing and safeguarding of money, the issuing of notes and the transacting of other financial business.

The opponent’s real estate affairs are a broad category that includes a wide variety of services relating to real estate matters, such as the services provided by real estate agencies and brokers, the leasing and/or rental of real estate, the management of real estate.

The contested services have nothing in common with any of the opponent’s services covered by the earlier marks. Their fields are not directly related, and they belong to different areas of activity. They have different purposes and methods of use as they satisfy different needs, and they are provided by different types of companies. Furthermore, these services are neither complementary nor in competition. Consequently, they are dissimilar.

2. Conclusion

According to Article 8(1)(b) EUTMR, the similarity of the goods or services is a condition for a finding of likelihood of confusion. Since the services are clearly dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR is not fulfilled, and the opposition must be rejected.

Likewise, even assuming that the earlier marks enjoy an enhanced distinctiveness due to reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of reputation.

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

Irina SOTIROVA

Loreto URRACA LUQUE

Birute SATAITE-GONZALEZ

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.