OPPOSITION No B 2 930 694

Lincos Kft., Balmazújvárosi út 10, 4002, Debrecen, Hungary (opponent), represented by Péter Sipka, Vármegyeháza str 16 I/8, 4024, Debrecen, Hungary (professional representative)

a g a i n s t

Sirini SRL, Via Lombardia 17, 20010 Arluno (MI), Italy (applicant), represented by Dott. Franco Cicogna & C. SRL, Via Visconti di Modrone 14/A, 20122 Milano, Italy (professional representative).

On 22/11/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 930 694 is partially upheld, namely for the following contested goods and services:

Class 6: All the goods applied for in this Class, except for metal pallets; turntables [railways]; common metals and their alloys; ores of metal; buildings, transportable, of metal; buildings (Portable -) of metal for housing toilets; industrial packaging containers of metal; unprocessed and semi-processed materials of metal, not specified for use.

Class 7: All the goods applied for in this Class.

Class 8: All the goods applied for in this Class, except for forks and spoons; boxes adapted for cutlery; side arms, other than firearms; razors; edged and blunt weapons.

Class 9: All the goods applied for in this Class.

Class 35: Retail services in relation to milling cutters [machine tool]; cutting tools [machine] in the form of end mills; precision machines for producing parts for turbojets; power transmission couplings for sea craft, as well as retail and wholesale services in relation to building materials of metal, undercutters [machines]; tube reamers [machines]; keys for releasing borers [machine]; keys for securing borers [machine]; tube reamers [tools for machines]; tube reamers [parts of machines]; cutters for milling machines; side cutters [machines]; rotary milling cutters [machines]; end mills; milling grinding motors; screw milling cutters [machines]; gear cutters [machines]; annular hole cutters [machine tools]; carbide burs [machine tools]; rotary milling cutters [parts of machines]; thread milling cutters [machine tool]; gear cutters [machine tool]; end mills [power tools]; countersinks [power tools]; truck mills [for mining purposes]; screw milling cutters [parts of machines]; thread mills [power tools]; wet wheel abrasive cutters [machines]; tubing mills [for metalworking]; pumps [machines]; positive displacement pumps; pneumatic pumps; centrifugal pumps; submersible pumps; ejectors [pumps]; electrical pumps; axial pumps; hydraulic pumps; rotary pumps; marine pumps; controlled volume pumps; fluid pumps; distribution pumps; vacuum pumps [machines]; gear pumps; turbogenerators; turbocompressors; turbo-superchargers for engines; turbochargers for machines; impellers for turbo-superchargers; gas turbine engines; turbo-superchargers for vehicle engines; turbo-superchargers for land vehicle engines; turboprop engines [not for land vehicles]; electric pulley blocks; automotive engine blocks; cylinder blocks [parts of machines]; anti-shock pads [parts of machines]; key making machines; torque wrenches [machines]; nut spinners [machines]; ratchet wrenches [machines]; key cutting machines; power-operated ratchet wrenches; socket spanners [machines]; wrenches [machines]; air ratchet wrenches; keys for securing bits [machine]; hydraulic wrenches for use on drilling rigs; keys for releasing machining bits; haulage apparatus [mining]; pile-extractors; electric nail extractors; nail extractors, electric; universal joints [cardan joints]; shaft couplings [machines]; angle joints [parts of machines]; flexible couplings [parts of machines]; gear couplings for machines; safety couplings for machines; mechanical seals [machine parts]; modular couplings for machine tools; starting couplings for machines; power transmission couplings for machines; power transmission couplings for aircraft; starting couplings for water vehicles; starting couplings for air vehicles; sealing joints [parts of machines]; machines for manufacturing joints; power transmission couplings for water vehicles; couplings of metal for hydraulic apparatus; overload couplings [parts of machines]; water swivels [hydraulic couplings]; shaft couplings, not for land vehicles; shaft couplings as parts of machines; safety couplings [other than for land vehicles]; couplings, other than for land vehicles; power transmission couplings [other than for land vehicles]; joints for tubes (metal -) [parts of engines]; joints for tubes (metal -) [parts of machines]; suspension ball joints [parts of machines]; free wheel couplings [other than for land vehicles]; machine couplings [other than pipe]; machine couplings and transmissions, except for land vehicles; jaw type shaft couplings other than for land vehicles; machine coupling and transmission components (except for land vehicles); machine coupling and transmission components, except for land vehicles, and parts therefor; magnetic clamps [parts of machines]; work clamps for machine tools; workpiece clamping attachments [machines]; workpiece clamping attachments [parts of machines]; spindle adapter flanges for machine tools; vibratory grinding machines; power-operated grinding wheels; abrasive grinding wheels [machines]; abrasive grinding wheels [tools for machines]; sharpening wheels [electric machines]; grindstones [parts of machines]; wire wheels for power-operated grinders; sharpening wheels [parts of electric machines]; non-woven wheels being parts of machines for use in scouring; skid steer loaders; valves; chucks [parts of machines]; spindles for machine tools; drill chucks for power drills; clutches for machines; undirectional clutches for machines; clutches, other than for land vehicles; housings [parts of machines]; bushings being parts of machines; bearings and bushings [machine parts]; ball-bearings; ball bearings for engines; screw-thread cutters [machines]; spark plug ignition wires; spinning frames; punching machines; power staplers; punches for punching machines; engine housings; bearing housings; planing machines; electric sharpeners; rotary grinding machines; blade grinding machines; knife-sharpening machines; machines for grinding [electric]; heavy duty grinding machines; automatic grinding machines; machine tools for grinding; centrifugal grinding machines; wood grinding machines; bevel gear grinding tools; grinding tools [parts of machines]; flap discs for power-operated grinders; grinding machines for cutting tools; bevel gear grinding machines; grinding machines for refacing the edges of tools; disc shaped rotating grinding tools [machines]; disc shaped rotating grinding tools [parts for machines]; machines and apparatus for polishing [electric]; glazing rollers; piece holders for polishing machines; industrial cleaning machines [polishers]; cutting, drilling, abrading, sharpening and surface treatment machines and apparatus; material production and processing machines; machines, tools and apparatus for fastening and joining; shaping and moulding machines; motors, other than for land vehicles; agricultural implements, other than hand-operated; incubators for eggs; vending machines; injectors for engines; sizing machines; compressed air machines; washing apparatus; washing machines [laundry]; machine tools; motor driven tools; hydraulic tools; cylinder heads for engines; anti-pollution devices for motors and engines; spraying machines; pumps [parts of machines, engines or motors]; pneumatic hammers; ball screws; archimedian screws; screw grinding machines; ball screw cartridges; discharge screws for hydraulic fluids [parts of machines]; discharge screws for compressed air [parts of machines]; discharge screws for gaseous materials [parts of machines]; discharge screws for liquid materials [parts of machines]; extrusion machines for plastic; vices; metal vices; clamps for carpenters or coopers; clamps [hand tools]; miter vises being hand tools; metal vice jaws; bench vices [hand implements]; locking clamps [hand tools]; cramps for use in holding workpieces; flange spreaders [hand tools] for use in separating flanges; flange spreaders [hand tools] for use in opening flanges; hand tools and implements (hand operated); stropping instruments; spanners [hand tools]; blades [hand tools]; shovels [hand tools]; tool holders; punches [hand tools]; centre punches [hand tools]; instruments for punching tickets; reamers; hammers [hand tools]; scientific apparatus and instruments; nautical apparatus and instruments; photographic apparatus and instruments; optical apparatus and instruments; measuring apparatus and instruments; signalling apparatus and instruments; checking (supervision) apparatus and instruments; vehicle speed control apparatus and instruments; programmable controls for lighting apparatus and instruments; inspection mirrors; mirrors for inspecting work; borescopes for inspecting work; life-saving apparatus and instruments; instructional and teaching apparatus and instruments; apparatus and instruments for controlling electricity; apparatus and instruments for accumulating and storing electricity; electricity mains apparatus; sound recording apparatus; replicating apparatus; data processing equipment and accessories (electrical and mechanical); audio/visual and photographic devices; apparatus for the reproduction of data; sound reproduction apparatus; apparatus for the reproduction of images; magnetic data carriers, recording discs; compact discs; dvds; digital recording media; coin-operated mechanisms; cash registers; calculators; minicomputers; microcomputer apparatus; supercomputers; software; fire extinguishing apparatus; usb cables; jack cables; audio cable; battery testers; flatness testers; antifreeze testers; continuity testers; coaxial cables; optical cables; power cables; cables, electric; electronic cables; starter cables for motors; electric cables and wires; pressure regulators; pressure switches; pressure measuring apparatus; pressure sensors; tyre-pressure measurers; control circuits; electrical control circuits; electronic control circuits; tachometers; speed measuring apparatus for vehicles; bicycle speedometers; ductility testers; glow plug testers.

Class 41: Teaching; publishing services; publication of books; publication of texts; publishing of stories; publication of printed matter; publication of catalogues; publication of newspapers, periodicals, catalogs and brochures; publication of material which can be accessed from databases or from the internet; multimedia publishing of magazines, journals and newspapers; training; computer training; educational instruction; vocational skills training; advanced training; provision of training courses; provision of training and education; training of teachers; providing courses of instruction for young people; nursery schools; vocational education and training services.

Class 42: Software design and development; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam); design of office automation equipment; technical project studies in the field of computer hardware and software; installation of computer software; maintenance of computer software; maintenance of data bases; maintenance and repair of software.

2. European Union trade mark application No 16 936 221 is rejected for all the above goods and services. It may proceed for the remaining goods and services, including those indicated with “except for” above.

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 16 936 221 . The opposition is based on European Union trade mark registration No 15 264 807 . The opponent invoked Article 8(1)(a) and (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 on which the opposition is based are the following:

Class 6: Welding and soldering materials.

Class 7: Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Engines, powertrains, and generic machine parts; Generators of electricity; Machines and machine tools for treatment of materials and for manufacturing; Moving and handling equipment; Pumps, compressors and fans; Robots; Sweeping, cleaning, washing and laundering machines; Current generators; Dispensing machines.

Class 8: Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; Lifting Tools.

Class 9: Apparatus, instruments and cables for electricity; Devices for treatment using electricity; Information technology and audiovisual equipment; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers; Navigation, guidance, tracking, targeting and map making devices; Optical devices, enhancers and correctors; Recorded content; Safety, security, protection and signalling devices; Scientific research and laboratory apparatus, educational apparatus and simulators.

The contested goods and services belong to Classes 6, 7, 8, 9, 12, 35, 41 and 42. The full list of the contested services (which is not reproduced here due to its length) can be found at https://euipo.europa.eu/eSearch/#details/trademarks/016936221.

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 building materials of metal and building and construction materials and elements of metal include, as broader categories, the welding and soldering materials in Class 6 of the earlier right. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the applicant’s goods.

The contested couplings of metal for chains; grease nipples; couplings of metal for tubing; washers of metal; chocking metallic plates; vice benches of metal; fixing bolts of metal; expansion bolts of metal; tubes of metal; metal mouldings; steel cylinders for compressed gas; fittings of metal for compressed air ducts; rings of metal; tool chests of metal, empty; metal tool boxes; pegs of metal; flanges of metal [collars]; anchor flanges of metal; non-electric cables and wires of common metal; safes [metal or non-metal]; metallic containers; tool storage containers of metal [empty]; keys of metal; metal hardware are all metal hardware items, metal containers or metal construction materials. They are considered to be at least similar to a low degree to the welding and soldering materials of the earlier right, since they can be produced by the same manufacturer of metal hardware goods, may share the same distribution channels and can be directed at the same public.

The rest of the contested goods in this class, namely metal pallets; turntables [railways]; common metals and their alloys; ores of metal; buildings, transportable, of metal; buildings (portable -) of metal for housing toilets; industrial packaging containers of metal; unprocessed and semi-processed materials of metal, not specified for use are considered to be dissimilar to the goods of the earlier mark in Classes 6, 7, 8 and 9 since – even if they may be all made of metal – they have different natures and purposes, different producers, do not coincide in distribution channels and target different publics.

Contested goods in Class 7

All of the contested goods in this class are identical to the opponent’s goods in the same class, either because they are identically contained in both lists (including synonyms) or because the applicant’s goods in this class include, are included in, or overlap with, the contested goods.

Contested goods in Class 8

Most of the contested goods in this class are identical to the opponent’s goods in the same class, either because they are identically contained in both lists (e.g. hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance or lifting tools) or because the applicant’s goods in this class include, are included in, or overlap with, the contested goods (e.g. the contested hand tools and implements (hand operated) overlap with the opponent’s hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance).

The only contested goods in this class that are considered to be dissimilar to the goods of the earlier mark in Classes 6, 7, 8 and 9 are forks and spoons; boxes adapted for cutlery; side arms, other than firearms; razors; edged and blunt weapons, since they have a different nature and purpose, different producers and different distribution channels and sales outlets.

Contested goods in Class 9

All of the contested goods in this class are identical to the opponent’s goods in the same class, either because they are identically contained in both lists or because the applicant’s goods in this class include, are included in, or overlap with, the contested goods.

Contested goods in Class 12

The contested goods in this class basically consist of vehicles and their parts, and they are therefore dissimilar to the goods of the earlier mark in Classes 6, 7, 8 and 9 belonging to very different market sectors. All these goods are different in nature and purpose. They are clearly not being produced by the same companies, nor follow the same channels of distribution. They are neither complementary or in competition with the goods of the earlier mark.

Contested services in Class 35

Retail 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. Wholesale services follow the same reasoning.

Therefore, the contested retail and wholesale services in relation to all the goods which have been previously considered to be identical to the goods covered by the earlier mark are considered to be similar to a low degree, namely to the following:

Retail services in relation to milling cutters [machine tool]; cutting tools [machine] in the form of end mills; precision machines for producing parts for turbojets; power transmission couplings for sea craft, as well as the retail and wholesale services in relation to building materials of metal, undercutters [machines]; tube reamers [machines]; keys for releasing borers [machine]; keys for securing borers [machine]; tube reamers [tools for machines]; tube reamers [parts of machines]; cutters for milling machines; side cutters [machines]; rotary milling cutters [machines]; end mills; milling grinding motors; screw milling cutters [machines]; gear cutters [machines]; annular hole cutters [machine tools]; carbide burs [machine tools]; rotary milling cutters [parts of machines]; thread milling cutters [machine tool]; gear cutters [machine tool]; end mills [power tools]; countersinks [power tools]; truck mills [for mining purposes]; screw milling cutters [parts of machines]; thread mills [power tools]; wet wheel abrasive cutters [machines]; tubing mills [for metalworking]; pumps [machines]; positive displacement pumps; pneumatic pumps; centrifugal pumps; submersible pumps; ejectors [pumps]; electrical pumps; axial pumps; hydraulic pumps; rotary pumps; marine pumps; controlled volume pumps; fluid pumps; distribution pumps; vacuum pumps [machines]; gear pumps; turbogenerators; turbocompressors; turbo-superchargers for engines; turbochargers for machines; impellers for turbo-superchargers; gas turbine engines; turbo-superchargers for vehicle engines; turbo-superchargers for land vehicle engines; turboprop engines [not for land vehicles]; electric pulley blocks; automotive engine blocks; cylinder blocks [parts of machines]; anti-shock pads [parts of machines]; key making machines; torque wrenches [machines]; nut spinners [machines]; ratchet wrenches [machines]; key cutting machines; power-operated ratchet wrenches; socket spanners [machines]; wrenches [machines]; air ratchet wrenches; keys for securing bits [machine]; hydraulic wrenches for use on drilling rigs; keys for releasing machining bits; haulage apparatus [mining]; pile-extractors; electric nail extractors; nail extractors, electric; universal joints [cardan joints]; shaft couplings [machines]; angle joints [parts of machines]; flexible couplings [parts of machines]; gear couplings for machines; safety couplings for machines; mechanical seals [machine parts]; modular couplings for machine tools; starting couplings for machines; power transmission couplings for machines; power transmission couplings for aircraft; starting couplings for water vehicles; starting couplings for air vehicles; sealing joints [parts of machines]; machines for manufacturing joints; power transmission couplings for water vehicles; couplings of metal for hydraulic apparatus; overload couplings [parts of machines]; water swivels [hydraulic couplings]; shaft couplings, not for land vehicles; shaft couplings as parts of machines; safety couplings [other than for land vehicles]; couplings, other than for land vehicles; power transmission couplings [other than for land vehicles]; joints for tubes (metal -) [parts of engines]; joints for tubes (metal -) [parts of machines]; suspension ball joints [parts of machines]; free wheel couplings [other than for land vehicles]; machine couplings [other than pipe]; machine couplings and transmissions, except for land vehicles; jaw type shaft couplings other than for land vehicles; machine coupling and transmission components (except for land vehicles); machine coupling and transmission components, except for land vehicles, and parts therefor; magnetic clamps [parts of machines]; work clamps for machine tools; workpiece clamping attachments [machines]; workpiece clamping attachments [parts of machines]; spindle adapter flanges for machine tools; vibratory grinding machines; power-operated grinding wheels; abrasive grinding wheels [machines]; abrasive grinding wheels [tools for machines]; sharpening wheels [electric machines]; grindstones [parts of machines]; wire wheels for power-operated grinders; sharpening wheels [parts of electric machines]; non-woven wheels being parts of machines for use in scouring; skid steer loaders; valves; chucks [parts of machines]; spindles for machine tools; drill chucks for power drills; clutches for machines; undirectional clutches for machines; clutches, other than for land vehicles; housings [parts of machines]; bushings being parts of machines; bearings and bushings [machine parts]; ball-bearings; ball bearings for engines; screw-thread cutters [machines]; spark plug ignition wires; spinning frames; punching machines; power staplers; punches for punching machines; engine housings; bearing housings; planing machines; electric sharpeners; rotary grinding machines; blade grinding machines; knife-sharpening machines; machines for grinding [electric]; heavy duty grinding machines; automatic grinding machines; machine tools for grinding; centrifugal grinding machines; wood grinding machines; bevel gear grinding tools; grinding tools [parts of machines]; flap discs for power-operated grinders; grinding machines for cutting tools; bevel gear grinding machines; grinding machines for refacing the edges of tools; disc shaped rotating grinding tools [machines]; disc shaped rotating grinding tools [parts for machines]; machines and apparatus for polishing [electric]; glazing rollers; piece holders for polishing machines; industrial cleaning machines [polishers]; cutting, drilling, abrading, sharpening and surface treatment machines and apparatus; material production and processing machines; machines, tools and apparatus for fastening and joining; shaping and moulding machines; motors, other than for land vehicles; agricultural implements, other than hand-operated; incubators for eggs; vending machines; injectors for engines; sizing machines; compressed air machines; washing apparatus; washing machines [laundry]; machine tools; motor driven tools; hydraulic tools; cylinder heads for engines; anti-pollution devices for motors and engines; spraying machines; pumps [parts of machines, engines or motors]; pneumatic hammers; ball screws; archimedian screws; screw grinding machines; ball screw cartridges; discharge screws for hydraulic fluids [parts of machines]; discharge screws for compressed air [parts of machines]; discharge screws for gaseous materials [parts of machines]; discharge screws for liquid materials [parts of machines]; extrusion machines for plastic; vices; metal vices; clamps for carpenters or coopers; clamps [hand tools]; miter vises being hand tools; metal vice jaws; bench vices [hand implements]; locking clamps [hand tools]; cramps for use in holding workpieces; flange spreaders [hand tools] for use in separating flanges; flange spreaders [hand tools] for use in opening flanges; hand tools and implements (hand operated); stropping instruments; spanners [hand tools]; blades [hand tools]; shovels [hand tools]; tool holders; punches [hand tools]; centre punches [hand tools]; instruments for punching tickets; reamers; hammers [hand tools]; scientific apparatus and instruments; nautical apparatus and instruments; photographic apparatus and instruments; optical apparatus and instruments; measuring apparatus and instruments; signalling apparatus and instruments; checking (supervision) apparatus and instruments; vehicle speed control apparatus and instruments; programmable controls for lighting apparatus and instruments; inspection mirrors; mirrors for inspecting work; borescopes for inspecting work; life-saving apparatus and instruments; instructional and teaching apparatus and instruments; apparatus and instruments for controlling electricity; apparatus and instruments for accumulating and storing electricity; electricity mains apparatus; sound recording apparatus; replicating apparatus; data processing equipment and accessories (electrical and mechanical); audio/visual and photographic devices; apparatus for the reproduction of data; sound reproduction apparatus; apparatus for the reproduction of images; magnetic data carriers, recording discs; compact discs; dvds; digital recording media; coin-operated mechanisms; cash registers; calculators; minicomputers; microcomputer apparatus; supercomputers; software; fire extinguishing apparatus; usb cables; jack cables; audio cable; battery testers; flatness testers; antifreeze testers; continuity testers; coaxial cables; optical cables; power cables; cables, electric; electronic cables; starter cables for motors; electric cables and wires; pressure regulators; pressure switches; pressure measuring apparatus; pressure sensors; tyre-pressure measurers; control circuits; electrical control circuits; electronic control circuits; tachometers; speed measuring apparatus for vehicles; bicycle speedometers; ductility testers; glow plug testers.

The rest of the contested services in this class, namely the retail and wholesale of goods which have not been previously considered identical to those of the opponent, as well as other contested services which pertain to the categories of advertising, marketing and promotional services; business assistance, management and administrative services, business analysis, research and information services are considered to be dissimilar to the goods of the earlier mark in Classes 6, 7, 8 and 9, since they do not have any relevant points of contact.

Contested services in Class 41

The contested services in this class basically consist of services in the field of education and training, entertainment, sporting and cultural activities, the organisation of different types of events and publishing.

It should be noted that, in order to supply educational and training services, it is both helpful and usual to use recorded content such as educational textbooks, pre-recorded videos or audio tapes, while publishing services both use and result in recorded content. Even if the nature of these goods and services is clearly different, they may also share the same purpose, originate from the same providers and be directed at the same relevant public. Therefore, the contested teaching; publishing services; publication of books; publication of texts; publishing of stories; publication of printed matter; publication of catalogues; publication of newspapers, periodicals, catalogs and brochures; publication of material which can be accessed from databases or from the internet; multimedia publishing of magazines, journals and newspapers; training; computer training; educational instruction; vocational skills training; advanced training; provision of training courses; provision of training and education; training of teachers; providing courses of instruction for young people; nursery schools; vocational education and training services are considered to be similar to the opponent’s recorded content.

The rest of the contested services in this class, pertaining to the categories of entertainment services, sporting and cultural activities and the organisation of different types of events are considered to be dissimilar to the goods of the earlier mark in Classes 6, 7, 8 and 9, since they do not have any relevant points of contact.

Contested services in Class 42

The contested software design and development; development of computer programs recorded on data media (software) designed for use in construction and automated manufacturing (cad/cam); design of office automation equipment; technical project studies in the field of computer hardware and software; installation of computer software; maintenance of computer software; maintenance of data bases; maintenance and repair of software are similar to the information technology equipment in Class 9 of the earlier mark. These goods and services are closely linked, because although their nature is different, the undertakings providing IT equipment will also commonly provide computer- and/or software-related services. Furthermore, these goods and services are complementary and can be directed at the same public. Therefore, they are considered similar.

The rest of the contested services in this class, which include industrial analysis and research services and industrial design and technical project services in other areas are considered to be dissimilar to the goods of the earlier mark in Classes 6, 7, 8 and 9, since they do not have any relevant points of contact.

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 different degrees are directed at the public at large (e.g. DVDs or compact discs) and/or at business customers with specific professional knowledge or expertise (e.g. machine tools for manufacturing).

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

c) The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

Both marks consist of a verbal element and a series of figurative elements (in the case of the earlier mark a logo placed before the word and in the case of the contested mark a slightly stylized typeface and the white lettering on a black background). The word elements of both marks will not be associated to any specific meaning by the relevant public and are both considered to be of average distinctiveness.

As regards the figurative elements in each of the marks, at issue, which in this case are also devoid of any specific meaning, it should be noted that, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

The marks have no element that could be considered clearly more dominant than other elements. Contrary to the applicant’s arguments, it cannot be considered that the graphic device is the most eye-catching and dominant element of the earlier mark, since it is not bigger in size than the word element nor possesses any visually striking feature that could lead to this conclusion.

Visually, the verbal elements of the signs coincide in the letters ‘S-RINI’, placed in the same order, and differ in their second letter (‘E’ vs. ‘i’) and in their respective figurative elements (including the figurative device of the earlier mark and the different use of upper and lowercase).

Taking into account the visual similarities and differences between the signs, it is considered that they are similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘S-RINI’, present identically in both signs. They have the same length (number of syllables) and only differ in the sound of their second letter (‘e’ vs. ‘i’).

Therefore, the signs are considered to aurally similar to a high degree.

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

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

d) Distinctiveness of the earlier mark

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

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

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

e) Global assessment, other arguments and conclusion

The signs have been found to be visually similar to a medium degree and aurally similar to a high degree. The goods and services are identical, at least similar to a low degree or dissimilar. The earlier mark enjoys and average degree of distinctiveness. In view of these circumstances, it is considered that the differences between the signs are not sufficient to counteract the similarities between them, and therefore that there is a likelihood of confusion on the part of the public, even for goods and services which are similar to a low degree.

Contrary to the applicant’s arguments, the fact that some of the goods and services at issue are directed at a professional public with a higher than average level of attention is not sufficient, in the present case, to modify the previous assessment. The fact that the differences between the signs are confined to a single letter within the respective word elements (which moreover in some of the languages of the relevant territory is pronounced in a very similar way) and to some figurative elements which are not particular striking and will have, as it has been mentioned, a weaker impact on the consumer, does not allow the Opposition Division to discard a likelihood of confusion even in the case of specialized goods and services directed at professional customers.

Considering all the above, the Opposition Division finds that the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical, or at least similar to a low degree, to those of the earlier trade mark.

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

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 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

Cynthia DEN DEKKER

José Antonio GARRIDO OTAOLA

Ana MUÑIZ RODRIGUEZ

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.