OPPOSITION No B 3 019 612

Hengstenberg GmbH & Co. KG, Mettinger Straße 109, 73728 Esslingen, Germany (opponent), represented by Unit4 IP Rechtsanwälte, Jägerstraße 40, 70174 Stuttgart, Germany (professional representative)

a g a i n s t

Arvydas Eimontas, Sodų G. 15, Kulautuva, 53478 Kauno R., Lithuania (applicant), represented by UAB Patentinė Ir Teisinė Apsauga, Mairono g. 14 B-1, 44289 Kaunas, Lithuania (professional representative).

On 05/02/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 019 612 is partially upheld, namely for the following contested goods and services:

Class 29: Oils and fats; processed fruits, fungi and vegetables (including nuts and pulses); birds eggs and egg products; dairy products and dairy substitutes; soups and stocks, meat extracts; fish, seafood and molluscs; meats; smoked meats; mincemeat [chopped meat]; fresh meat; prepared meat; fried meat; meat, preserved; dried meat; cooked meats; frozen meat; fresh poultry; cooked poultry; processed fish; dried fish; fish, preserved; smoked fish; salted fish; frozen cooked fish; sausage skins and imitations thereof.

Class 30: Processed grains, starches, and goods made thereof, baking preparations and yeasts; natural sweeteners, sweet coatings and fillings, bee products; salts, seasonings, flavourings and condiments; ice; bread; cereal bars and energy bars; pastries; biscuits (cookies); sweets (candy), candy bars; halvah; pancakes; coated nuts [confectionery]; confectionery; crackers; candy; foods with a cocoa base; foodstuffs containing chocolate [as the main constituent]; marzipan; fruited scones; croissants; nut confectionery; chocolates; chocolate; chocolate based products; chocolate-coated nuts; poppadums; waffles.

Class 31: Live animals, organisms for breeding; fodder; litter peat; agricultural and aquacultural crops, horticulture and forestry products.

Class 35: Wholesale services in relation to seafood; wholesale services in relation to foodstuffs; wholesale services in relation to meats; wholesale services in relation to horticulture products; retail services in relation to horticulture products; retail services relating to delicatessen products; retail services in relation to seafood; retail services relating to food; retail services in relation to foodstuffs; retail services via catalogues related to foodstuffs; retail services via global computer networks related to foodstuffs; mail order retail services related to foodstuffs; retail services in relation to meats; retail services relating to horticultural products; retail services relating to fruit; retail services connected with the sale of subscription boxes containing food.

2. European Union trade mark application No 17 476 301 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

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 17 476 301 for the figurative mark . The opposition is based on, German trade mark registration No 30 2013 004 436 ‘ORO’ (word mark) and international trade mark registration No 1 192 647 ‘ORO’ (word mark) designating Austria, Italy, Portugal and the United Kingdom. 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 on which the opposition is based are the following:

German trade mark registration No 30 2013 004 436

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; compotes; eggs; edible oils and fats.

Class 30: Flour and cereal preparations, namely noodles and pasta; mustard; vinegar, sauces (condiments); spices; ice.

Class 31: Grains and agricultural, horticultural and forestry products, as far as not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt.

After a cancellation of some of the goods at the request of the Office of origin the list of goods of international trade mark registration No 1 192 647 is as follows:

Class 29: Preserved, frozen, dried and cooked fruits and vegetables; compotes; edible oils and fats.

Class 30: Flour and preparations made from cereals, namely pasta and noodles; mustard; vinegar, sauces (condiments); spices.

The contested goods and services are the following:

Class 29: Oils and fats; processed fruits, fungi and vegetables (including nuts and pulses); sausage skins and imitations thereof; birds eggs and egg products; prepared insects and larvae; dairy products and dairy substitutes; soups and stocks, meat extracts; fish, seafood and molluscs; meats; smoked meats; mincemeat [chopped meat]; fresh meat; prepared meat; fried meat; meat, preserved; dried meat; cooked meats; frozen meat; milk; fresh poultry; cooked poultry; processed fish; dried fish; fish, preserved; smoked fish; salted fish; frozen cooked fish.

Class 30: Processed grains, starches, and goods made thereof, baking preparations and yeasts; sugars, natural sweeteners, sweet coatings and fillings, bee products; salts, seasonings, flavourings and condiments; coffee, teas and cocoa and substitutes therefor; ice, ice creams, frozen yogurts and sorbets; bread; cereal bars and energy bars; pastries, cakes, tarts and biscuits (cookies); sweets (candy), candy bars and chewing gum; halvah; pancakes; panned sweets (non-medicated -); coated nuts [confectionery]; muesli desserts; cocoa based creams in the form of spreads; cakes; confectionery; potato flour confectionery; crackers; confectionery ices; candy; foods with a cocoa base; foodstuffs containing chocolate [as the main constituent]; marzipan; meringues; non-medicated mint confectionery; fruited scones; croissants; nut confectionery; confectionery in liquid form; confectionery in frozen form; chocolates; chocolate; chocolate with alcohol; chocolate based products; chocolate-coated nuts; tiramisu; poppadums; truffles [confectionery]; waffles; cotton candy.

Class 31: Live animals, organisms for breeding; fodder; litter peat; agricultural and aquacultural crops, horticulture and forestry products.

Class 32: Beer and brewery products; soft drinks; preparations for making beverages.

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; administrative processing of purchase orders within the framework of services provided by mail-order companies; wholesale ordering services; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; import and export services; providing consumer product information relating to food or drink products; providing consumer product information; computerised stock ordering; providing consumer product advice; goods or services price quotations; administrative processing of purchase orders; arranging commercial transactions, for others, via online shops; arranging of presentations for business purposes; alcoholic beverage procurement services for others [purchasing goods for other businesses]; online ordering services; telephone order-taking services for others; providing consumer information relating to goods and services; arranging business introductions relating to the buying and selling of products; wholesale services in relation to beer; wholesale services in relation to teas; wholesale services in relation to desserts; wholesale services in relation to non-alcoholic beverages; wholesale services in relation to preparations for making beverages; wholesale services in relation to seafood; wholesale services in relation to cocoa; wholesale services in relation to coffee; wholesale services in relation to baked goods; wholesale services in relation to confectionery; wholesale services in relation to ice creams; wholesale services in relation to foodstuffs; wholesale services in relation to meats; wholesale services in relation to dairy products; wholesale services relating to candy; wholesale services in relation to frozen yogurts; wholesale services in relation to sorbets; wholesale services in relation to horticulture products; wholesale services in relation to alcoholic beverages (except beer); wholesale services in relation to chocolate; retail services in relation to alcoholic beverages (except beer); retail services in relation to beer; retail services via catalogues related to beer; retail services via global computer networks related to beer; mail order retail services related to beer; retail services in relation to teas; retail services in relation to horticulture products; retail services relating to delicatessen products; retail services in relation to desserts; retail services in relation to non-alcoholic beverages; retail services via catalogues related to non-alcoholic drinks; retail services via global computer networks related to non-alcoholic beverages; mail order retail services related to non-alcoholic beverages; retail services in relation to seafood; retail services in relation to cocoa; retail services in relation to coffee; retail services in relation to bakery products; retail services in relation to baked goods; retail services in relation to ice creams; retail services relating to food; retail services in relation to foodstuffs; retail services via catalogues related to foodstuffs; retail services via global computer networks related to foodstuffs; mail order retail services related to foodstuffs; retail services in relation to meats; retail services in relation to dairy products; retail services relating to candy; retail services in relation to gardening products; retail services in relation to frozen yogurts; retail services in relation to sorbets; retail services relating to horticultural products; retail services relating to alcoholic beverages; retail services via catalogues related to alcoholic beverages (except beer); retail services via global computer networks related to alcoholic beverages (except beer); mail order retail services related to alcoholic beverages (except beer); retail services relating to fruit; retail services in relation to chocolate; retail services connected with the sale of subscription boxes containing beers; retail services connected with the sale of subscription boxes containing food; retail services connected with the sale of subscription boxes containing chocolates.

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

The term ‘including’, used in the applicant’s list of goods and services, indicates 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, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

However, the term ‘namely’, used in the applicant’s and 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 goods in Class 29

Oils and fats; fish; meats; meat extracts are identically contained in the list of goods of the applicant and the list of goods of German trade mark registration No 30 2013 004 436 of the opponent (including synonyms).

The contested fresh poultry; cooked poultry are included in the broad category of the opponent’s poultry covered by German trade mark registration No 30 2013 004 436. Therefore, they are identical.

The contested seafood; processed fish; dried fish; fish, preserved; smoked fish; salted fish; frozen cooked fish are included in the broad category of the opponent’s fish covered by German trade mark registration No 30 2013 004 436. Therefore, they are identical.

The contested smoked meats; mincemeat [chopped meat]; fresh meat; prepared meat; fried meat; meat, preserved; dried meat; cooked meats; frozen meat are included in the broad category of the opponent’s meat covered by German trade mark registration No 30 2013 004 436. Therefore, they are identical.

The contested processed fruits, fungi and vegetables (including nuts and pulses) are included in the broad category of, or overlap with, the opponent’s preserved, frozen, dried and cooked fruits and vegetables covered by both earlier trade marks. Therefore, they are identical.

The contested birds eggs and egg products are included in the broad category of, or overlap with, the opponent’s eggs covered by German trade mark registration No 30 2013 004 436. Indeed, the term ‘egg products’ refers to eggs that are removed from their shells for processing (i.e. dried, frozen, refrigerated liquid egg products, etc.). All of these products are pasteurised. Examples of egg products include, for instance, frozen chopped hard-boiled and peeled eggs, frozen quiche mixes and refrigerated liquid or frozen egg substitutes. Therefore, these goods are considered identical.

The contested soups and stocks are similar to a high degree to the opponent‘s meat extracts covered by German trade mark registration No 30 2013 004 436, since they can coincide in nature (both can take liquid or dried forms), method of use (add water), distribution channels, relevant public and producer/provider. They are also in competition in the sense that one can be used in substitution of the other, however this interchangeability works only one way where meat extracts can be used as simple bouillon broths.

The contested dairy products and dairy substitutes are similar to the opponent’s edible oils and fats covered by both earlier trade marks. The General Court confirmed that edible oils and dairy products (including butter) are similar as they are in competition with each other or substitutable (27/09/2018, T-712/17, GN Laboratories / GNC et al., EU:T:2018:618). Moreover, they coincide in consumers and producers.

The contested molluscs and the opponent’s fish are similar because they usually coincide in producer, relevant public and distribution channels. Furthermore, they are in competition.

The contested sausage skins and imitations thereof are similar to a low degree to the opponent’s meat covered by German trade mark registration No 30 2013 004 436. The contested goods are usually made from animal intestines. Therefore, these goods are similar to a low degree to the opponent’s meat, as they have the same nature (deriving from animals) and can coincide in producers. However, the contested goods are mainly targeted at professional users.

The contested milk; prepared insects and larvae are dissimilar to the opponent’s goods in Class 29, 30 and 31. They differ in nature, purpose, distribution channels, producers and method of use. Furthermore, they are neither complementary nor in competition with each other.

Contested goods in Class 30

Ice is identically contained in the list of goods of the applicant and the list of goods of German trade mark registration No 30 2013 004 436 of the opponent.

The contested seasonings include, as a broader category, the opponent’s spices covered by both earlier trade marks. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested condiments include, as a broader category the opponent’s sauces (condiments) covered by both earlier trade marks. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested processed grains and goods made thereof overlap with the opponent’s flour and preparations made from cereals, namely pasta and noodles covered by both earlier trade marks. Therefore, they are identical.

The contested bread; pastries; biscuits (cookies); pancakes; crackers; marzipan; fruited scones; croissants; waffles; poppadums are all bakery products, therefore, they are similar to the opponent’s pasta covered by both earlier trade marks because they may coincide in natures and distribution channels. They target the same public and coincide in producers.

The contested baking preparations and yeasts; starches and goods made thereof are similar to the opponent’s flour covered by both earlier trade marks because they coincide in distribution channels/sales outlets. They coincide in relevant public and producers.

The contested salts are similar to the opponent’s spices covered by both earlier trade marks since they have the same purpose and distribution channels. They coincide in relevant public and producers.

The contested flavourings refers to substances that introduce a new flavour to a food item by altering or modifying that particular food's original flavour. Flavourings like alcohols, acids or fresh herbs often require cooking to render their basic attributes to the food, and to alter its flavour. On the other hand, the opponent’s spices covered by by both earlier trade marks are vegetable products that add an aromatic or pungent taste which is used for flavouring while cooking. Spices and flavourings are both used for flavouring food. While certain types of flavourings (for example, artificial flavourings) may be preferred by professionals, and natural flavourings (for instance, spices) may be preferred by general consumers, this does not change the fact that both target the professional and general public. Therefore, the goods under comparison are likely to be distributed through the same channels (wholesalers would be preferred by professionals and retailers, supermarkets, etc., would be preferred by general consumers). Therefore, these goods are similar.

The contested natural sweeteners, sweet coatings and bee products all include products such as honey. On the other hand, the contested fillings may include jams. The opponent’s preserved fruit in Class 29 covered by both earlier trade marks includes jellies and jams. Taking the above into account, the contested natural sweeteners, sweet coatings and bee products; fillings are at least similar to the opponent’s preserved fruit because they can coincide in the relevant public, have the same sales outlets and method of use. Moreover, they are in competition.

The contested confectionery; coated nuts [confectionery]; nut confectionery; halvah; sweets (candy); candy; candy bars; chocolate based products; chocolate-coated nuts; chocolate; chocolates; foods with a cocoa base; foodstuffs containing chocolate [as the main constituent]; cereal bars and energy bars are at least similar to a low degree to the opponent’s preserved and dried fruit in Class 29 covered by both earlier trade marks because they coincide in the relevant public, sales outlets and producers.

The contested sugars; coffee, teas and cocoa and substitutes therefor; cocoa based creams in the form of spreads; ice creams, frozen yogurts and sorbets; chewing gum; panned sweets (Non-medicated -); potato flour confectionery; confectionery ices; meringues; non-medicated mint confectionery; confectionery in liquid form; confectionery in frozen form; chocolate with alcohol; truffles [confectionery]; cotton candy; cakes (listed twice); tarts; muesli desserts; tiramisu are dissimilar to all the goods covered by the earlier trade marks because they have nothing in common. They have a different purpose and do not follow the same method of use. They are not complementary nor in competition with each other. They do not share the same distribution channels. Furthermore, they are produced by different companies and target different public.

Contested goods in Class 31

Agricultural, horticulture and forestry products are identically contained in the applicant’s list of goods and the opponent’s list of goods of German trade mark registration No 30 2013 004 436.

The contested fodder is included in the broad category of the opponent’s foodstuffs for animals covered by German trade mark registration No 30 2013 004 436. Therefore, they are identical.

The contested live animals, organisms for breeding; aquacultural crops are included in the broad category of, or overlap with, the opponent’s live animals covered by German trade mark registration No 30 2013 004 436. Therefore, they are identical.

The contested litter peat and the opponent’s foodstuffs for animals covered by German trade mark registration No 30 2013 004 436 are similar. Although the goods have a different nature, the first being natural compost used for animal bedding and hygiene, and the second are foodstuffs for animals. However, these goods share the same distribution channels and target the same consumers, i.e. pet or livestock owners. Furthermore, they are likely to be provided by the same undertakings.

Contested goods in Class 32

The contested beer and brewery products; soft drinks; preparations for making beverages are essentially prepared drinks or syrups (very sweet thick liquids made from sugar, extracts and essences used in beverages). These goods are not similar to any of the goods covered by the earlier trade marks which include mainly foodstuffs in Classes 29 and 30, and agricultural, horticultural and forestry products not having been subjected to any form of preparation for consumption, live animals and plants, as well as foodstuffs for animals. Account must be taken that the mere fact that one ingredient is needed for the preparation of a foodstuff will generally not be sufficient in itself to show that the goods are similar (26/10/2011, T-72/10, Naty’s, EU:T:2011:635, § 35-36). The goods at issue do not have the same manufacturers and are not in competition with each other, nor are they complementary. They do not have the same purpose or method of use. They are usually available in different stores or sections of stores. Consequently, these contested goods are dissimilar to all of the opponent’s goods.

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. This reasoning also applies to wholesale services.

Therefore, the contested wholesale services in relation to seafood; wholesale services in relation to foodstuffs; wholesale services in relation to meats; wholesale services in relation to horticulture products; retail services in relation to horticulture products; retail services relating to delicatessen products; retail services in relation to seafood; retail services relating to food; retail services in relation to foodstuffs; retail services via catalogues related to foodstuffs; retail services via global computer networks related to foodstuffs; mail order retail services related to foodstuffs; retail services in relation to meats; retail services relating to horticultural products; retail services relating to fruit; retail services connected with the sale of subscription boxes containing food are similar to a low degree to the opponent’s meat, fish, preparations made of cereals, namely pasta and noodles and agricultural and horticultural products.

The contested wholesale services in relation to baked goods; retail services in relation to bakery products; retail services in relation to baked goods; wholesale services in relation to beer; wholesale services in relation to teas; wholesale services in relation to desserts; wholesale services in relation to non-alcoholic beverages; wholesale services in relation to preparations for making beverages; wholesale services in relation to cocoa; wholesale services in relation to coffee; wholesale services in relation to confectionery; wholesale services in relation to ice creams; wholesale services in relation to dairy products; wholesale services relating to candy; wholesale services in relation to frozen yogurts; wholesale services in relation to sorbets; wholesale services in relation to alcoholic beverages (except beer); wholesale services in relation to chocolate; retail services in relation to alcoholic beverages (except beer); retail services in relation to beer; retail services via catalogues related to beer; retail services via global computer networks related to beer; mail order retail services related to beer; retail services in relation to teas; retail services in relation to desserts; retail services in relation to non-alcoholic beverages; retail services via catalogues related to non-alcoholic drinks; retail services via global computer networks related to non-alcoholic beverages; mail order retail services related to non-alcoholic beverages; retail services in relation to cocoa; retail services in relation to coffee; retail services in relation to ice creams; retail services in relation to dairy products; retail services relating to candy; retail services in relation to gardening products; retail services in relation to frozen yogurts; retail services in relation to sorbets; retail services relating to alcoholic beverages; retail services via catalogues related to alcoholic beverages (except beer); retail services via global computer networks related to alcoholic beverages (except beer); mail order retail services related to alcoholic beverages (except beer); retail services in relation to chocolate; retail services connected with the sale of subscription boxes containing beers; retail services connected with the sale of subscription boxes containing chocolates and the opponent’s goods in Class 29, 30 and 31 are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail and wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical or dissimilar.

The contested advertising, marketing and promotional services; business analysis, research and information services; business assistance, management and administrative services; administrative processing of purchase orders within the framework of services provided by mail-order companies; wholesale ordering services; electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; import and export services; providing consumer product information relating to food or drink products; providing consumer product information; computerised stock ordering; providing consumer product advice; goods or services price quotations; administrative processing of purchase orders; arranging commercial transactions, for others, via online shops; arranging of presentations for business purposes; alcoholic beverage procurement services for others [purchasing goods for other businesses]; online ordering services; telephone order-taking services for others; providing consumer information relating to goods and services; arranging business introductions relating to the buying and selling of products include mainly services rendered with the object of helping with the operation or management of a commercial undertaking, or the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments, concerning all kinds of goods or services. The opponent’s goods in Class 29, 30 and 31, as explained above, include mainly foodstuffs and agricultural, horticultural and forestry products. The contested services are dissimilar to all the opponent’s goods because they have nothing in common and do not coincide in any of the abovementioned factors.

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar (to varying degrees) are directed at the public at large and at business customers with specific professional knowledge or expertise (e.g. sausage skins and imitations thereof). The degree of attention is average.

c) The signs

ORO
Earlier trade marks	Contested sign

The relevant territory consists of Germany, Portugal, Austria, United Kingdom and Italy.

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 word marks consisting of the sole word ‘ORO’. In case of word marks it is irrelevant whether they are written in lower- or upper-case letters or in a combination thereof since it is the word as such that is protected and not its written form. The word ‘ORO’ means ‘gold’ in Italian while it is meaningless in the remaining parts of the relevant territory. In any case, whether or not it is understood, it is distinctive to a normal degree since it does not describe any of the goods in question or their characteristics.

The contested sign is a figurative mark consisting of a red speech bubble with a yellow outline which contains different elements in yellow, one of which is clearly an exclamation mark. While it cannot be excluded that part of the relevant public may only perceive this final exclamation mark and see the preceding ones as purely figurative elements, it remains that, precisely because of the presence of this exclamation mark and given the shapes of the preceding elements, they may be perceived by part of the public, at least, as letters forming the verbal sequence ‘Oro’. The applicant argues that, unlike the earlier mark, the contested sign contains a verbal element written in Cyrillic alphabet, namely the Russian expression ‘oᴦo!’, which means ‘Ah!’ and which is used to express human emotion. However, it must be borne in mind that the public in the relevant territory is not familiar with the Cyrillic alphabet and consequently, as indicated above, a significant part, if not the whole of the public, will see and read the Cyrillic letter ‘ᴦ’ as a stylised Latin letter ‘r’ in lower-case and perceive the whole as 'Oro!'. Therefore, the applicant's arguments must be set aside. In view of the foregoing, it should further be noted that for the part of the public which perceives a verbal element, although the stylisation of the contested mark is not insignificant or merely trivial, it remains 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).

In view of the foregoing, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the relevant public that will perceive the word ‘Oro’ followed by an exclamation mark in the contested sign. As explained above this word is meaningful in Italian whereas it has no meaning in the remaining parts of the relevant territory. In any event, it is distinctive to a normal degree in relation to the contested goods as well.

The contested sign has no element that could be considered clearly more dominant than other elements.

Visually and aurally, for the public under analysis, the signs coincide in the string of letters ‘ORO’, albeit represented in a specific fashion in the contested sign. The signs differ visually in the remaining elements of the contested sign which are rather striking. Therefore, the signs are visually similar to a very low degree and aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the public that associates the common word 'ORO' with 'gold’, the signs are conceptually identical. However, for the part of the public that sees the signs as meaningless a conceptual comparison is not possible, and therefore 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 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 as a whole have no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier marks must be seen as normal.

e) Global assessment, other arguments and conclusion

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

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).

In this case, the goods and services are partly identical or similar (to varying degrees) and partly dissimilar. The earlier marks enjoy an average degree of distinctiveness. The goods and services target the public at large as well as business customers whose degree of attention is average. The signs are visually similar to a very low degree and aurally identical. Conceptually, for part of the public the signs are conceptually identical whereas for another part of the public the conceptual aspect does not influence the assessment of the similarity of the signs.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Consequently, in spite of the differences in the figurative elements of the contested sign, there is a likelihood of confusion because the commonalities between the signs clearly overweigh their differences.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public that sees and reads the contested sign as ‘Oro!’ and therefore the opposition is partly well founded on the basis of the opponent’s German and international trade mark registration designating Portugal, Austria, United Kingdom and Italy. A likelihood of confusion for only part of the relevant public is sufficient to reject the contested application.

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

The rest of the contested goods and services are dissimilar. As the 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.

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

Martina GALLE

María del Carmen COBOS PALOMO

Helen Louise MOSBACK

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.