OPPOSITION No B 3 020 008

Enercon GmbH, Dreekamp 5, 26605 Aurich, Germany (opponent), represented by Eisenführ Speiser Patentanwälte Rechtsanwälte PartGmbB, Anna-Louisa-Karsch-Str. 2, 10178 Berlin, Germany (professional representative)

a g a i n s t

Energon Dobříš s.r.o., Dobříš 1665, 263 01 Dobříš, Czech Republic (applicant), represented by Pavel Cink, Veleslavínova 33, 30100 Plzeň, Czech Republic (professional representative).

On 30/01/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 020 008 is partially upheld, namely for the following contested services:

Class 35: Procurement services for others [purchasing goods and services for other businesses]; commercial information and advice for consumers [consumer advice shop]; product marketing; provision of business information; banner advertising; online advertisements; advertising; business inquiries; mediation of trade business for third parties; assistance and consultancy services in the field of business management of companies in the energy sector.

Class 37: Construction services; maintenance, servicing and repair of power generating apparatus and installations; installation of electrical and generating machinery; repair or maintenance of electronic machines and apparatus; repair or maintenance of power distribution or control machines and apparatus; electric appliance installation and repair; maintenance and repair of electronic installations; repair or maintenance of measuring machines and instruments; information on the maintenance of measuring and test equipment; electrical installation services; repair of energy supply installations; providing information relating to the repair or maintenance of power generators; installation, repair and maintenance of heating equipment; maintenance, repair and reconditioning of photovoltaic apparatus and installations; installation of solar powered systems; installation and maintenance of solar thermal installations; providing information relating to the repair or maintenance of consumer electrical appliances; civil engineering construction; civil engineering [construction] consultancy; repair of power lines; application of sheathing to cables; application of sheathing to optical fibres.

Class 39: Distribution of energy.

Class 40: Energy production.

Class 42: Technical consultancy services relating to structural engineering; providing computer facilities for the electronic storage of digital data; research in measurement technology; consultancy in the field of energy-saving; engineering services in the field of energy technology; design and development of energy distribution networks; drafting and development of photovoltaic systems; design and development of software for control, regulation and monitoring of solar energy systems; custom design of electromagnetic transformers; quality control; providing quality assurance services; quality control of building materials; research and development services in the field of engineering; design planning; construction drafting; designing of electrical systems; industrial engineering design services; engineering services; structural engineering services; engineering services in the field of building technology; energy auditing.

2. European Union trade mark application No 17 377 524 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 377 524 for the word mark ‘ENERGON’, namely against all the services in Classes 35, 37, 39, 40 and 42. The opposition is based on European Union trade mark registration No 16 821 101 for the word mark ‘ENERCON’. 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.

a) The goods and services

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

Class 3: Scouring solutions; paint, lacquer and varnish removers; polishing and cleaning preparations; perfumery, after-shave preparations, fragrances; cosmetics, skin crème, skin care preparations; cosmetic preparations and oils for baths.

Class 4: Dust removing preparations, in particular dust absorbing, wetting and binding compositions; candles and wicks for lighting.

Class 6: Metal building materials, in particular masts, pipes, rods, sheets, wires, cables; materials of steel, in particular steel masts, pipes and towers; utility poles; fences made of metal; wire rope; ducts of metal for ventilating and air-conditioning installations.

Class 7: Power stations, in particular wave power stations, pumped storage power stations; biogas and biomass installations; wind energy plants, hydroelectric power stations and parts and components for the aforesaid goods, included in class 7; current generators.

Class 8: Hand tools and implements (hand-operated).

Class 9: Connections for electric lines; antennas; electric transformers, electricity conduits, contacts, breakers, intensity meters, converters and reversing switches; control devices for wind energy plants; central control stations for wind farms; power distribution equipment; inverter; control cabinets; switch gear, fire-extinguishing devices; components for power stations, hydroelectric power stations, wind power plants, biogas installations, included in class 9; electrolytic devices, in particular for generating hydrogen and oxygen; accumulator batteries; energy regulation and energy conversion apparatus and instruments; electric battery and accumulator systems for storage and supply of electricity for vehicles; electric battery and accumulator systems for use in the storage, supply, transmission and stabilisation of electricity supplied by or to an electric power grid or other source of electric power generation; computer software for monitoring, optimising and regulating the storage, transmission and discharge of energy to and from such electric battery or accumulator systems; electronic control systems, in particular flexible AC transmission systems; electronic control systems which are used in electricity supply networks for targeted influence of power flows; static power electronics which influence targeted electrical parameters for power transfer in one or more AC networks in order to optimise transmission capacity; charge management systems; charging stations; inverter units; rectifiers; electricity transformers; boost converters; electric and electronic control devices for all of the aforesaid goods, electronic payment stations.

Class 11: Water treatment installations and apparatus, in particular brackish water plants, and components therefor, photovoltaic and solar installations.

Class 12: Vehicles, in particular service vehicles, repair cranes, trailers, electric vehicles; transport trolleys for repair and cleaning apparatus; apparatus for locomotion by land, air or water; electric cars; electric automobile parts, namely, motors; parts and fittings for all the aforesaid goods.

Class 14: Sundials, clocks and watches, electric, alarm clocks, stopwatches; ornaments [jewellery, jewelry (am)], in particular brooches, chains, tie pins, key rings [split rings with trinket or decorative fob].

Class 17: Cables, insulating material, seals, insulators, insulating materials and oils; insulating paints; compositions to prevent the radiation of heat and heat insulating materials.

Class 19: Concrete building elements, towers and shuttering; refractory materials; bollards, masts and fences, not of metal; pipes for building; cladding for buildings, included in class 19; components for power stations, hydroelectric power stations, wind power plants, biogas installations, included in class 19.

Class 21: Figurines of porcelain and glass; boxes of glass, jars, crystal [glassware], decanters, vases; household utensils, not of precious metal; kitchenware and cooking pot sets, in particular household and kitchen utensils and containers; porcelain and earthenware.

Class 22: Ropes, string, cords, in particular for packaging; nets, awnings, tarpaulins, sacks and bags, included in class 22.

Class 33: Alcoholic beverages, in particular liqueurs, brandy; digestifs; wines (except beers).

Class 35: Professional business and organisational consultancy in the field of regenerative energy production, in particular for wind power plants and water treatment installations; business services in the field of regenerative energy production, in particular location analysis, logistics, network connection and network integration.

Class 36: Consultancy with regard to financial matters, for consultancy in the field of regenerative energy production, in particular financial planning, leasing, shares, funds formation; leasing of real estate, in particular wind power plants and water treatment installations; electronic payment services; electronic processing of payments; financial services relating to electric battery and accumulator systems for the storage, discharge, supply, transmission and stabilisation of electricity; financing of electric vehicles.

Class 37: Building construction and wind power plants and water treatment installations, in particular foundation work, access routes and construction; maintenance, rust protection and repair with regard to the aforesaid installations; installation of wind power plants and water treatment installations; providing maintenance and repair services for electric vehicles; installation, integration, maintenance and repair and upgrading of electric battery and accumulator systems, and consultancy in relation thereto, for the storage, discharge, supply, transmission and stabilisation of electricity; leasing in relation to electric battery and accumulator systems for the storage, discharge, supply, transmission and stabilisation of electricity; operation, maintenance and regulation of electric battery and accumulator systems for the storage, discharge, supply, transmission and stabilisation of electricity, and consultancy relating thereto; recharging of batteries and accumulators.

Class 38: Operating databases, in particular for providing hotlines, e-commerce platforms, chat rooms, internet and intranet services through the providing of information, all in the field of regenerative energy production.

Class 39: Supplying consumers by providing electricity from regenerative energy sources; distribution and transmission of energy, electricity and water.

Class 41: Further training consultancy, publication of texts, including in electronic form, on intranets and the internet; further training programmes, arranging of workshops, training courses and seminars, all in the field of regenerative energy production.

Class 42: Computer programming for the system control of wind power plants and for network integration; electronic storage, monitoring and evaluation of location data from wind energy plants; engineering and scientific surveys for the construction and operating of wind power plants and water treatment installations; research, further development, technical consultancy and environmental protection consultancy in the field of regenerative energy production; project management, namely planning, developing and operating of wind farms or wind power plants; ships, aeroplanes, marine propulsion mechanisms, water pipes, flow pipes; hydraulic engineering; design of wind power plants and wind farms; monitoring of electric battery and accumulator systems for the storage and supply of electricity; optimizing electric battery systems for storage, discharge, supply, transmission and stabilization of electricity, and consulting services related thereto; development, programming and implementation of computer software in the aforesaid field.

The contested services are the following:

Class 35: Procurement services for others [purchasing goods and services for other businesses]; commercial information and advice for consumers [consumer advice shop]; product marketing; provision of business information; banner advertising; online advertisements; advertising; business inquiries; mediation of trade business for third parties; assistance and consultancy services in the field of business management of companies in the energy sector.

Class 37: Construction services; maintenance, servicing and repair of power generating apparatus and installations; installation of electrical and generating machinery; repair or maintenance of electronic machines and apparatus; repair or maintenance of power distribution or control machines and apparatus; electric appliance installation and repair; maintenance and repair of electronic installations; repair or maintenance of measuring machines and instruments; information on the maintenance of measuring and test equipment; electrical installation services; repair of energy supply installations; providing information relating to the repair or maintenance of power generators; installation, repair and maintenance of heating equipment; maintenance, repair and reconditioning of photovoltaic apparatus and installations; installation of solar powered systems; installation and maintenance of solar thermal installations; providing information relating to the repair or maintenance of consumer electrical appliances; civil engineering construction; civil engineering [construction] consultancy; repair of power lines; application of sheathing to cables; application of sheathing to optical fibres.

Class 39: Distribution of energy.

Class 40: Energy production.

Class 42: Technical consultancy services relating to structural engineering; providing computer facilities for the electronic storage of digital data; measurement services; rental of measuring apparatus; research in measurement technology; design of measurement systems; development of measuring and testing methods; consultancy in the field of energy-saving; engineering services in the field of energy technology; design and development of energy distribution networks; drafting and development of photovoltaic systems; design and development of software for control, regulation and monitoring of solar energy systems; custom design of electromagnetic transformers; quality control; providing quality assurance services; quality control of building materials; research and development services in the field of engineering; design planning; construction drafting; designing of electrical systems; industrial engineering design services; engineering services; structural engineering services; engineering services in the field of building technology; land surveying; energy auditing.

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 ‘including’, used in the opponent’s list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (on the use of ‘in particular’, which has the same function as ‘including’, see a reference in 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of goods and services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the goods and services 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 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 services in Class 35

The contested provision of business information; assistance and consultancy services in the field of business management of companies in the energy sector overlaps with the opponent’s professional business and organisational consultancy in the field of regenerative energy production, in particular for wind power plants and water treatment installations in Class 35. Therefore, they are identical.

The contested commercial information and advice for consumers [consumer advice shop] are services that involve providing information and consultancy on the products sold/services provided to the user. These services and the opponent’s professional business and organisational consultancy in the field of regenerative energy production, in particular for wind power plants and water treatment installations have similar purposes and natures, as they may involve providing advice and information to enable a company to function successfully in the area specified. In addition, they may have the same providers and distribution channels. Therefore, they are highly similar.

The contested product marketing; banner advertising; online advertisements; advertising are similar to a low degree to the opponent’s professional business and organisational consultancy in the field of regenerative energy production, in particular for wind power plants and water treatment installations in Class 35. They have the same purpose, providers and target public.

The opponent’s business services in the field of regenerative energy production, in particular location analysis, logistics, network connection and network integration in Class 35 and the contested procurement services for others [purchasing goods and services for other businesses]; business inquiries; mediation of trade business for third parties have the same nature. Their purpose, in the broadest sense, may also be the same in that they are designed to support one’s business. To that extent these services are similar to a low degree. However, in the absence of an express limitation by the opponent in order to clarify its services, it cannot be assumed that they coincide in other criteria.

Contested services in Class 37

The contested construction services include, as a broader category, the opponent’s building construction in Class 37. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested civil engineering construction overlaps with the opponent’s building construction in Class 37. Therefore, they are identical.

The contested maintenance, servicing and repair of power generating apparatus and installations overlap with the opponent’s maintenance, rust protection and repair with regard to wind power plants in Class 37. Therefore, they are identical.

The contested installation of electrical and generating machinery; repair or maintenance of electronic machines and apparatus; electric appliance installation and repair; maintenance and repair of electronic installations; electrical installation services; repair of energy supply installations overlap with the opponent’s installation, maintenance and repair of electric battery and accumulator systems in Class 37. Therefore, they are identical.

The contested repair or maintenance of power distribution or control machines and apparatus overlaps with the opponent’s maintenance and repair with regard to wind power plants and water treatment installations in Class 37. Therefore, they are identical.

The contested repair or maintenance of measuring machines and instruments is highly similar to the opponent’s maintenance and repair of electric battery and accumulator systems in Class 37. They have the same nature, purpose, providers, distribution channels and target public.

The contested providing information relating to the repair or maintenance of power generators; information on the maintenance of measuring and test equipment; providing information relating to the repair and maintenance of consumer electrical appliances are highly similar to the opponent’s consultancy in relation to maintenance and repair of electric battery and accumulator systems in Class 37. They have the same nature, purpose, providers, distribution channels and target public.

The contested installation, repair and maintenance of heating equipment; maintenance, repair and reconditioning of photovoltaic apparatus and installations; installation of solar powered systems; installation and maintenance of solar thermal installations; repair of power lines are highly similar to the opponent’s maintenance and repair with regard to wind power plants and water treatment installations and installation of wind power plants and water treatment installations in Class 37. They have the same nature, purpose, providers, distribution channels and target public.

The contested civil engineering [construction] consultancy is similar to the opponent’s building construction in Class 37. They have the same providers, target the same public and are complementary.

The contested application of sheathing to cables; application of sheathing to optical cables are similar to the opponent’s installation, integration, maintenance and repair and upgrading of electric battery and accumulator systems in Class 37, because they have the same general purpose of establishing (or restoring) the functionality and integrity of a technical unit. They can also have the same providers and end users.

Contested services in Class 39

Distribution of energy is identically contained in both lists of services.

Contested services in Class 40

The contested energy production and the opponent’s distribution of energy in Class 39 are similar to a low degree, because the providers of these services are usually the same (providing a network that allows the provision of power) and they are complementary.

Contested services in Class 42

The contested engineering services in the field of energy technology overlap with the opponent’s engineering for the construction and operating of wind power plants and water treatment installations in Class 42. Therefore, they are identical.

The contested drafting and development of photovoltaic systems overlap with the opponent’s development in the field of regenerative energy production and design of wind power plants and wind farms in Class 42. Therefore, they are identical.

The contested engineering services overlap with the opponent’s hydraulic engineering. Therefore, they are identical.

The contested consultancy in the field of energy-saving is highly similar to the opponent’s technical consultancy in the field of regenerative energy production in Class 42. These services have the same nature and the same general purpose, to provide information in the field of energy. They also have the same providers, distribution channels and end users and can be complementary.

The contested technical consultancy services relating to structural engineering are highly similar to the opponent’s technical consultancy in the field of regenerative energy production in Class 42. They have the same nature, purpose, providers, distribution channels and target public.

The contested design and development of energy distribution networks is highly similar to the opponent’s development in the field of regenerative energy production and design of wind power plants and wind farms in Class 42, because they have the same nature, purpose, providers, distribution channels and end users.

The contested design and development of software for control, regulation and monitoring of solar energy systems is highly similar to the opponent’s development, programming and implementation of computer software in the field of optimizing electric battery systems for storage, discharge, supply, transmission and stabilization of electricity in Class 42 because they have the same nature, purpose, providers, distribution channels and end users.

The contested research and development services in the field of engineering; research in measurement technology are highly similar to the opponent’s research, further development in the field of regenerative energy production in Class 42 because they have the same nature, purpose, providers, distribution channels and end users.

The contested designing of electrical systems; custom design of electromagnetic transformers; design planning; industrial engineering design services are highly similar to the opponent’s design of wind power plants and wind farms in Class 42 because they have the same nature. They may also have the same providers, distribution channels and end users.

The contested structural engineering services; engineering services in the field of building technology; quality control of building materials; quality control; providing quality assurance services; construction drafting are similar to the opponent’s building construction in Class 37 because these services may have the same providers, distribution channels and target public and can be complementary.

The purpose of the contested energy auditing is to analyse the energy flows in a building and understand its energy dynamics. During the energy audit, the auditor looks for opportunities to reduce the amount of energy input into the building without negatively affecting the output. Although these services do not have the same nature and purpose as the opponent’s technical consultancy in the field of regenerative energy production in Class 42, because the latter focus more on providing information and technical advice, they can have the same providers, distribution channels and target public. Furthermore, they can be complementary. Therefore, they are similar.

The contested providing computer facilities for the electronic storage of digital data is similar to a low degree to the opponent’s development, programming and implementation of computer software in the field of optimizing electric battery systems for storage, discharge, supply, transmission and stabilization of electricity in Class 42. These services can have the same providers and target the same public.

The rest of the contested services, namely measurement services; rental of measuring apparatus; design of measurement systems; development of measuring and testing methods; land surveying, are dissimilar to all the opponent’s goods and services because they have different natures, purposes, producers/providers, distribution channels and end users. They are neither complementary nor in competition.

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 or similar (to various degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to higher than average, depending on the specialised nature of the services, the frequency of purchase and their price.

c) The signs

ENERCON	ENERGON
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 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 words shown in the signs are meaningless for consumers in certain territories, for example in those territories where English and German are spoken and understood. Since this has an impact on the distinctiveness of these elements, the Opposition Division finds it appropriate to focus the comparison of the signs on the English- and German-speaking parts of the public.

Both signs are word marks, ‘ENERCON’ and ‘ENERGON’. They have no meaning for the relevant public. Therefore, they are of average distinctiveness.

Visually, the signs coincide in the sequence of letters ‘ENER*ON’. However, they differ in the letters ‘C’ of the earlier mark and ‘G’ of the contested sign, which are placed in the middle of the signs.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, since the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Therefore, the signs are visually highly similar.

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 ‛ENER*ON’, present identically in both signs. The pronunciation differs in the sound of the letters ‘C’ of the earlier mark and ‘G’ of the contested sign, a difference that is less audible because it appears in the middle of the signs.

Therefore, the signs are aurally highly similar.

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

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).

In the present case, the services are partly identical, partly similar (to various degrees) and partly dissimilar. The signs are visually and aurally highly similar and the conceptual aspect does not influence the assessment of the similarity of the signs. The degree of attention may vary from average to higher than average, and the earlier mark is of average distinctiveness.

The signs have the same beginning, ‘ENER’, and the same ending, ‘ON’. They differ in just one letter, ‘C’ in the earlier sign and ‘G’ in the contested sign. The similarities outweigh the differences because the latter are confined to just one letter, which is somewhat hidden in the middle of the signs, whereas the beginnings and the endings of the signs are the same.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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 undertaking or economically linked undertakings.

On account of the high degree of similarity of the signs at issue, the relevant public is likely to believe that the services in question, even those found to be similar to a low degree, originate from the same undertaking or from economically linked undertakings. This also applies to the part of the public with a higher than average degree of attention because, on account of the high degree of similarity of the signs, even this part of the public is likely to make that association.

The applicant’s arguments that the entities operate in different sectors and target different customers do not lead to a finding of no likelihood of confusion. For the purpose of these proceedings, it is irrelevant what services both parties actually render or to what kind of customers they actually offer them. The services have to be compared as they appear on the register and as they are listed in the application before the Office (e.g. 11/11/2010, R 1327/2010-2, MONELLA VAGABONDA VIP (fig.) / VAGABOND et al., § 25). The particular circumstances in which the services covered by the marks are actually offered have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58).

Neither does the fact that some of the services found to be similar are in different classes alter the above finding. As stated above under part a), the Nice Classification mainly serves to categorise goods/services for administrative purposes and is not decisive for their comparison. According to Article 33(7) EUTMR, the fact that goods or services are listed in the same class of the Nice Classification is not, in itself, an indication of similarity. According to the same provision and case-law, goods/services listed in different classes are not necessarily considered dissimilar (16/12/2008, T‑259/06, Manso de Velasco, EU:T:2008:575, § 30-31).

The applicant also states that it is in no way trying to free-ride on the opponent’s mark. It only wishes to register a mark that it has been using in the ordinary course of trade since 1999.

The right to an EUTM begins on the date when the EUTM is filed and not before, and from that date on the EUTM has to be examined with regard to opposition proceedings.

Therefore, when considering whether or not the EUTM falls under any of the relative grounds for refusal, events or facts that happened before the filing date of the EUTM are irrelevant because the rights of the opponent, insofar as they predate the EUTM, are earlier than the applicant’s EUTM.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English- and German-speaking parts of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. 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.

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

The rest of the contested 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 services cannot be successful.

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 services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Konstantinos MITROU

Alexandra APOSTOLAKIS

Tu Nhi VAN

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.