OPPOSITION No B 3 008 672

Euronics G.E.I.E., Huizermaatweg 480, 1276 LM Huizen, Netherlands (opponent), represented by NLO Shieldmark B.V., New Babylon City Offices, 2e étage, Anna van Buerenplein 21A, 2595DA Den Haag, Netherlands (professional representative)

a g a i n s t

Euroelectronics.eu Sp. z o.o. Sp. k., Korfantego 7, 42-600 Tarnowskie Góry, Poland (applicant), represented by Kondrat & Partners, Al. Niepodległości 223/1, 02-087 Warszawa, Poland (professional representative).

On 26/11/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 008 672 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 16 947 012 for the figurative mark , namely against all the goods and services in Classes 9 and 35. Following a late objection on absolute grounds raised by the office, the goods and some services were rejected. The opposition is directed against the remaining services in Class 35. The opposition is based on inter alia, international trade mark registration No 595 048 designating Austria, Bulgaria, Croatia, Czech Republic, Estonia, France, Germany, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden and on Benelux trade mark registration No 497 249, both for the word mark ‘EURONICS’. The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s international trade mark registration No 595 048 designating Austria, Bulgaria, Croatia, Czech Republic, Estonia, France, Germany, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden and on Benelux trade mark registration No 497 249.

a) The services

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

International trade mark registration No 595 048 designating Austria, Bulgaria, Croatia, Czech Republic, Estonia, France, Germany, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden (hereinafter earlier mark 1)

Class 35: Support services for the marketing of electric and electronic appliances and accessories; advertising and business; employment agencies and personnel consulting; commercial business management; administrative services; drawing up statistics; accounting; holding auctions and public sales; provision of commercial information; market study, research and analysis; display decoration; business consulting to companies; advice on business organisation and management; consulting on personnel issues; letting of office machines; placement of temporary personnel; direct mail advertising; document reproduction; management of commercial interests for third parties (monitoring, management, control).

Benelux trade mark registration No 497 249 (hereinafter earlier mark 2)

Class 35: Business intermediary services with respect to the marketing of electric and electronic appliances and accessories; publicity and business administration; advertising mediation; employment mediation and personnel consulting; commercial business management; administrative services; drawing up statistics; accounting; holding auctions and public sales; provision of commercial information; market study, research and analysis; shop window dressing; business consulting to companies; advice on business organisation and management; consulting on personnel issues; rental of office machines; placement of temporary personnel; direct mail advertising; document reproduction; management of commercial interests for third parties (monitoring, management, control), advertising.

As already explained, following an objection raised by the Office, the contested services are the following:

Class 35: Advertising; business management; business administration; office functions; sales management services; personnel management of sales personnel; advertising; promotional activities, including via the internet; advertising services relating to the sale of goods; distribution and dissemination of advertising programs and materials; updating of advertising material; organization, operation and supervision of sales and promotional incentive schemes; promoting the sale of the services by arranging advertisements; sales account management; distribution and delivery of advertising brochures, including via the internet.

Advertising (listed twice in the contested list of services); business administration are identically contained in both lists of services (earlier mark 1 and earlier mark 2).

The contested business management includes, as a broader category the opponent’s commercial business management (earlier mark 1 and earlier mark 2). Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested office functions include, as a broader category the opponent’s rental of office machines (earlier mark 2). Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested sales management services at least overlap with the opponent’s commercial business management (earlier mark 1 and earlier mark 2). Therefore, they are identical. Indeed, commercial business management services are usually rendered by companies specialising in this specific field, such as business consultants. These companies gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand their market share.

The contested personnel management of sales personnel overlap with the opponent’s consulting on personnel issues (earlier mark 1 and earlier mark 2). Therefore, they are identical.

The contested promotional activities, including via the Internet; advertising services relating to the sale of goods; distribution and dissemination of advertising programs and materials; updating of advertising material; organization, operation and supervision of sales and promotional incentive schemes; promoting the sale of the services by arranging advertisements; distribution and delivery of advertising brochures, including via the internet are included in the broad category of the opponent’s advertising (earlier mark 1 and earlier mark 2). Therefore, they are identical.

The contested sales account management is included in the broad category of the opponent’s accounting (earlier mark 1 and earlier mark 2). Therefore, they are identical.

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 services found to be identical are directed at business customers with specific professional knowledge or expertise.

The degree of attention will be high as these services have a clear impact on the consumers’ business (13/03/2018, T‑824/16, K, EU:T:2018:133, § 33-43).

c) The signs and distinctiveness of the earlier marks

EURONICS
Earlier trade marks	Contested sign

The relevant territories are Austria, Bulgaria, Croatia, Czech Republic, Estonia, France, Germany, Hungary, Italy, Latvia, Lithuania, Poland, Portugal, Romania, Slovakia, Slovenia, Spain and Sweden for earlier mark 1 and the Benelux for earlier mark 2.

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 earlier marks are single-word marks, namely ‘EURONICS’. The contested sign is a figurative mark consisting of the word elements ‘EURO’ and ‘ELECTRONICS’, the former above the latter, depicted in black upper-case letters. Between these elements, there are four dashes; two black and two red.

As regards the component ‘EURONICS’ in the earlier marks, the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). However, the Court also holds that consumers, when perceiving a word sign, will break it down into word elements that, for them, have a concrete meaning or resemble words known to them (11/11/2009, T‑277/08, Citracal, EU:T:2009:433, § 55).

‘EURO’ (identically present in the earlier marks and in the contested sign) is understood in the whole European Union (21/11/2018, R 660/2018-1, Europremium, § 20) as referring to ‘EUROPE’. It is settled case-law that, as such, the word ‘EUROPE’ (and hence ‘EURO’) will be seen as a descriptive term in relation to the relevant services and as an indication of origin, namely the place where the services in question are provided. Therefore, the element ‘EURO’ lacks any distinctiveness for all the services at issue (19/02/2019, R 910/2018-2, Study MEDICINE EUROPE Actualizing Academic Dreams (fig.) / Study Europe).

However, the verbal component ‘NICS’ in the earlier marks is meaningless and has an average degree of distinctiveness.

The distinctiveness of the earlier marks 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 marks are particularly distinctive by virtue of intensive use or reputation. Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. In the present case, the earlier trade marks have no meaning for any of the services in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier marks must be seen as normal, despite the presence of a non‑distinctive element in the marks, as stated above.

In the contested sign, the degree of distinctive character of ‘EURO’ has already been discussed. As regards the word ‘ELECTRONICS’, it will be understood by the totality of the relevant public as the technology of using transistors and silicon chips, especially in devices such as radios, televisions and computers. This is due, inter alia, to the fact that the equivalent words in the other languages of the relevant territory are extremely similar, such as the word ‘électronique’ in French, ‘elektronic’ in German, ‘elektronica’ in Czech, Hungarian, Latvian, Lithuanian, Slovak and Slovenian, ‘elettronica’ in Italian or ‘електроника’ in Bulgarian. This word, in relation to most of the services, has an average degree of distinctive character as it has no direct meaning in relation to the relevant services. However, the contested office functions include the rental of office machines which may concern electronic equipment used in the office. Therefore, there is a link to ‘electronics’ and this element is weak in relation to the contested office functions.

The typeface and figurative dashes in the contested sign are not particularly distinctive.

In the contested sign, there is no element that can be considered more dominant (visually eye-catching) than the others.

Visually, the signs coincide in the sequences of letters ‘EURO’ and ‘NICS’. They differ in the additional string of letters of the contested sign, namely ‘ELECTRO’, as well as in the typeface and stylisation of the contested sign.

According to the case-law, the consumer normally attaches more importance to the first part of trade marks. It is only when the element placed in the initial part has a weaker distinctive character in relation to the goods or services covered by the marks at issue that the relevant public will attach more importance to their final part, which is the most distinctive (27/02/2014, T‑225/12, LIDL express, EU:T:2014:94, § 73). In the marks at issue, the coinciding word, namely ‘EURO’, is at the beginning. However, it has a descriptive character and has therefore a limited influence in the comparison.

Furthermore, the contested sign’s word element is almost twice as long as the earlier marks, as it is composed of eight letters compared with fifteen letters in the contested sign.

Nevertheless, given that the earlier marks’ letters are all reproduced in the contested sign, the Opposition Division still considers the signs visually similar to a low 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 ‘EURO’ and ‘NICS’ and differ in the sound of the additional letters of the contested sign, namely ‘ELECTRO’. This difference will not go unnoticed and, on the contrary, creates a significant difference of rhythm and length between the marks.

Therefore, and even if the letters of the earlier marks are fully included in the contested sign, it remains that the signs are aurally similar to a low degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As regards the concept conveyed by the common element ‘EURO’, account is taken of the fact that non-distinctive elements have no influence in the conceptual comparison (04/02/2013, T‑159/11, Walichnowy Marko, EU:T:2013:56, § 45). Therefore, the sole element of the conveying a concept that is not devoid of distinctiveness (albeit weaker for part of the services) is ‘electronics’. As the marks do not convey any distinctive common concept, the marks are conceptually not similar.

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

d) 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).

The signs are visually and aurally similar to a low degree and conceptually not similar. The services are identical and the earlier marks have an average degree of distinctiveness.

Even if the marks share some similarities, as they are both composed of the sequences of letters ‘EURO’ and ‘NICS’, the marks also have differences which will be noticed and remembered, in particular the additional presence of the element ‘ELECTRO’, which creates an undisputable difference in length and rhythm between the marks.

Furthermore, the relevant public is composed of business customers displaying a higher degree of attention. Indeed, it is settled case-law that the probability of likelihood of confusion is reduced when the relevant public displays a higher degree of attention (21/03/2012, T–63/09, Swift GTi, EU:T:2012:137, § 112).

Moreover, the signs are not conceptually similar and, in accordance with the case-law, conceptual differences between the marks at issue may be such as to counteract to a large extent the visual and phonetic similarities existing between those marks. Such a counteraction requires that at least one of the marks at issue to have, from the point of view of the relevant public, a clear and specific meaning, so that the public is capable of grasping it immediately, and the other mark to have no such meaning or an entirely different meaning (13/06/2012, T‑519/10, SG Seikoh Giken, EU:T:2012:291, § 33; 13/06/2012, T‑342/10, Mesilette, EU:T:2012:290, § 32). In this case, the contested sign conveys a concept that is not devoid of distinctiveness (albeit weaker for part of the services), which is triggered by ‘ELECTRONICS’, whereas the earlier marks does not convey distinctive concepts.

Considering all the above, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

The opponent has also based its opposition on the following earlier trade marks:

 European Union trade mark registration No 6 615 579 for the figurative mark ;

 International trade mark registration No 760 699 designating Austria, Denmark, Estonia, Finland, Greece, Lithuania, Sweden, Bulgaria, Czech Republic, Germany, Spain, France, Hungary, Croatia, Italy, Latvia, Poland, Portugal, Romania, Slovenia and Slovakia, for the figurative mark ;

 European Union trade mark registration No 1 6 760 423 for the figurative mark ;

 Benelux trade mark registration No 680 432 for the figurative mark ;

 Benelux trade mark registration No 1 015 852 for the figurative mark .

The other earlier rights invoked by the opponent are less similar to the contested mark. This is because they contain further figurative elements, even if they are not particularly distinctive, which are not present in the contested trade mark. Moreover, they cover the same or a narrower scope of the goods and services. Furthermore, the above assessment regarding the understanding and distinctive character of the elements ‘EURO’ and ‘ELECTRONICS’ equally applies to the whole European Union.

Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services. Indeed, the reasoning regarding the conceptual non similarity applies equally, even for territories which were not previously assessed.

COSTS

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

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

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Marine DARTEYRE

Birgit FILTENBORG

Loreto URRACA LUQUE

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.