OPPOSITION No B 3 046 029

Rexel France, 13 Boulevard du Fort de Vaux, 75017 Paris, France (opponent), represented by AB Initio, 5, rue Daunou, 75002 Paris, France (professional representative)

a g a i n s t

Mattei Saulle, Via Vivaldi 4, 40033 Casalecchio di Reno, Italy (applicant).

On 03/07/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 046 029 is upheld for all the contested services.

2. European Union trade mark application No 17 475 609 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 475 609 for the word mark ‘NÒEXIS’, namely against all services in Classes 35, 41 and 42. The opposition is based on European Union trade mark registration No 12 223 038 for the word mark ‘NEOXIS’. 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 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 services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The services

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

Class 35: Advertising, wholesaling or retailing of industrial automation solutions, industrial equipment, parts for industrial machines, apparatus for measuring and controlling energy, tools for instruments and for measuring purposes, fittings for connectivity, and apparatus for security and communications for industrial use, business consultancy for companies concerning the selection of goods contained in catalogues, in the field of industrial automation solutions, industrial equipment, parts for industrial machines, apparatus for measuring and controlling energy, tools for instruments and for measuring purposes, fittings for connectivity, and apparatus for security and communications for industrial use, business organisation and management consultancy; Business administration; Consultancy in the field of business strategy, business management and development consultancy; Specialist consultancy and business information; Market surveys; Organisation of trade shows, exhibitions, trade fairs and professional markets for commercial or advertising purposes, computerised file management; Administrative processing of purchase orders; Compilation, updating and archiving of databases; Compilation, input, systemisation and processing of data, information, images and documents; Providing of information, namely information on companies and sectors of business in computer databases or via the Internet; Market research and market analysis services; Demonstration of goods.

Class 42 Technical consultancy for companies concerning the selection of goods contained in catalogues, in the field of industrial automation solutions, industrial equipment, parts for industrial machines, apparatus for measuring and controlling energy, tools for instruments and for measuring purposes, fittings for connectivity, and apparatus for security and communications for industrial use, technical auditing, diagnostics and analysis relating to industrial equipment and electrical installations for the implementation of more efficient and more economical technological solutions, research and implementation of technological solutions concerning lighting, automation solutions, climatic engineering, connectivity, energy efficiency and renewable energy, technical assessment concerning lighting, automation solutions, climatic engineering, connectivity, energy efficiency and renewable energy, electrical engineering, technical project studies; Research and development of new products for others, engineering, logistical engineering, technical documentation.

The contested services are the following:

Class 35: Management assistance; Business management and organisational services; Consultancy and advice related to business operations; Business administration; Business process re-engineering.

Class 41: Education; Providing of training; business and management training services.

Class 42: Technical advisory and consulting services; Design services.

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

The term ‘namely’, used in the opponent’s list of services to show the relationship of individual services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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

Business administration is identically contained in both lists of services.

The contested business management and organisational services; consultancy and advice related to business operations and business process re-engineering are identical to the opponent’s consultancy in the field of business strategy, business management and development consultancy because all of these services aim to provide businesses with the necessary support to acquire, develop and expand their market share. As stated by the opponent, the business process re-engineering are intended to restructure a company or part of its operations by analysing its business processes, therefore, being these services provided, identical.

The contested management assistance is identical to the opponent’s management consultancy. The aim of both services is to help organizations to improve their performance. The purpose of the services, providers, as well as the relevant public is the same and they are also in competition with each other.

Contested services in Class 41

The contested education; providing of training and business and management training services are similar to an average degree to the opponent’s research and development of new products for others, engineering, logistical engineering, technical documentation in Class 42. The purpose, providers and distribution channels are similar as their aim is to improve the business of organizations in order to increase their market share and position themselves better in the market. Education, training, research are only some ways of implementing developments, therefore, they are also in competition with each other.

Contested services in Class 42

The contested technical advisory and consulting services include, as broader categories the opponent’s technical consultancy for companies concerning the selection of goods contained in catalogues, in the field of industrial automation solutions, industrial equipment, parts for industrial machines, apparatus for measuring and controlling energy, tools for instruments and for measuring purposes, fittings for connectivity, and apparatus for security and communications for industrial use, technical auditing, diagnostics and analysis relating to industrial equipment and electrical installations for the implementation of more efficient and more economical technological solutions, research and implementation of technological solutions concerning lighting, automation solutions, climatic engineering, connectivity, energy efficiency and renewable energy, technical assessment concerning lighting, automation solutions, climatic engineering, connectivity, energy efficiency and renewable energy, electrical engineering, technical project studies. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested design services are included in the broad category of, or overlap with, the opponent’s research and development of new products for others. 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 or similar are mainly directed at business customers with specific professional knowledge or expertise; however, some of the services (e.g. education and providing of training) target also the public at large.

The degree of attention is considered to vary between average and higher than average, depending on the price, specialised nature, or terms and conditions of the services purchased (e.g. consumers will be rather attentive with regard to the business management services in Class 35 because of the potential impact of such services on the users’ business).

c) The signs

NEOXIS	NÒEXIS
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 earlier sign ‘NEOXIS’ has no meaning for the relevant public and is, therefore, distinctive as it is not descriptive, allusive or otherwise weak/non-distinctive for the relevant services.

The contested sign ‘NÒEXIS’ has no meaning either and is distinctive for the relevant services as it is not descriptive, allusive or otherwise weak/non-distinctive.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because 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.

Visually, both signs have six letters, and all of them are identical. They have, with the exception of the second and third letter, also the same sequence. They coincide in the beginning ‘N**’ and the end ‘***XIS’, and differ in the order of the second and third letters only, namely ‘EO’ in the earlier mark and ‘ÒE’ in the contested mark.

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 four of the six letters, namely in the beginnings and endings of the signs, (‘N**XIS’). The pronunciation of the second and third letters ‘EO’ or ‘ÒE’ is different considered together, but individually they are identical. The grave accent on the ‘o’ of the contested sign, does not have much influence, as only part of the relevant public will understand and apply it. In addition, in some languages, such as German, consumers will probably pronounce the earlier mark as ‘NE-O-XIS’ and the contested sign as ‘NÖ-XIS’, therefore, enhancing the phonetical difference between the signs. Therefore, the aural similarity is at least to an average degree.

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

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).

The contested services are partly identical and partly similar to an average degree to those of the earlier mark and they target the public at large and business customers; the public’s degree of attention varies from average to higher than average. Furthermore, the earlier mark enjoys a normal degree of distinctiveness.

The signs are visually highly similar, aurally similar to at least an average degree and the conceptual aspect does not influence the assessment of the similarity between the signs. The difference between the signs, namely the inverted sequence of the second and third letters (‘OE’ v ‘ÒE’), is a minor difference and clearly insufficient to counterbalance the similarities resulting from the coinciding letter sequence, ‘N**XIS’, with the marks having the same beginnings (‘N’) and endings (‘XIS’).

Even a high degree of attention for some of the services would not eliminate the likelihood that the consumer may think that the contested mark is in some way economically linked to the owner of the earlier mark. In this respect, account should be taken of the fact that even consumers with 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), given that they rarely have the chance to make a direct comparison between different marks, but must place their trust in their imperfect recollection of them.

Considering all the above, there is a likelihood of confusion on the part of the general as well as professional public with higher than average level of attention. Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 223 038 for the word mark ‘NEOXIS’. It follows that the contested trade mark must be rejected for all the contested services.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Martin EBERL

Astrid Victoria WÄBER

Alexandra APOSTOLAKIS

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.