OPPOSITION No B 2 974 940

ENI S.p.A., Piazzale Enrico Mattei, 1, 00144 Roma, Italy (opponent), represented by De Simone & Partners S.p.A., Via Vincenzo Bellini, 20, 00198 Roma, Italy (professional representative)

a g a i n s t

Atlantic Société Française de Développement Thermique (Société Anonyme), 44 boulevard des Etats-Unis, 85000 La Roche-Sur-Yon, France (applicant), represented by Hirsch & Associés, 137 rue de l'Université, 75007 Paris, France (professional representative).

On 19/03/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 974 940 is partially upheld, namely for the following contested goods and services:

Class 9: Apparatus and devices for energy management.

Class 42: Providing of technical information and advice relating to the production and consumption of electrical, solar, geothermal, thermal, climatic and renewable energy; technical information and consultancy for setting up and installing apparatus and installations for providing and/or generating and/or supplying energy; studies and technical consultancy on the distribution of energy consumption; technical assessment and appraisal on energy consumption; design surveys in relation to the installation and implementation of apparatus and installations in the field of environmental engineering.

2. European Union trade mark application No 16 709 412 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3.	Each party bears its own costs.

REASONS

On 12/10/2017, the opponent filed an opposition against some of the goods and services of European Union trade mark application No 16 709 412 for the figurative mark , namely against some of the goods and services in Classes 9, 35, 37 and 42. The opposition is based on the following earlier rights:

- European Union trade mark registration No 9 428 038 for the figurative mark , in relation to which the opponent invoked Article 8(1)(a) EUTMR for goods and services in Classes 11, 35, 37 and 42, and Article 8(5) EUTMR for goods in Class 4;

- European Union trade mark registration No 12 554 747 for the figurative mark , for goods in Class 9, in relation to which the opponent invoked Article 8(1)(a) EUTMR; and

- European Union trade mark registration No 2 051 548 for the figurative mark , for goods and services in Classes 9, 11, 35, 37 and 42. The opponent invoked Article 8(1)(b) EUTMR in relation to this earlier mark.

On 25/09/2019 the Opposition Division rendered a decision that resulted in the rejection of the opposition on the grounds that the conditions for the application of Article 8(1)(a) and (b) and Article 8(5) EUTMR were not fulfilled, as the signs were found to be dissimilar.

The decision was appealed and the Board of Appeal decided in case R 2643/2019‑2 on 15/05/2020. The Board’s decision annulled the contested decision and remitted the case to the Opposition Division for further prosecution. The Board considered that the signs display a low degree of visual and conceptual similarity, which makes it necessary to examine the opponent’s claim as to the enhanced distinctiveness and/or reputation of the earlier marks.

ASSESSMENT OF THE EVIDENCE – Proof of use and reputation

The outcome of the opposition largely depends on the conclusions reached in relation to the evidence referred to by the opponent in order to prove the genuine use of earlier European Union trade mark registrations No 9 428 038 and No 2 051 548 , as requested by the applicant, and the reputation claimed by the opponent in respect of the first earlier mark and in relation to goods in Class 4.

Therefore, the Opposition Division will first set out the submitted evidence in its entirety and will determine whether the relevant earlier marks were put to genuine use and/or acquired enhanced distinctiveness/reputation as the case may be.

On 27/04/2018, within the time limit for substantiating the opposition, the opponent referred to the evidence on which it wished to rely within these proceedings in order to prove reputation, namely enclosures 1-22.

On 03/12/2018, following the request of the applicant to submit proof of use of the earlier European Union trade mark registrations No 9 428 038 and No 2 051 548 for classes 4, 9, 11, 35, 37 and 42, the opponent reiterated its will to rely on the abovementioned evidence also for this purpose, adding exhibits 1-34.

Regarding the consideration of the proof of use as proof of reputation, the Opposition Division considers it appropriate to mention that, although according to Article 7(2) EUTMDR, the opponent has to submit the evidence of reputation within the time limit set by the Office, this provision cannot be interpreted as automatically preventing the taking into consideration of additional evidence presented later.

According to Article 8(5) EUTMDR, where the opponent submits after the expiry of the time limit set by the Office facts or evidence that supplement prior relevant facts or evidence submitted within the time limit, the Office may take into account the evidence submitted out of time as a result of an objective, reasonable exercise of the discretion conferred on it by Article 95(2) EUTMR. The Office must exercise its discretionary power if the late facts or evidence merely supplement, strengthen and clarify the prior relevant evidence submitted within the time limit that relate to the same legal requirement laid down in Article 7(2) EUTMDR, namely, when both sets of facts or evidence refer to the same earlier mark, to the same ground and, within the same ground, to the same requirement.

When exercising its discretionary power, the Office must take into account, in particular, the stage of proceedings and whether the facts or evidence are, prima facie, likely to be relevant for the outcome of the case and whether there are valid reasons for the late submission of the facts or evidence.

In the present case, the Office considers that the opponent did submit relevant facts or evidence within the time limit set by the Office and that, therefore, the evidence subsequently submitted can be considered to be supplementary.

For the above reasons, and making use of the discretionary power conferred by Article 95(2) EUTMR, the Office decides to take into account the additional evidence presented by the opponent on 03/12/2018.

Therefore, the evidence submitted to take into account is the following:

 Encl. 1: an article in English published on yeslogo.worldpress.com, dated 27/01/2009, on the history of ‘the six-legged dog’ logo of the opponent, described as ‘the Italian multinational oils and gas company’. According to the article, the figure was first represented in 1952, when it won a competition to design billboard ads for the Supercortemaggiore oil produced by Agip (the opponent’s former name), and was restyled in 1992, when the company went private. Also according to the article, the company interprets that the six legs symbolise the four wheels plus the two legs of the driver, while it also refers to African mythology where power animals like lions or leopards were depicted with six legs.

 Encl. 2: a booklet from the opponent entitled ‘the six-legged dog; 1952-2009, the six-legged dog has walked a long way’, which gathers articles, pictures and information on the history of the brand, highlighting several milestones and campaigns.

 Encl. 3: an article published by Lyles of Newcastle, dated 27/05/2009, entitled ‘Agip High Performance Oils’, which briefly reviews the authorship and interpretation of ‘the six-legged dog’ logo.

 Encl. 4 - Encl. 5b: BrandZ Top 30 Most Valuable Italian Brands 2018, and BrandZ brand valuation series, published on 07/03/2018. According to the report the opponent’s mark is ranked 7^th, with the opponent’s business being defined as ‘oil & gas’. The sign is represented as and it is said to be worth $ 3 131M at the time. In the brand profile ‘Fuel brand supports growth, innovation’, the opponent is referred as to be ‘involved in the exploration, processing and supply of oil, gas and electricity’, operating ‘in 73 countries around the globe, employing around 33,000 people’ and ‘listed on the Milan and New York stock exchanges since 1995’.

 Encl. 6a and Encl. 6b: articles in Italian from Il Sole 24 Ore, the first one dated 23/05/2017, entitled ‘Eni al top dei brand italiani, che valgono nel complesso 94 miliardi’ (title translated by the opponent as ENI at the top of the Italian brands, that value globally 94 billions) and the second one dated 26/10/2010, ‘Eni primo gruppo italiano per fatturato, davanti ad Enel e Fiat. Ecco la classifica stilata da Mediobanca’, where, according to the opponent reports ‘the results of Mediobanca study on the Italian most successful enterprises’.

 Encl. 7a and Encl. 7b: articles in Italian, dated 23/05/2017, from Repubblica.it, entitled ‘Marchi italiani, Ferrari il più forte ed Eni quello che vale di più’, and from BusinessPeople ‘Brand Finance, Eni è il marchio italiano più forte’, on the results of the Brand Finance 2017 Report.

 Encl. 8a and Encl. 8b: an article in French from Gazpascher.com, where the sign appears as bearing the date 15/03/2018 ‘on the value and the strength worldwide of the six-legged dog’ according to the opponent (encl. 8a) and an article in English from arabianoilandgas.com, dated 16/02/2011, entitled ‘World’s Top 10 Listed Oil Companies’, where the opponent ranks 9^th (encl. 8b).

 Encl. 9: opponent’s report on market shares in 2016, per sector; as per gas and power key figures, the report indicates ENI to have 7.76M customers in Italy, with 54% of the gas market in this country and 42.43% in the rest of Europe; in respect of refining & marketing key figures, it is said that the opponent had 5,622 service stations in Europe, with over 24% of the retail market and over 28% of the wholesale market in Italy. In the report, the company is defined as ‘an energy company’, ranked 6^th in terms of share capitalisation among the 11 principal companies operating in the sector (Eni, Exxon, Shell, Chevron, Total, BP, Conocophillips, Statoil, Anadarko, Apache and Marathon Oil). The same data on market capitalisation is shown in a Bloomberg report (Market Cap ENI and Peers) dated 30/06/2017, attached as encl. 10.

 Encl. 11a - Encl. 12: samples of the opponent’s posters in Italian/Italian cities and a picture of a petrol station, featuring the opponent’s logo against a yellow background dated 1952-1990 or undated; further evidence of promotional campaigns in Italy and Belgium (Eni Bruxelles Campagna “UE GAS Advocacy 2017” by Zenith – The ROI agency, dated 15/03/2018, where several extracts from Politico.eu featuring the opponent’s logo and dated July – December, can be seen).

 Encl. 13: Rapport de Mise en Ligne – ENI Branding B2C in French, dated 21/11/2012, by Zenith, where opponent’s brand advertisements are planned and appear in different media of wide coverage (e.g. Yahoo!, Le Monde, Courrier International, Huffington Post, Télérama, Le Parisien, Orange).

 Encl. 14: a copy of the report Eni – Creative benchmark of Zenith, in English, dated 22/11/2012 reproducing different French media featuring the opponent’s logo/trade mark, per category (i.e. local print – free newspaper: Metro, 20 Minutes, Direct Matin in different cities (e.g. Lyon, Marseille, Lille), showing adverts like ; national print – news/pictures: News du Parisien, Le Monde magazine, Marianne; national print – newspaper: La Tribune, Le journal du dimanche; out of home – bus/subway/train station, showing pictures of buses/metro/principal train stations in France with adverts of the opponent’s brand, such as the one reproduced above).

 Encl. 15 – Encl. 22: 2017-2014, 2012-2010 and 2008 press releases about the opponent, including ‘Eni questions’, from The Economist (10/03/2017), where the opponent is referred to as ‘Italy’s oil major’; ‘Eni strikes ‘meaningful’ reserves off Mexico coast’ from the Financial Times (24/03/2017), where the opponent is defined as ‘Italian oil group’; ‘La italiana ENI encuentra petróleo en el primer pozo privado de México, from EL PAÍS (24/03/2017); ‘L’italien ENI se lance sur le marché français de l’electricité’ from Le Monde (date illegible); ‘Eni, investimenti per 21 miliardi in Italia nei prossimi 4 anni’ from Corriere della Sera (12/05/2017); ‘L’italien ENI lance enfin son megaproject gazier offshore au Mozambique’ (source and date illegible); ‘L’italien Eni à l’assaut du marché de l’éctricité en France’, Le Figaro (28/03/2017); pictures of the opponent’s mark in an advert dated 01/06/2017 from Corriere dello Sport, showing the opponent as top sponsor of the Italian football team – the sign appears as ; information in English from eni.com about the opponent’s activities in Germany in the natural gas market and in the production and marketing of products such as petrol, diesel, fuel oils and bitumen, with facts and figures from 2015 – 2018; ‘Eni looks to sell stake in gasfield off Egyptian coast’, Financial Times, 2016; ‘Eni, l’utile 2014 scende a 1,33 miliardi. Descalzi: “Ottimi risultati”, Bloomberg (18/02/2015); ‘Eni: Ein weiteres Opfer des Öilpreis-Verfalls‘, Handelsblatt (18/02/2015); ‘ENI annonce la découverte du “plus grand” gisement de gaz en Méditerranée de l’histoire’, Le Monde (30/08/2015); ‘Italian firm Eni poised to begin Arctic oil quest as Shell quits Alaska’, The Guardian (30/09/2015); ‘La stratégie d’ENI pour conquérir le marché du gaz français’, Challenges.fr (17/04/2014) -the opponent is defined as ‘géant du gaz en Italie mais fournisseur peu connu en France’; ‘Eni riallinea ai valori di mercato gli accordi sul gas russo’, Repubblica.it (23/05/2014); ‘Pétrole: ENI annonce un nouveau gisement’, Le Figaro (19/09/2014); ‘Eni befürchtet Erdgas-Engpässe in Italien’, Handelsblatt (06/02/2012); ‘Eni: nel 2011 6,89 mld di utili (+9%). La società alza il dividendo a 1,04 euro’, Il Sole 24 Ore (15/02/2012); ‘Eni launches its brand in the Belgian natural gas and power market’, Europétrole (17/10/2012). In this article it can be read: ‘Eni…will sell natural gas and power through the Eni brand to retail and business clients in the Belgian market, with the target to become one of the largest retail operators in the country and further consolidate its leadership position in the business market segment… Eni has been the largest supplier for business clients in the Belgian gas market… Eni is one of the largest integrated energy companies in the world, operating in oil and gas exploration & production, international gas transportation and marketing, power generation, refining and marketing, chemicals and oilfield services. Eni operates in 25 countries with 79,000 employees.’; ‘Eni ne produit pas de pétrole en Libye’, lefigaro.fr (16/03/2011); ‘Repsol et ENI gagnent un contrat gazier’, lefigaro.fr (23/12/2011); list of news from Europétrole dated 2010 dealing with the opponent; news item from the European Commission, ‘Commission welcomes ENI’s structural remedies proposal to increase competition in the Italian gas market’ (04/02/2010), in this communication the opponent is referred to as ‘the major Italian gas supplier’; ‘Gas, una tecnologia Eni per attraversare il Caspio’, Repubblica.it (11/10/2010); Venezuela entschädigt Eni für Öl-Reserven’, welt.de (19/02/2008).

 Exhibits 1, 5, 7, 9-10, 19-25, 32 and 34: invoices issued by the opponent or its corporate entities/authorised distributors: between 2013 and 18/01/2017 to clients in Italy (exhibit 1); the opponent indicates in its submissions that the invoices refer to ‘industrial oils and greases, lubricants and fuels’. In the invoices, concepts such as ‘MP GREASE CON POMPA’, ANTIFREEZE SPEZIAL’, ‘ENI i-SIGMA’, ‘ENI Rotra’, ‘ARNICA’, appear; 2011-2017 in Austria, with concepts such as ‘Agrotech’, ‘Sigma’, ‘Grease 30’, ‘Oso’ (exhibit 5); 2012-2017 in Portugal, with concepts such as ‘i-Sigma’, ‘Rotra’, ‘Autol’, ‘i-Sint’, ‘Arnica’, ‘Oso’ (exhibit 7); 2009-2015 in Spain, with concepts such as ‘Arnica’, ‘Blasia’, ‘Sigma’, ‘Rotra’, ‘Racing’, ‘Sint’, ‘Oso’ (exhibit 9); 2012-2017 in France, with concepts such as ‘Autol’ and ‘i-Sint’ (exhibit 10); for water heater maintenance services in Italy, 2017 and 2018 (exhibit 19); thermostat kit and related installation and maintenance services in Italy, 2018; handwritten translations into English for some terms (i.a. ‘termostato’ = ‘thermostat’) are provided (exhibit 20); insurance policies related to power and gas apparatus in Italy, 2016-2018 (exhibit 21); air conditioners and related installation and maintenance in Italy, 2018; handwritten translations into English for some terms (i.a. ‘Riscaldamento e Climatizzazione’’ = ‘heating and air conditioning’) are provided (exhibit 22); boilers and water heaters and related delivery, installation and maintenance services in Italy, 2017-2018 (exhibit 23); washing machines, dryers, refrigerators and related delivery, installation and maintenance services in Italy, 2017-2018; handwritten translations into English for some terms (i.a. ‘asciugatrice (Whirpool)’ = ‘dryer’; ‘lavatrice’ (Whirlpool) = ‘washing machine’) are provided (exhibit 24); lighting apparatus and systems in Italy (LED), 2017-2018 (exhibit 25); gas and power apparatus, assistance and maintenance (‘Pack Protection’) in France 2016-2018 (exhibit 32); description of the pack in exhibit 33; gas, assistance and maintenance services (‘Entretien chaudière’) in France 2016-2018 (exhibit 34). The sign appears on the top right hand side of the invoices.

 Exhibits 2, 3 and 4: undated product brochure and product specification (09/2014) in Italian, French and English for lubricants (‘i-Sint’, ‘i-Sigma’, ‘eni ROTRA’); adverts in Italian from omnimoto.it, French and English for lubricants (‘eni blue super + per TKM 690 Duke’, ‘i-Ride Moto’). The opponent’s logo appears on the products.

 Exhibit 6: catalogues in German for lubricants (e.g. ‘i-Sigma’, ‘Rotra’, ‘Multitech’, ‘Oso D’, ‘Arnica’, ‘Grease 30’, ‘Autol’, ‘Agrotech’, addressed to Austrian customers, undated and dated 04/2016. The opponent’s logo appears on the products.

 Exhibit 8: price lists in Portuguese for lubricants (2012, 2014, 2016).

 Exhibit 11: undated brochures in French about the opponent as a gas and power supplier, showing lubricants, industrial oils and greases, fuels. The opponent’s logo appears on the products.

 Exhibits 12, 13 and 14: press reviews in Italian related to corporate advertisement campaign ‘ENI con l’Italia’ May 2017 / ‘Più Servito ENI Station’ June 2016 (exhibits 12 and 13) and information from the opponent’s website (enistation.com) on the last one (exhibit 14).

 Exhibits 15-17: screenshots from corporate websites (ENI France - industrial oils and greases, lubricants, fuels (2018); ENI Austria -fuel (2018); ENI Germany -fuel, gas and power, 2018).

 Exhibit 18: invoices issued from opponent’s partners General Agency Service 2000 s.r.l., Gas Marketing srl and Alto Lazio Gas S.r.l. concerning boiler and water heaters and related installation and maintenance services to clients in Italy (2012 – 2017); handwritten translations into English for some terms (i.a. ‘caldaia’ = ‘boiler’) are provided.

 Exhibits 26-31: advertisement campaigns for water heaters and air conditioners, ‘Genius campaign’ – heating, and gas and power (Italy, 2017-2018); gas natural apparatus and maintenance services, installation and maintenance services of water heating systems (France, 2011-2014, 2016-2018); the opponent appears as a retailer in relation to some goods, such as household appliances and LED lighting.

1. 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.

The applicant requested that the opponent submit proof of use of European Union trade mark registrations No 9 428 038 , and No 2 051 548 .

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

The date of priority of the contested application is 15/11/2016. The opponent was therefore required to prove that the trade marks on which the opposition is based and in relation to which proof of use was requested, were put to genuine use in the European Union from 15/11/2011 to 14/11/2016 inclusive.

 

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

Class 4: Industrial oils and greases; lubricants; fuels (including motor spirit) electrical energy (EUTM No 9 428 038).

Class 9: Scientific, surveying, electric, measuring, signalling, checking (supervision), apparatus and instruments (EUTM No 2 051 548).

Class 11: Apparatus for heating, steam generating, refrigerating, drying, ventilating (EUTM No 9 428 038 and EUTM No 2 051 548).

Class 35: Advertising; business management; business administration; office functions (EUTM No 9 428 038 and EUTM No 2 051 548).

Class 37: Repair; installation services (EUTM No 9 428 038 and EUTM No 2 051 548).

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services (EUTM No 9 428 038).

Class 42: Scientific and industrial research; research and development, land and sea exploration; geological surveys (EUTM No 2 051 548).

According to Article 10(3) EUTMDR, 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.

Most of the evidence provided refers to the place (the European Union), see for example most of the press articles in encl. 15 – encl. 22 and the invoices in exhibits 1, 5, 7, 9-10, 19-25, 32 and 34. Part of the evidence also falls within the relevant period. In relation to the applicant’s views as to disregarding evidence dated 2017 and 2018 it must be noted that 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 known 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). Thus, in the present case, part of the evidence referring to the opponent’s brand in 2017 can be taken into account because it refers to periods that are close in time to the relevant one (i.e. some months after the priority date of the contested application).

Regarding the magnitude of the use, it can be deduced from the documentation submitted that the opponent has seriously tried to achieve a commercial position on the relevant market, i.e. the energy market. Finally, in relation to the nature of the use, the evidence provided refers to ‘ENI’ as a brand and as a company, and to the ENI logo, and sign , which are mostly used to refer to the opponent’s brand. Even though the evidence shows certain variations (e.g. in some adverts, catalogues and products only half of the logo is shown; change of the typeface in EUTM No 2 051 548 and the omission of the red line), the ENI logo depicted in the materials is as registered, and the other variations mentioned cannot be regarded as altering the distinctive character of the mark as registered.

It must be borne in mind that the use of a sign can serve more than one purpose at the same time, which is particularly the case where the name or symbol that identifies a firm is the same under which products or services are marketed. The effective use as a trade mark requires that it is not for purely illustrative or merely promotional purposes of the products or services, and that it is in line with its essential function (guaranteeing the identity of the origin of the products or services for which it has been registered, 03/11/2003, C-40/01, Minimax, EU: C: 2003: 145, §43).

The Court has confirmed that the condition of genuine use of a registered trade mark may be satisfied both where it has been used as part of another composite mark or where it is used in conjunction with another mark, even if the combination of marks is itself registered as a trade mark (18/04/2013, C-12/12, Colloseum Holding, EU:C:2013:253, § 36). Similarly, the Court has clarified that use can be genuine where a figurative mark is used in conjunction with a word mark superimposed over it, even if the combination of those two marks is itself registered, to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered (18/07/2013, C-252/12, Specsavers, EU:C:2013:497, § 31).

However, the evidence filed by the opponent does not show genuine use of the trade marks for all the goods and services in respect of which proof of use was requested.

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.

The evidence submitted shows no or little use of the earlier marks in relation to goods in Classes 4, 9 and 11 (electrical energy; different types of apparatus and instruments) and services in Class 35 (business support services), 37 (repair and installation services) and 42 (i.a. scientific and technological services, land and sea exploration; geological surveys).

In respect of electrical energy in Class 4 and some of the goods in Classes 9 (electric apparatus and instruments) and 11 (e.g. apparatus for heating and drying), as well as their related installation and repair services in Class 37, genuine use cannot be concluded without resorting to probabilities or suppositions. Although the evidence shows that the opponent is active in the electricity sector and offers services in relation to some household appliances, it is not possible to conclude that the evidence concerning such goods and services (e.g. some references within encl. 15 – encl. 22 and the invoices attached exhibits 19-25) is sufficient, since it consists of some general statements (as per encl. 15 – encl. 22) or include references to other commercial brands (the invoices), like Whirlpool for the products, and the services are anecdotal and mostly rendered outside the relevant period.

In respect of the services in Class 42, in particular land and sea exploration, geological surveys covered by EUTM No 2 051 548, even though the opponent is active in the production of petrol-related products, and the aforementioned activities are inherent to some of the activities of this sector, it is not clear from the evidence that such services are offered by the opponent to third parties.

It follows that the evidence submitted does not prove genuine use of earlier European Union trade mark registration No 2 051 548 in respect of the goods and services on which the opposition is based and which were subject to the proof of use requirement and related assessment.

Genuine use of the earlier marks can therefore only be ascertained in respect of some of the goods covered by European Union trade mark registration No 9 428 038 in Class 4, namely: lubricants; fuels (including motor spirit).

In respect of the lubricants, and the applicant’s remarks, although the invoices do not always name this specific product, they do include references (e.g. ‘i-Sint’, ‘i-Sigma’) which appear in the catalogues as lubricants (for cars, motorbikes and other vehicles). Therefore, the nature and correlation between the respective product/references is clear.

Therefore, the Opposition Division will only consider the abovementioned goods in its further examination of the opposition in respect of EUTM No 9 428 038.

2. Reputation

According to the opponent, earlier European Union trade mark registration No 9 428 038 has a reputation in the European Union in relation to goods in Class 4.

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

In the present case the date of priority of the contested application is 15/11/2016, as already indicated in the previous assessment concerning proof of use. Therefore, the opponent was required to prove that the relevant earlier trade mark had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation and in respect of which genuine use has been considered proven, namely, the following:

Class 4: Lubricants; fuels (including motor spirit).

The opposition is directed against the following goods and services:

Class 9: Apparatus and devices for energy management; programming, regulating and controlling apparatus and devices for use with apparatus for heating, ventilating, air conditioning, hot water producing, water supply and drying purposes; interfaces for home automation applications; electric or electronic apparatus for the remote control of home automation functions, for climate control equipment.

Class 35: Retailing, wholesaling, direct sale and bringing together, for others, including via the Internet, of apparatus and installations for heating, ventilating, air conditioning, drying, steam generating, water supply including spare parts for all the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

Class 37: Installation, maintenance, commissioning, repair and servicing of apparatus for heating, ventilating, air conditioning, drying, steam generating; providing of information and consultancy relating to the installation, maintenance, repair and servicing of apparatus for heating, ventilating, air conditioning, drying, steam generating.

Class 42: Technical information and consultancy for apparatus and installations for heating, ventilating, air conditioning, drying and water supply purposes; providing of technical information and advice relating to the production and consumption of electrical, solar, geothermal, thermal, climatic and renewable energy; technical information and consultancy for setting up and installing apparatus and installations for providing and/or generating and/or supplying energy; studies and technical consultancy on the distribution of energy consumption; technical assessment and appraisal on energy consumption; design surveys in relation to the installation and implementation of apparatus and installations in the field of environmental engineering; technical diagnosis of apparatus for heating, ventilating, air conditioning, drying, steam generating.

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

As is evident from the materials listed above, the opponent’s company, ENI, is a leading Italian company in the energy field with an active business presence in the European Union, being particularly known in Italy (referred to in the evidence submitted as, i.a., ‘Italy’s largest oil and gas company’).

It is also clear from the evidence that this earlier trade mark has been subject to long-standing and intensive use and is generally known in the Italian market as a whole and that it enjoys a consolidated position among the leading brands in the energy field, in particular oil and natural gas. As the opponent points out, the trade mark presented above has been continuously used since its creation as a logo of the company in 1952.

These findings have been attested by diverse independent sources, including reliable international media, various printed and online publications and global brand ratings, which are pertinent in the present case. Furthermore, the revenues figures illustrated in the Italian segment and global ratings (e.g. encl. 6a and encl. 6b), the presence of the brand in sponsorships and other opponent’s advertisement investments, and the market share, as well as the number of references in the press to the success of the opponent as one of the leading energy companies at the global level (i.a. encl. 15 – encl. 22), all unequivocally show that the mark enjoys a high degree of recognition among the relevant public, at least among the Italian consumers. This leads to the conclusion that the earlier trade mark enjoys reputation in the relevant territory, since the Court has clarified that, for an earlier European Union trade mark, reputation throughout the territory of a single Member State may suffice (06/10/2009, C-301/07, Pago, EU:C:2009:611 § 20).

On the basis of the above, the Opposition Division concludes that the earlier trade mark enjoys strong reputation, at least or in particular in Italy, in the fields of oil and gas production, and specifically in relation to the goods in Class 4 for which genuine use was considered proven, namely: lubricants; fuels (including motor spirit).

The Opposition Division will consequently continue examining the opposition on the basis of Article 8(5) EUTMR and the goods referred to above.

REPUTATION – ARTICLE 8(5) EUTMR

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

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

 The signs must be either identical or similar.

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

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

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

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

Regarding the requirement of the reputation of the earlier trade mark, this has been considered fulfilled in relation to some of the goods for which reputation was claimed.

Therefore, the Opposition Division will now examine the rest of the requirements established in Article 8(5) EUTMR.

a) 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).

Both the earlier mark and the contested sign are purely figurative marks. Despite the arguments of the parties as to what the images represent, what matters for the comparison between the signs is the likely perception of the relevant public in the relevant territory.

Against this background, the earlier mark consists of the depiction of the whole body of a fantastic animal-like creature with six legs, which may resemble a dog (a ‘six-legged dog’, as claimed by the opponent). Its head with an open mouth is turned to the right, breathing out a big red flame. Several details of the creature can be distinguished, like teeth, or fur on the creature’s back and legs.

The contested sign consists of the depiction of a stylised head of another creature, the nature of which is uncertain, and which could be perceived as an eagle or a dragon, looking to the right with an open beak or mouth. Out of the mouth, a curved line appears, which may be perceived in different ways, such as a tongue, breath or a small flame.

It should be noted at the outset, that consumers rarely have the chance to compare signs side by side. On the contrary, they must trust on their imperfect recollection of the signs, where as a rule of thumb the most prominent features of the signs are remembered. Thus, possible similarities/differences between signs, which might be identified only upon detailed comparison having them side by side are not relevant, but it is the overall impression created by the signs taken alone that is of importance.

Aurally, purely figurative signs are not subject to a phonetic assessment. Therefore, it is not possible to compare the signs in conflict aurally.

Visually, it should be recalled that when comparing purely figurative signs, similarity may be found when the signs match in one separately recognisable element, or have the same or a similar contour.

In the present case, the earlier mark shows the whole body of a creature with six legs with noticeable details and the impression of motion, while the contested sign only displays a head of an unidentified animal or creature in geometric plain lines. The signs differ as well in the use of the colours; while in the earlier mark red is used, the contested sign is all black and white.

That said, following the decision of the Board of Appeal in case R 2643/2019‑2, the signs display a low degree of visual similarity on account of the similarities between the head of the creature depicted in the earlier mark and the contested sign. The same degree of similarity can be established conceptually, where reference is made to the previous assertions concerning the semantic content conveyed by the marks. Even though the signs in conflict could be seen as representing different kinds of creatures, that is, something resembling a six-legged dog in the earlier mark; an eagle or dragon in the contested sign, there is a low conceptual similarity for the relevant public between the signs at issue insofar as they evoke, in each case, an imaginary creature (15/03/2018, T-151/17, DEVICE OF A WINGED BULL (fig.) / DEVICE OF A GRIFFIN (fig.) et al., EU:T:2018:144, § 41-45, cited by the opponent).

Taking into account that the signs have been found similar to some extent in at least one aspect of the comparison, the examination of the existence of a risk of injury will proceed.

b) The ‘link’ between the signs

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

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

 the degree of similarity between the signs;

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

 the strength of the earlier mark’s reputation;

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

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

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

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

According to the Court of Justice of the European Union,

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

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

The Court of Justice has also noted,

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

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

The visual and conceptual similarities between the marks are low, and an aural comparison is not possible, as illustrated previously.

Regarding the goods and services in dispute, reputation was found, as per the evidence submitted, for some of the opponent’s goods in Class 4.

Although the goods and services designated by the marks at issue may belong to different sectors of trade, this is not, in itself, sufficient to exclude the possibility of the existence of a link. Proximity between sectors is considerably more flexible than the similarity between goods and services and can extend much further in a given case. It generally requires that the two undertakings come into contact on the market to a significant extent. It depends on whether the public considers it possible that the goods or services that differ but bear a similar designation come from undertakings with commercial links. Indicators may be common aspects between the goods or services of the undertakings on the markets, and common features in the distribution channels and the usability of the products and services.

Bearing in mind the foregoing, it has been proven that the opponent is active in the energy secto, and reputation has been concluded in respect of certain goods in Class 4, namely lubricants and fuels (the latter including energy sources such as oil and gas). In that respect, it is considered that the relevant public in respect of some of the applicant’s goods and services in Classes 9 and 42 may overlap to some extent.

The relationship between the opponent’s earlier mark and its activities originates from a reputation that is associated not only with the specific goods under the mark, but can go beyond them. A company specialising, inter alia, in diverse products for the energy sector could easily extend its brand to offer some of the applicant’s goods and services in the same field, also under collaboration or partnership with third parties. Current environmental challenges and the continuous research and investment for renewable sources of energy favour the exploration of new resources and thus the expansion of entities traditionally focused on customary energy sources to new market segments and projects covering a wide range of activities in this regard.

In light of the aforementioned, the Opposition Division considers that, although the similarities between the signs are very slight, a link between them in respect of the opponent’s reputed goods in the energy field and those of the applicant in the same sector, namely apparatus and devices for energy management in Class 9 and providing of technical information and advice relating to the production and consumption of electrical, solar, geothermal, thermal, climatic and renewable energy; technical information and consultancy for setting up and installing apparatus and installations for providing and/or generating and/or supplying energy; studies and technical consultancy on the distribution of energy consumption; technical assessment and appraisal on energy consumption; design surveys in relation to the installation and implementation of apparatus and installations in the field of environmental engineering in Class 42 cannot safely be excluded.

In respect of the applicant’s apparatus and devices for energy management in Class 9, these may cover a wide scope of products, from consumer goods such as a computer UPS (uninterruptible power supply) to industrial energy management systems, automation systems that collect energy measurement data from the field and making it available to users through graphics, online monitoring tools, and energy quality analysers, thus enabling the management of energy resources, a sector where companies such as the opponent’s and its peers and competitors may step in. A similar reasoning can be made in respect of the energy-related services mentioned above in Class 42. It is not rare that reputed companies in the energy field, whatever the specific or dominant segment, offer informed technical opinions, assessment and analysis, studies and advice in the relevant sector.

The Opposition Division, however, does not find it plausible that a link between the conflicting marks may occur in respect of the rest of the applicant’s goods and services, namely:

Class 9: Programming, regulating and controlling apparatus and devices for use with apparatus for heating, ventilating, air conditioning, hot water producing, water supply and drying purposes; interfaces for home automation applications; electric or electronic apparatus for the remote control of home automation functions, for climate control equipment.

Class 35: Retailing, wholesaling, direct sale and bringing together, for others, including via the Internet, of apparatus and installations for heating, ventilating, air conditioning, drying, steam generating, water supply including spare parts for all the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

Class 37: Installation, maintenance, commissioning, repair and servicing of apparatus for heating, ventilating, air conditioning, drying, steam generating; providing of information and consultancy relating to the installation, maintenance, repair and servicing of apparatus for heating, ventilating, air conditioning, drying, steam generating.

Class 42: Technical information and consultancy for apparatus and installations for heating, ventilating, air conditioning, drying and water supply purposes; technical diagnosis of apparatus for heating, ventilating, air conditioning, drying, steam generating.

The fact that the signs are similar to the extent that they represent an imaginary creature facing to the right and the fact that the earlier mark enjoys a reputation for goods in Class 4 is not sufficient to conclude that the relevant public is likely to establish a mental association between the signs concerned in relation to the remaining contested goods and services listed above, which are controlling devices in relation to household/industrial related products for heating, ventilating, air conditioning, drying, steam generating, or water supply; retail, installation and maintenance, and consultancy services thereto.

By their specific nature and purpose of use, which have an impact on the target public and the related distribution channels, which will be different, the above goods and services are sufficiently removed from the opponent’s reputed goods, contrary to the opponent’s statements, for the link between the signs to be likely to occur. Indeed, given the distance between them, it is unlikely that consumers will make an immediate link between these contested goods and services and the opponent’s reputed goods despite the degree of reputation of the earlier mark in the territory of reference.

Bearing this in mind, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that in relation to the remaining contested goods and services in Classes 9, 35, 37 and 42 it is unlikely that the relevant public will make a mental connection between the signs in dispute, given the remote similarity between the signs themselves and the different specialised nature and public of the remaining contested goods and services, which makes them too far removed from the opponent’s reputed goods for a ‘link’ to be established. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected in respect of the abovementioned contested goods and services.

The examination of the opposition under Article 8(5) EUTMR will therefore continue only in relation to those goods and services in Classes 9 and 42 for which it has been determined above that consumers would be likely to establish a mental ‘link’ between the contested sign and the earlier mark. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

c) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events. The opponent claims, essentially, the following:

The applicant is a competitor of the opponent, and the fact that a competitor adopts a mark that constitutes an element of a reputed brand known for decades for the same products and services, clearly means that this is done to circumvent the usual defences that consumers place between themselves and new products and thus benefit from the advantage competitive edge and the degree of familiarity of the relevant public with the well-known brand.

The dog’s head spitting fire from its mouth is a very imaginative element thus determining the risk that recipients of the message may associate the products under both signs. Theoretical risk is sufficient in that regard and in the present case, the existence of the link leads to the applicant’s brand taking unfair advantage of the reputation of the pre-existing competitor for many years on the market.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

 The sign applied for is sufficiently similar to the opponent’s logo that the relevant consumers will associate them with each other.

 The opponent’s company operates in the same field for many years; communication and marketing channels are the same, and it will be easy for consumers to associate the products of the respective entities.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

Upon encountering the sign used for goods and services in the energy sector, it cannot be ruled out, even if the similarities between the signs are significantly moderate, that the relevant consumer, which may coincide, could make a mental connection with the opponent’s logo, in particular on account of the reputation of the opponent’s mark, not necessarily upon an eventual competitive relationship, which in the opinion of the Opposition Division is not clear from the evidence provided. However, due to the well-known opponent’s business, which may include or be related or easily expanded to the relevant contested goods and services in Classes 9 and 42, this mental connection might be made.

Bearing in mind the foregoing, it is considered that, in view of the special connections between the earlier reputed goods and the contested goods and services for which a ‘link’ exists, a substantial part of consumers, at least in Italy, may decide to turn to the applicant’s contested goods and services due to the mental association to the opponent’s reputed mark, thus misappropriating their attractive powers (image transfer) and advertising value. This may stimulate the sales of the applicant’s goods and services to an extent which may be disproportionately high in comparison with the size of its own promotional investment and thus lead to the unacceptable situation where the applicant is allowed to take a ‘free-ride’ on the investment of the opponent in promoting and building-up goodwill for its mark.

d) Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods and services:

Class 9: Apparatus and devices for energy management.

Class 42: Providing of technical information and advice relating to the production and consumption of electrical, solar, geothermal, thermal, climatic and renewable energy; technical information and consultancy for setting up and installing apparatus and installations for providing and/or generating and/or supplying energy; studies and technical consultancy on the distribution of energy consumption; technical assessment and appraisal on energy consumption; design surveys in relation to the installation and implementation of apparatus and installations in the field of environmental engineering.

The opposition is not successful insofar as the remaining contested goods and services in Classes 9, 35, 37 and 42 are concerned. The examination of the opposition will therefore continue for the remaining contested goods and services upon the grounds of Article 8(1)(b) and (a) EUTMR, also invoked by the opponent.

The Opposition Division notes that, as mentioned above, the opponent only invoked Article 8(1)(a) EUTMR in the notice of opposition in respect of the earlier marks relevant at this stage of the examination, namely EUTMs No 9 428 038 and No 12 554 747, both for the figurative mark , with the latter one not being subject to the proof of use requirement.

Although the specific conditions under Article 8(1)(a) and (b) EUTMR differ, they are related. Consequently, in oppositions dealing with Article 8(1) EUTMR, if Article 8(1)(a) EUTMR is the only ground claimed but identity between the signs and/or the goods/services cannot be established, the Office will still examine the case under Article 8(1)(b) EUTMR, which requires at least similarity between signs and goods/services and likelihood of confusion (see Guidelines for Examination in the Office, Part C, Opposition, Section 2, Chapter 1: General Principles). Since the signs in dispute are not identical and Article 8(1)(a) can thus not be applied, the Opposition Division will proceed with the examination of the opposition under 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 upon which the opposition is based and/or in respect of which proof of use has been considered proven are the following:

Class 4: Lubricants; fuels (including motor spirit) (EUTM No 9 428 038).

Class 9: Scientific, surveying, measuring, signalling, checking (supervision), apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (EUTM No 12 554 747).

The remaining contested goods and services are the following:

Class 9: Programming, regulating and controlling apparatus and devices for use with apparatus for heating, ventilating, air conditioning, hot water producing, water supply and drying purposes; interfaces for home automation applications; electric or electronic apparatus for the remote control of home automation functions, for climate control equipment.

Class 35: Retailing, wholesaling, direct sale and bringing together, for others, including via the Internet, of apparatus and installations for heating, ventilating, air conditioning, drying, steam generating, water supply including spare parts for all the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.

Class 37: Installation, maintenance, commissioning, repair and servicing of apparatus for heating, ventilating, air conditioning, drying, steam generating; providing of information and consultancy relating to the installation, maintenance, repair and servicing of apparatus for heating, ventilating, air conditioning, drying, steam generating.

Class 42: Technical information and consultancy for apparatus and installations for heating, ventilating, air conditioning, drying and water supply purposes; technical diagnosis of apparatus for heating, ventilating, air conditioning, drying, steam generating.

An interpretation of the wording of the applicant’s list of services in Class 35 is required to determine the scope of protection of these services.

The term including’, used in the aforementioned list of services, indicates that the specific services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

The contested programming, regulating and controlling apparatus and devices for use with apparatus for heating, ventilating, air conditioning, hot water producing, water supply and drying purposes; interfaces for home automation applications; electric or electronic apparatus for the remote control of home automation functions, for climate control equipment in Class 9 coincide or overlap with, as the case may be, with the opponent’s apparatus and instruments for regulating or controlling electricity of EUTM No 12 554 747 in the same class. Therefore, they are identical.

Concerning the contested services in Class 35 (retailing, wholesaling, direct sale and bringing together, for others, including via the Internet, of apparatus and installations for heating, ventilating, air conditioning, drying, steam generating, water supply including spare parts for all the aforesaid goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods), and the opponent’s goods in Classes 4 and 9, it has to be taken into account that apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail (and wholesale by analogy) 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. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical or have any degree of similarity. This condition is not fulfilled in the present case, since the goods at issue are dissimilar.

In respect of the contested services in Classes 37 and 42, they concern the installation, maintenance and repair as well as the provision of technical information and consultancy in respect of heating, ventilating, air conditioning, drying, steam generating and water supply apparatus. These services have no relevant point in common with the opponent’s goods in Classes 4 and 9.

Although, by reason of their very nature, goods are generally different from services, it nevertheless remains the case that they can be complementary, in the sense that, for example, the maintenance of the goods complements the goods themselves, or that services may have the same purpose or use as the goods, and thus compete with each other.

However, the contested services in Class 37 relate to heating installations and related goods; thus, to goods that are different from the opponent’s goods in Classes 4 and 9. The contested services are offered by specialised companies, different from the ones offering the goods in Classes 4 and 9 as specified in the earlier marks. It is, therefore, very unlikely that the manufacturer of very specific goods from a completely different industrial sector would provide installation and repair service in another, also specialised sector, which excludes complementarity in this case. It should be noted, in this respect, that complementary goods or services are those which are closely connected in the sense that one is indispensable or important for the use of the other, so that consumers may think that the same undertaking is responsible for both (24/09/2008, T-116/06, O Store, EU:T:2008:399, § 52). In the repair field, it is not common that those offering repair services also manufacture identical or similar goods to those that they repair (15/12/2010, T-451/09, Wind, EU:T:2010:522, § 26), let alone goods, such as those of the opponent’s, that are not similar. Analogous considerations to those above would apply in respect of the contested services in Class 42.

Therefore, and in absence of any convincing arguments to the contrary by the opponent, it is concluded that the contested services in Classes 35, 37, and 42 are dissimilar to the opponent’s goods in Classes 4 and 9.

b) Relevant public — degree of attention

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

In the present case, the goods found to be identical are directed at the public at large and at professional public with specific knowledge or expertise in, for instance, home automation. Given the specialised and technical nature of the relevant goods, the relevant public’s degree of attention is considered to be higher than average.

c) The signs

The figurative signs have already been compared above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR.

d) Distinctiveness of the earlier marks

According to the opponent, earlier EUTM No 9 428 038 has a reputation for goods in Class 4 in the European Union, and a general claim as to the enhanced distinctiveness of the opponent’s logo could be considered as having been made.

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier marks as well as the reputation of the mark above have already been assessed under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for the purposes of Article 8(1)(b) EUTMR.

While EUTM No 9 428 038 has been considered reputed in relation to the goods in Class 4 that have been compared in section a) above, no enhanced distinctiveness of the opponent’s sign in respect of goods in Class 9 has been found as per the evidence submitted. Therefore, the assessment of the distinctiveness of earlier EUTM No 12 554 747 will rest on its distinctiveness per se. Given that it conveys no meaning for any of the goods in question from the perspective of the public in the relevant territory, its distinctiveness must be seen as normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark, and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services are partly identical and partly dissimilar. Those goods found to be identical target the public at large and the professional public, with a higher than average degree of attention. The earlier marks’ degree of distinctiveness is normal in respect of goods in Class 9 and high concerning the goods in Class 4. The signs are visually and conceptually similar to a low degree, while the aural comparison is not possible.

Even taking into account the principle of imperfect recollection, according to which average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them, in the present case, the signs’ remote visual and conceptual similarities make it very unlikely the signs to be confused or associated by the relevant public, who will display a higher than average degree of attention. Even if the signs show some coinciding features, they may be identified only upon an analysis of the signs made side by side, while it is the immediate impression created by them that is relevant for the consumer.

Against this background, weighing up all the relevant factors in the present case, the Opposition Division does not find it plausible that the relevant consumer, who, as already mentioned, will be more than reasonable informed, observant and circumspect, might believe that any identical goods come from the same undertaking or economically linked undertakings.

The conclusion above cannot be challenged by the enhanced distinctiveness of EUTM No 9 428 038 in respect of goods in Class 4, since these goods and the contested goods in Class 9 (as well as the remaining contested services in Classes 35, 37 and 42 as established above) are dissimilar, so the outcome of no likelihood of confusion remains.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as it is based on this ground and against the remaining contested goods and services.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and part of the goods and services are obviously not identical.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs. Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

María del Carmen COBOS PALOMO

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

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.