OPPOSITION No B 2 935 768

Ulugbekhon Maksumov, International House 24, Holborn Viaduct, London EC1A 2BN, United Kingdom (opponent)

a g a i n s t

1141931 Ontario Ltd., 3605 Weston Road, ON M9L 1V7 Toronto, Canada (applicant), represented by Taxhet IP Kanzlei für Gewerblichen Rechtsschutz, Friesenstraße 5-15, 50670 Köln, Germany (professional representative)

On 20/12/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 935 768 is partially upheld, namely for the following contested goods and services:

Class 6: Vaults and safes [metal or non-metal]; electronic safes; metal cash deposit boxes.

Class 12: Vehicles of all kinds, in particular special purpose and armored vehicles; apparatus for locomotion by land, air or water; parts and fittings for vehicles of all kinds, namely for special purpose and armored vehicles, automotive vehicles, vehicles for use on land, vans, trucks, handling carts, motorcycles, vehicles for use in the air, amphibious vehicles, water vehicles, rail vehicles, railway carriages, bicycles; parts and fittings for vehicles of all kinds, namely drives, gears, brakes, air brakes, motors and engines, chassis, suspensions and shock absorbers, steering mechanisms, tyres, wheels and rims, driver cabs; parts and fittings for aircraft and watercraft of all kinds, namely brakes, air brakes, chassis, suspensions and shock absorbers, steering mechanisms, tyres, wheels and rims, driver cabs; none of the aforementioned goods are relaed to apparatus for locomotion by water, and parts and fitings therfor, namely boats, boat hulls, screw-propellers for boats, steering gears for boats, hoods for water vehicles, oars and rowlocks, wooden decking, bicycle towing arragements, drain plugs, engine mounts, sensor brackets, universal mounting brackets, brackets for tube rod holders, brackets for fishing seats, oar mounting brackets, oarlock brackets, fishing lure holders, cup holders, trolling rod holders, rod holders, cuhions adapted for use with boat seats, boat loaders, boat trolleys, canoe carts, oarlocks, oar sleeves, safety carlocks, water skiing brackets (boat accessories), pulpit handles (boat accessories), steering consoles, windscreens nautical, protective covers for water vehicles, covers for water vehicles, paddles for canoes.

Class 19: Concrete vaults.

Class 35: Wholesaling and retailing of vehicles of all kinds, in particular of special purpose and armored vehicles, of apparatus for locomotion by land, air or water, of parts and fittings for vehicles of all kinds, in particular for special purpose and armored vehicles.

Class 37: Maintenance, servicing, tuning and repair of vehicles and engines; fitting of armour to vehicles.

Class 40: Custom manufacture and assembly services, in particular custom assembling of armoured vehicles, automobile bodies and chassis and parts thereof.

Class 42: Engineering; vehicle design services, especially related to armoured vehicles; development of vehicles, especially of armoured vehicles; research in the field of vehicles, especially in the field of armoured vehicles; product development for vehicle construction and for vehicle body construction.

Class 45: Security services, especially armed security services.

2. European Union trade mark application No 16 934 606 is rejected for all the above goods and services. It may proceed for the remaining goods and services, namely:

Class 20: Furniture, especially furniture for storing valuables, cash and guns; filing cabinets; chests.

Class 35: Wholesaling and retailing of drives, gears, brakes, air brakes, motors and engines, chassis, suspensions and shock absorbers, steering mechanisms, tyres, wheels and rims, driver cabs; arranging of contracts for the purchase and sale of goods and/or services, for others; sales promotion and marketing, in particular in connection with vehicles, vehicle parts, fittings, armour and other goods; providing of trading and business information and consultancy, in particular in the business area of vehicles, vehicle parts, fittings and armour; management and compilation, and collection and systemisation of data in computer databases, in particular in connection with vehicles, vehicle parts, fittings and armour; loyalty, incentive and bonus program services; advertising; business management; business administration; office functions; none of the aforementioned services are related to retail services relating to vehicles, apparatus for locomotion by water, boats and boat accesories, online advertising services relating to apparatus for locomotion by water, boats and boat accessories, online consumer information relating to apparatus for locomotion by water, boats and boat accessories, compilation and display of a variety of goods, enabling customers and users to obtain information about and purchase goods via the internet, relating to apparatus for locomotion by water, boats and boat accessories.

Class 36: Safe deposit services; cash management services; financial management of cash accounts; fund and money transfer; coin counting and sorting; ATM banking services.

Class 37: Safe and vault maintenance and repair [strong-room maintenance and repair]; providing information relating to safe maintenance and repair.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 934 606 for the word mark ‘INKAS’. The opposition is based on European Union trade mark registration No 16 256 091 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) and Article 8(5) EUTMR.

PRELIMINARY REMARK

On 02/11/2017, the applicant filed a limitation request by adding a specification at the end of the list of goods and services in Classes 12 and 35 to exclude products and services related to certain goods. The application was limited accordingly, the opponent was duly informed and the opposition was maintained.

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

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

a) The goods and services

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

Class 6: Metallic armoured doors; armoured materials of metal; armoured windows having metal frames; armoured doors of metal.

Class 12: Armored vehicles; armoured vehicles; armoured cars; armoured land vehicles; armoured bodies for vehicles; military vehicles for transport; vehicles for transport (military -); none of the aforementioned goods are related to apparatus locomotion by water and parts and fittings therefore; none of the aforementioned goods are related to apparatus for locomotion by water and parts and fittings therefor, boats, boat hulls, screw-propellers for boats, steering gears for boats, oars and rowlocks, wooden decking, bicycle towing arrangements, drain plugs, brackets for tube rod holders, brackets for fishing seats, oar mounting brackets, oarlock brackets, fishing lure holders, cup holders, trolling rod holders, rod holders, cushions adapted for use with boat seats, boat loaders, boat trolleys, canoe carts, oarlocks, oar sleeves, safety oarlocks, water skiing brackets (boat accessories), pulpit handles (boat accessories), steering consoles, windscreens (nautical), protective covers for vehicles for locomotion by water, covers for vehicles or paddles for canoes.

Class 13: Armored turrets.

Class 39: Armored-car transport; armored car transport; armoured vehicle transport; armoured car transport.

Following the limitation mentioned in the preliminary remark above, the contested goods and services are the following:

Class 6: Vaults and safes [metal or non-metal]; electronic safes; metal cash deposit boxes.

Class 12: Vehicles of all kinds, in particular special purpose and armored vehicles; apparatus for locomotion by land, air or water; parts and fittings for vehicles of all kinds, namely for special purpose and armored vehicles, automotive vehicles, vehicles for use on land, vans, trucks, handling carts, motorcycles, vehicles for use in the air, amphibious vehicles, water vehicles, rail vehicles, railway carriages, bicycles; parts and fittings for vehicles of all kinds, namely drives, gears, brakes, air brakes, motors and engines, chassis, suspensions and shock absorbers, steering mechanisms, tyres, wheels and rims, driver cabs; parts and fittings for aircraft and watercraft of all kinds, namely brakes, air brakes, chassis, suspensions and shock absorbers, steering mechanisms, tyres, wheels and rims, driver cabs; none of the aforementioned goods are relaed to apparatus for locomotion by water, and parts and fitings therfor, namely boats, boat hulls, screw-propellers for boats, steering gears for boats, hoods for water vehicles, oars and rowlocks, wooden decking, bicycle towing arragements, drain plugs, engine mounts, sensor brackets, universal mounting brackets, brackets for tube rod holders, brackets for fishing seats, oar mounting brackets, oarlock brackets, fishing lure holders, cup holders, trolling rod holders, rod holders, cuhions adapted for use with boat seats, boat loaders, boat trolleys, canoe carts, oarlocks, oar sleeves, safety carlocks, water skiing brackets (boat accessories), pulpit handles (boat accessories), steering consoles, windscreens nautical, protective covers for water vehicles, covers for water vehicles, paddles for canoes.

Class 19: Concrete vaults.

Class 20: Furniture, especially furniture for storing valuables, cash and guns; filing cabinets; chests.

Class 35: Wholesaling and retailing of vehicles of all kinds, in particular of special purpose and armored vehicles, of apparatus for locomotion by land, air or water, of parts and fittings for vehicles of all kinds, in particular for special purpose and armored vehicles, of drives, gears, brakes, air brakes, motors and engines, chassis, suspensions and shock absorbers, steering mechanisms, tyres, wheels and rims, driver cabs; arranging of contracts for the purchase and sale of goods and/or services, for others; sales promotion and marketing, in particular in connection with vehicles, vehicle parts, fittings, armour and other goods; providing of trading and business information and consultancy, in particular in the business area of vehicles, vehicle parts, fittings and armour; management and compilation, and collection and systemisation of data in computer databases, in particular in connection with vehicles, vehicle parts, fittings and armour; loyalty, incentive and bonus program services; advertising; business management; business administration; office functions; none of the aforementioned services are related to retail services relating to vehicles, apparatus for locomotion by water, boats and boat accesories, online advertising services relating to apparatus for locomotion by water, boats and boat accessories, online consumer information relating to apparatus for locomotion by water, boats and boat accessories, compilation and display of a variety of goods, enabling customers and users to obtain information about and purchase goods via the internet, relating to apparatus for locomotion by water, boats and boat accessories.

Class 36: Safe deposit services; cash management services; financial management of cash accounts; fund and money transfer; coin counting and sorting; ATM banking services.

Class 37: Maintenance, servicing, tuning and repair of vehicles and engines; fitting of armour to vehicles; safe and vault maintenance and repair [strong-room maintenance and repair]; providing information relating to safe maintenance and repair.

Class 40: Custom manufacture and assembly services, in particular custom assembling of armoured vehicles, automobile bodies and chassis and parts thereof.

Class 42: Engineering; vehicle design services, especially related to armoured vehicles; development of vehicles, especially of armoured vehicles; research in the field of vehicles, especially in the field of armoured vehicles; product development for vehicle construction and for vehicle body construction.

Class 45: Security services, especially armed security services.

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

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

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

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

The Opposition Division also notes that the specification of the goods in Class 12 of both the earlier mark and the contested sign contains essentially the same limitation of the goods at the end of the class, namely none of the aforementioned goods are related to apparatus locomotion by water and parts and fittings therefore; none of the aforementioned goods are related to apparatus for locomotion by water and parts and fittings therefor, boats, boat hulls, screw-propellers for boats, steering gears for boats, oars and rowlocks, wooden decking, bicycle towing arrangements, drain plugs, brackets for tube rod holders, brackets for fishing seats, oar mounting brackets, oarlock brackets, fishing lure holders, cup holders, trolling rod holders, rod holders, cushions adapted for use with boat seats, boat loaders, boat trolleys, canoe carts, oarlocks, oar sleeves, safety oarlocks, water skiing brackets (boat accessories), pulpit handles (boat accessories), steering consoles, windscreens (nautical), protective covers for vehicles for locomotion by water, covers for vehicles or paddles for canoes in the earlier mark and none of the aforementioned goods are relaed to apparatus for locomotion by water, and parts and fitings therfor, namely boats, boat hulls, screw-propellers for boats, steering gears for boats, hoods for water vehicles, oars and rowlocks, wooden decking, bicycle towing arragements, drain plugs, engine mounts, sensor brackets, universal mounting brackets, brackets for tube rod holders, brackets for fishing seats, oar mounting brackets, oarlock brackets, fishing lure holders, cup holders, trolling rod holders, rod holders, cuhions adapted for use with boat seats, boat loaders, boat trolleys, canoe carts, oarlocks, oar sleeves, safety carlocks, water skiing brackets (boat accessories), pulpit handles (boat accessories), steering consoles, windscreens nautical, protective covers for water vehicles, covers for water vehicles, paddles for canoes in the contested sign. Since the limitations at the end of Class 12 in both signs effectively exclude the same goods, they will not be mentioned in the comparisons made below. The same goes for the limitation at the end of Class 35 in the contested sign, which essentially excludes retail services related to apparatus for locomotion by water, boats and boat accessories as well as other services specifically related to such goods (e.g. online advertising), since these limitations will not affect the degree of similarity, if any, of the contested services in this class with the opponent’s goods and services.

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

Contested goods in Class 6

The contested vaults and safes [metal or non-metal]; electronic safes; metal cash deposit boxes are similar to the opponent’s armoured doors of metal because they can have the same purpose in the sense that they can all be part of the same safety systems intended to protect items of value. Furthermore, they can target the same relevant public and share the same distribution channels.

Contested goods in Class 12

The contested vehicles of all kinds, in particular special purpose and armored vehicles include, as a broader category, the opponent’s armored vehicles. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested apparatus for locomotion by land, air or water includes, as a broader category the opponent’s military vehicles for transport. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods. For the sake of clarity, it should be noted that even if the contested goods still mention apparatus for locomotion by water, which have been excluded in the earlier mark as outlined above, these goods have also expressly been excluded in the contested sign with effectively the same limitation as that in the earlier mark as explained above. Therefore, the contested goods and the opponent’s goods must be considered to cover the same scope of apparatus for locomotion and vehicles respectively with the only difference being that the opponent’s goods are limited to those for military use.

The contested parts and fittings for vehicles of all kinds, namely for special purpose and armored vehicles, automotive vehicles, vehicles for use on land, vans, trucks, handling carts, motorcycles, vehicles for use in the air, amphibious vehicles, water vehicles, rail vehicles, railway carriages, bicycles; parts and fittings for vehicles of all kinds, namely drives, gears, brakes, air brakes, motors and engines, chassis, suspensions and shock absorbers, steering mechanisms, tyres, wheels and rims, driver cabs; parts and fittings for aircraft and watercraft of all kinds, namely brakes, air brakes, chassis, suspensions and shock absorbers, steering mechanisms, tyres, wheels and rims, driver cabs are at least similar to a low degree to the opponent’s military vehicles for transport since they can all consist of specialised goods for military use that target the same relevant public and share the same distribution channels. Furthermore, these goods can also be complementary and/or produced by the same undertakings. Again, the mention in the contested goods of amphibious vehicles, water vehicles and watercraft cannot be considered to affect the similarity of the contested goods with the opponent’s goods for the same reasons as those outlined above.

Contested goods in Class 19

The contested concrete vaults are similar to the opponent’s armoured doors of metal because they can have the same purpose in the sense that they can both be part of the same safety systems intended to protect items of value. Furthermore, they can target the same relevant public and share the same distribution channels.

Contested goods in Class 20

The contested furniture, especially furniture for storing valuables, cash and guns; filing cabinets; chests are considered dissimilar to all the opponent’s goods and services in Classes 6, 12, 13 and 39. These contested goods consist of furniture which is primarily for functional and/or decorative purposes. Therefore, even if they may be designed to be used for storing valuables and may also incorporate some safety measures such as locks, they are unlikely to be found in the same distribution channels as those of the opponent’s armoured doors of metal or any of the other goods covered by the earlier mark in Classes 6, 12 or 13. Furthermore, these contested goods and the opponent’s goods and services do not have the same nature and they are not in competition or complementary to each other. Moreover, the Opposition Division does not find it likely that the contested goods and any of the opponent’s goods and services in Classes 6, 12, 13 and 39 are usually produced or provided by the same undertakings.

Contested services in Class 35

Retail and wholesale services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested wholesaling and retailing of vehicles of all kinds, in particular of special purpose and armored vehicles, of apparatus for locomotion by land, air or water are similar to a low degree to the opponent’s military vehicles for transport since the wholesale and retail of vehicles of all kinds include the opponent’s goods and are thus identical to those goods.

The contested wholesaling and retailing of parts and fittings for vehicles of all kinds, in particular for special purpose and armored vehicles are similar to a low degree to the opponent’s armoured bodies for vehicles since the parts and fittings for vehicles of all kinds concerned with the contested wholesaling and retailing services include the opponent’s goods and are thus also identical to those goods.

However, the contested wholesaling and retailing of drives, gears, brakes, air brakes, motors and engines, chassis, suspensions and shock absorbers, steering mechanisms, tyres, wheels and rims, driver cabs are dissimilar to the opponent’s goods and services in Classes 6, 12, 13 and 39. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail and wholesale 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 or wholesale 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 or wholesale services and the specific goods covered by the other mark are identical. This condition is not fulfilled in relation to the remaining wholesaling and retailing services listed above, since the goods at issue, even if they may be similar, are not identical. Furthermore, the contested services have no relevant points of contact with the opponent’s services in Class 39 which essentially concern transport services with armoured vehicles. These services do not have the same nature or purpose as the contested services; they are not complementary to each other or in competition. Furthermore, they do not target the same relevant public or share the same distribution channels and they are not usually provided by the same undertakings.

As regards the remaining contested loyalty, incentive and bonus program services; advertising; business management; business administration; office functions; arranging of contracts for the purchase and sale of goods and/or services, for others; sales promotion and marketing, in particular in connection with vehicles, vehicle parts, fittings, armour and other goods; providing of trading and business information and consultancy, in particular in the business area of vehicles, vehicle parts, fittings and armour; management and compilation, and collection and systemisation of data in computer databases, in particular in connection with vehicles, vehicle parts, fittings and armour they consist of different services aimed at supporting or helping other businesses to carry out or improve their business. They therefore, in principle, target a professional public.

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 the client’s position in the market and acquiring competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share.

Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since they enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

Office functions are the internal day-to-day operations of an organisation, including administration and support services in the ‘back office’. They mainly cover activities that assist in the running of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, inputting information into computer databases, invoicing and administrative processing of purchase orders, as well as support services such as the rental of office machines and equipment.

In view of the above, even if some of the remaining contested services are provided in the business area of some of the contested goods, the remaining contested services in Class 35 and all the opponent’s goods and services in Classes 6, 12, 13 and 39 have different natures and purposes. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels are also different and they are not usually provided or produced by the same undertakings. Therefore, they are dissimilar.

Contested services in Class 36

The contested safe deposit services; cash management services; financial management of cash accounts; fund and money transfer; coin counting and sorting; ATM banking services are not similar to any of the opponent’s goods or services in Classes 6, 12, 13 and 39. Even if the opponent’s armoured vehicle transport in Class 39 is a specific transport service that it usually provided by companies specialised in security for banks, retailers or other commercial and governmental customers, the contested services are offered by professionals in the economic and financial sector or financial entities such as banks to the general public (individuals and companies). Therefore, even if money and valuables are the object of all these services, the business object of the services, their purpose and method of use is different as well as the undertakings that offer them. Consumers expect banks to use armoured vehicle transport when money and valuables are transported. However, they do not expect that banks offer them these services in parallel to their financial services. Consequently, the contested services and the opponent’s goods and services in Classes 6, 12, 13 and 39 do not have the same nature or purpose; they do not share the same distribution channels and are not usually produced or provided by the same undertakings. Therefore, they are dissimilar.

Contested services in Class 37

The contested maintenance, servicing, tuning and repair of vehicles and engines; fitting of armour to vehicles are similar to the opponent’s armoured vehicles because they can be provided by the same providers and producers specialised in armoured vehicles to the same end users and through the same distribution channels.

However, the contested safe and vault maintenance and repair [strong-room maintenance and repair]; providing information relating to safe maintenance and repair are dissimilar to all the opponent’s goods and services in Classes 6, 12, 13 and 39. Even if the opponent’s goods in Class 6 (e.g. armoured doors of metal) may be part of a safety system, the opponent has not submitted any arguments or evidence to support that the producers of such goods would also usually provide maintenance and repair services of safes and vaults or other safety systems, or information relating to the same. Therefore, and in the absence of any evidence to the contrary, the Opposition Division does not find it likely that the contested services would share the same distribution channels or be provided or produced by the same undertakings as those concerned with the opponent’s goods and services in Classes 6, 12, 13 and 39; they do not have the same nature or purpose and they are not in competition with each other or complementary. Therefore, even if some of the goods and services at issue can target the same relevant public, this is insufficient for a finding of similarity between them.

Contested services in Class 40

The contested custom manufacture and assembly services, in particular custom assembling of armoured vehicles, automobile bodies and chassis and parts thereof are similar to the opponent’s armoured vehicles since they can share the same distribution channels, target the same relevant public and be provided and produced by the same undertakings. Furthermore, they are complementary in the sense that the opponent’s goods may be indispensable for the provision of the contested services.

Contested services in Class 42

The contested engineering; vehicle design services, especially related to armoured vehicles; development of vehicles, especially of armoured vehicles; research in the field of vehicles, especially in the field of armoured vehicles; product development for vehicle construction and for vehicle body construction are similar to a low degree to the opponent’s armoured bodies for vehicles since the contested services and the opponent’s goods can target the same relevant public and be provided and produced by the same undertakings.

Contested services in Class 45

The contested security services, especially armed security services are similar to the opponent’s armoured vehicle transport since they can target the same relevant public, share the same distribution channels and be provided by the same undertakings. Furthermore, they are complementary since the contested services are essential or important for the use of the opponent’s services.

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to varying degrees are mostly directed at business customers with specific professional knowledge or expertise, although some of them may also be directed at the public at large, such as the goods concerned in Class 6.

Bearing in mind the specialised nature, frequency of purchase and price of the goods and services concerned, the degree of attention of the relevant public will generally be high although it may also be average in relation to at least some of the goods concerned, such as those in Class 6, depending in particular on their degree of sophistication and price.

Therefore, the degree of attention may vary from average to high.

c) The signs

	INKAS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The contested sign is the word mark ‘INKAS’ and the earlier mark is a figurative mark consisting of the verbal element ‘INKAS’ depicted in white slightly stylised upper-case letters on top of which there is a figurative element consisting of a silver-coloured sitting winged lion holding up a sword with one of its paws. Both of these elements are depicted on a rectangular black background surrounded by a silver-coloured frame ending in a triangle shape at the bottom. The applicant argues that the letters ‘INKAS’ in the earlier mark are difficult to decipher, especially the letter ‘A’ because of the thin lines of its script and that this element of the earlier mark is barely noticeable at first sight. The Opposition Division does not agree. Even if the figurative element above is overall larger in size the verbal element is depicted in a central position immediately underneath, it is of the same width as the figurative element and also of a relatively large size. Furthermore, even if some of the strokes in the verbal element ‘INKAS’ in the earlier mark are relatively thin as pointed out by the applicant, the white colour of the letters is in stark contrast to the black background and their shapes are therefore still immediately recognisable as representing the letters ‘I-N-K-A-S’. Therefore, the Opposition Division does not consider that it will be difficult for the relevant public to instantly perceive the word ‘INKAS’ in the earlier mark or that it would not be noticeable at first sight within the overall impression produced by the mark.

For the sake of clarity, the Opposition Division notes that the earlier mark also includes the registered trade mark symbol, ®, after the verbal element ‘INKAS’. This is an informative indication that the sign is purportedly registered and is not part of the trade mark as such. Consequently, this will not be taken into consideration for the purposes of comparison.

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common verbal element ‘INKAS’ will be associated, inter alia, by the English-speaking public in the relevant territory with Inca people, which is also spelled Inka in English (information extracted from Encyclopædia Britannica at www.britannica.com/topic/Inca on 18/12/2018). Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public in the relevant territory.

Since the concept of ‘INKAS’ as outlined above has no particular meaning in relation to the goods and services concerned, this element in both signs is distinctive to a normal degree.

The figurative element of the earlier mark consisting of a winged lion with a sword is also distinctive to a normal degree since it has no connection to the goods and services concerned. However, the rectangular background surrounded by a frame will be perceived as a primarily decorative element in the earlier mark and is, therefore, weak.

The applicant argues that due to their size, colour and dimensions, the winged lion and the black background are the dominant elements of the earlier mark. However, rectangular backgrounds are commonly used to highlight other elements and will therefore not draw the attention of consumers and even if the figurative element is larger overall than the verbal element, as already outlined above the latter is depicted immediately underneath in a central position and is still of a relatively large size and of the same width as the figurative element. Therefore, the earlier mark has no element that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the distinctive verbal element ‘INKAS’, which is the only element of the contested sign and the only verbal element in the earlier mark. However, they differ in the slight stylisation of this element in the earlier mark and in the additional figurative element which is also distinctive. The signs also differ in the rectangular black background with a silver frame of the earlier mark which will however be perceived as a decorative element highlighting the other two elements of the mark as explained above. Therefore, this element will have much less impact on consumers in the overall impression produced by the sign.

Therefore, the signs are visually similar to an average degree overall.

The applicant mentions some previous decisions to support its argument that the signs are visually dissimilar. However, none of the signs in dispute in the cases referred by the applicant are comparable to the signs in dispute in the present proceedings either because the stylisation and get-up of the signs in those cases was very different or because they also contained additional verbal elements that were not present in the other signs. Therefore, the applicant’s references to these cases cannot change the finding of an average degree of visual similarity between the signs in the case at hand.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛INKAS’, present identically in both signs and, contrary to the applicant’s arguments, the figurative elements have no impact on the pronunciation and the figurative element of a winged lion with a sword in the earlier mark will thus not be taken into account in the aural comparison between the signs (see by analogy 26/02/2018, R 1560/2017-2, MEZCAL OCHO COYOTE (fig.) / TEQUILA OCHO et al., § 91).

Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks to the relevant public under analysis. Both signs will be associated with the same distinctive concept of Inca people, which is the only concept conveyed by the contested sign whereas the earlier mark will also be associated with the additional concept conveyed by its figurative element (a winged lion with a sword) which is also distinctive. As regards the rectangular background with a frame in the earlier mark, this element will not convey any particular concept to consumers.

Therefore, the signs are conceptually similar to an average degree.

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

d) Distinctiveness of the earlier mark

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

The opponent claimed that the earlier trade mark enjoys reputation which could lead to an enhanced distinctiveness of the earlier mark but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public under analysis in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

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

In the present case, the goods and services at issue have been found partially identical or similar to varying degrees and partially dissimilar. The degree of attention of the relevant public may vary from average to high depending on the goods and services in question.

The earlier mark has a normal degree of distinctiveness and the signs have been found visually and conceptually similar to an average degree and phonetically identical.

Even if some of the goods and services at issue are only similar to a low degree and even if the relevant public may pay a high degree of attention, the differences between the signs on account of the additional figurative elements in the earlier mark are insufficient to outweigh the considerable similarities between them on account of their coincidence in the distinctive verbal element ‛INKAS’, which is the only element of the contested sign and the only verbal element in the earlier mark. In view of this, consumers are likely to attribute the same commercial origin to identical or similar (to varying degrees) goods and services offered under the signs in dispute. Indeed, even if the earlier mark introduces figurative elements that are not present in the contested sign, it is highly conceivable that the relevant consumer will perceive the signs as variations of the same mark, configured in different ways according to the type of goods or services that they designate (23/10/2002, T 104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the English-speaking part of the public in the relevant territory. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application and there is therefore no need to assess whether there is a likelihood of confusion also for other parts of the public in the relevant territory.

The applicant puts forward that it has been using the trade mark ‛INKAS’, inter alia, in Germany and claims that it therefore owns at least earlier German rights to the term ‛INKAS’ and argues that a younger mark, i.e. the opponent’s mark, should thus not be registered in accordance with Article 8(4) EUTMR. The applicant also submits detailed comments on the relevant German law as well as a copy of the same together with some evidence of use of ‛INKAS’. In this respect, the Opposition Division notes that the opponent’s mark, European Union trade mark registration No 16 256 091, is registered and in force and there is no cancellation action pending against this mark. Furthermore, the rights of the opponent, insofar as they predate the EUTM, are earlier than the contested sign. Therefore and since there is no cancellation action pending against the earlier mark based on the applicant’s alleged earlier non-registered German rights under Article 8(4) EUTMR, these arguments of the applicant must be set aside as irrelevant for the purposes of the present proceedings.

Therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 16 256 091.

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

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

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 neither the signs nor the remaining goods and services are identical.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 23/11/2017 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 28/03/2018.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as these grounds are concerned.

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

Helen Louise MOSBACK

Sam GYLLING

Begoña URIARTE VALIENTE

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.