OPPOSITION No B 3 048 417

Lillywhites Limited, Unit A, Brook Park East, NG20 8RY Shirebrook, United Kingdom (opponent), represented by Lane IP Limited, 2 Throgmorton Avenue, EC2N 2DG London, United Kingdom (professional representative)

a g a i n s t

Fansbet Limited, Level G (office 1/6811), Quantum House, 75 Abate Rigord Street, XBX 1120 Ta’ Xbiex, Malta (applicant), represented by WH Partners, Level 5, Quantum House, 75 Abate Rigord Street, XBX 1120 Ta’Xbiex, Malta (professional representative).

On 26/03/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 417 is upheld for all the contested services.

2. European Union trade mark application No 17 553 108 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the contested services of European Union trade mark application No 17 553 108 for the word mark ‘Lilywhitesbet.com’. The opposition is based on European Union trade mark registration No 3 936 903 for the word mark ‘LILLYWHITES’. The opponent invoked Article 8(1)(b) and Article 8(5)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.

1. The goods and services

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

Class 9: Telecommunication installations, apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; computer software; computer programs.

Class 35: Advertising services.

Class 41: Training, entertainment, sporting and cultural activities.

The contested services are the following:

Class 35: Advertising and marketing; advertising; promotional advertising services; publicity and advertising; advertising and publicity; direct mail advertising; advertising flyer distribution; online advertising services; digital advertising services; direct market advertising; publication of advertising matter; advertising and marketing services; advertising and advertisement services; advertising and publicity services; dissemination of advertising materials; distribution of advertising materials; direct mail advertising services; advertising and promotion services; advertising and promotional services; promotion [advertising] of business; distribution of advertising brochures; publication of advertising texts; distribution of advertising leaflets; advertising material (updating of -); updating of advertising material; radio and television advertising; distribution of advertising announcements; design of advertising logos; design of advertising brochures; negotiation of advertising contracts; preparation of advertising campaigns; design of advertising materials; advertising, including on-line advertising on a computer network; marketing, advertising, and promotional services; provision of computerised advertising services; street dissemination of advertising materials.

Class 38: Communication by electronic means; communication of data by means of telecommunications; communication of information by electronic means; communication services for the electronic transmission of images; communication services for the transmission of information by electronic means; communication services for the electronic transmission of data; communication services for the transmission of information; communication services provided electronically; communications by telephone; communications services; communications services for the exchange of data in electronic form; communications via multinational telecommunication networks; data communication by electronic means; data communication services accessible by password; data transmission; data transmission and reception services via telecommunication means; data transmission services over telecommunications networks; data transmission services over telematic networks; delivery of digital audio and/or video by telecommunications; delivery of messages by audiovisual media; delivery of messages by electronic media; digital communications services; digital network telecommunications services; digital transmission of data; digital transmission of data via the internet; digital transmission of voice; digital transmission services; digital transmission services for audio and video data; electronic and telecommunication transmission services; electronic communication services for preparing financial information; electronic communications services; electronic communications services relating to credit card authorization; electronic network communications; electronic transmission and retransmission of sounds, images, documents, messages and data; electronic transmission of documents (services for the -); electronic transmission of images (services for the -); electronic transmission of instant messages and data; electronic transmission of messages and data; electronic transmission of voices (services for the -); electronic transmission of information (services for the -); fixed line telecommunication services; information about telecommunication; information relating to communications; information transmission by telematic codes; information transmission services via digital networks; inter-active video text services; interactive broadcasting and communications services; interactive communication services; interactive telecommunications services; interactive transmission of video over digital networks; message collection and transmission services; message sending; message sending and receiving services; message sending services; message sending, receiving and forwarding; message services; mobile radio communications; mobile telecommunication network services; network transmission of sounds, images, signals and data; news agency services; news agency services [transmission of news]; news agency services for electronic transmission; news agency services for telecommunications; on-line information services relating to telecommunications; operating of electronic communications systems; operation of a telecommunications network; operation of telecommunications systems; photo uploading services; providing access to electronic communications networks and electronic databases; providing access to telecommunication networks; providing communication services through the use of phone cards or debit cards; providing electronic telecommunication connections; providing facilities and equipment for video conferencing; providing high speed access to computer and communication networks; providing information relating to wireless communication; providing video conferencing services; provision of communications facilities for interchange of electronic data; provision of communications facilities for the interchange of digital data; provision of information relating to media communications; provision of communications via radio; provision of reports relating to communications; provision of telecommunications connections for telephone chat lines; provision of wireless application protocol services including those utilising a secure communications channel; radio communication; radio communications; radio communication services; radio telecommunications; remote transmission of data by means of telecommunications; secure transmission of data, sound or images; secured data, sound and image transmission services; sending [transmission] of news; telecommunication of information (including web pages); telecommunications access services; telecommunications services to obtain information from data banks; telecommunications services between computer networks; telecommunications services for the distribution of data; telecommunications services, namely, personal communication services; teleconferencing and video conferencing services; telematic communication services; telematic communications via computer terminals; telematic data transmission and file transfer; telematic sending of information; telematics services accessible by password; telephone services; transfer of data by telecommunications; transfer of information by radio; transmission and reception [transmission] of database information via the telecommunication network; transmission of coded messages and images; transmission of data, messages and information; transmission of database information via telecommunications networks; transmission of encrypted communications; transmission of information by data communications for assisting decision making; transmission of information by electronic communications networks; transmission of information for business purposes; transmission of information for domestic purposes; transmission of information in the audiovisual field; transmission of information through video communication systems; transmission of information via national and international networks; transmission of messages and images; transmission of messages, data and content via the internet and other communications networks; transmission of news and current affairs information; transmission of short messages; transmission of short messages [sms], images, speech, sound, music and text communications between mobile telecommunications devices; transmission of sound by electronic means; transmission of sound or visual recordings over networks; transmission of sound via interactive multimedia networks; transmission of sound, video and information; transmission of video films; transmission of vision via interactive multimedia networks; transmission of written communications (electronic -); video communication services; video transmission services; video transmission via digital networks; video uploading services; videoconferencing services; virtual chatrooms established via text messaging; voice and data transmission services; audio and video broadcasting services provided via the internet; audio broadcasting; audio, video and multimedia broadcasting via the internet and other communications networks; audiovisual transmission services; broadcasting of audiovisual and multimedia content via the internet; broadcasting of programmes via the internet; broadcasting programs via a global computer network; communication of information by television; digital audio broadcasting; electronic transmission of news; podcasting; televisual communication services; transmission of audio data via the internet; transmission of podcasts; transmission of digital audio and video broadcasts over a global computer network; transmission of user-generated content via the internet; transmission of video data via the internet; transmission of videos, movies, pictures, images, text, photos, games, user-generated content, audio content, and information via the internet; video broadcasting; video-on-demand transmission; provision of access to content, websites and portals; telecommunication services; broadcasting services; computer communication and internet access; arranging access to databases on the internet; communications services for accessing a data-base; providing access to internet chatrooms; providing access to internet forums; providing access to internet portals for third parties; providing access to a video sharing portal; providing access to an internet discussion website; providing access to databases; providing access to databases in computer networks; providing access to gambling and gaming websites on the internet; providing access to multimedia content online; providing access to online computer databases; providing access to platforms and portals on the internet; providing access to platforms on the internet; providing access to portals on the internet; providing access to web sites on the internet; providing access to weblogs; providing access to websites on the internet or any other communications network; providing telecommunications access to server centres; providing telecommunications connections to databases; providing user access to computer programmes in data networks; providing user access to information on the internet; providing user access to platforms on the internet; providing user access to portals on the internet; provision of access to data on communication networks; provision of access to data or documents stored electronically in central files for remote consultation; provision of access to data via the internet; provision of access to electronic sites; provision of access to sites on an electronic information network; provision of access to web pages; provision of electronic sound links; provision of electronic video links; provision of telecommunication access to audio content provided via the internet; provision of telecommunication access to video content provided via the internet; telecommunication gateway services; telecommunications services for providing access to computer databases; web site forwarding services; telephone and mobile telephone services; communications by cellular phones; computerised telephony services; international telephone services; live transmissions accessible via home pages on the internet [webcam]; local and long distance telephone services; long distance telephone communication services; long distance telephone services; mobile communications services; mobile telephone communication services; providing voice chat services; providing voice communication services over the internet; provision of communications by telephone; short message services; teleconferencing services; telematic [data communication] services; telematics services; telephone and telecommunication services; telephone communication services provided for hotlines and call centers; text messaging services; transfer of data by telephone; transfer of information by telephone; transmission of messages by telephone.

Class 41: Education, entertainment and sport services; education, entertainment and sports; audio, video and multimedia production, and photography; providing age ratings for television, movie, music, video and video game content; providing multi-media entertainment via a website; provision of multimedia entertainment programs by television, broadband, wireless and on-line services; electronic text publishing services; issue of publications; multimedia entertainment software publishing services; multimedia publishing of electronic publications; providing electronic publications; providing on-line publications; betting exchange services; betting services; bookmaking [turf accountancy]; casino services; casino, gaming and gambling services; conducting horse races; conducting lotteries for others; conducting multiple player games of chance; dog races; football pools services; horses (betting on -); leasing of casino games; on-line casino services; on-line gambling services; organization of lotteries; prize draws [lotteries]; providing casino facilities; providing casino facilities [gambling]; providing of casino and gaming facilities; provision of information relating to racehorses; provision of information relating to racing; provision of online information relating to game players; racing information services; services for the operation of computerised bingo; sporting results services; wagering services; arranging and conducting competitions; arranging and conducting of games; arranging and conducting of sports competitions; arranging of competitions for entertainment purposes; arranging of competitions via the internet; arranging of games; arranging of quizzes; conducting of phone-in competitions; operating quizzes; organisation of e-sports competitions; organisation of football competitions; organisation of games and competitions; organisation of golf competitions; organisation of ice-skating competitions; organisation of quizzes, games and competitions; organisation of sports tournaments; conducting of live sports events; conducting of sports events; arranging and conducting of entertainment activities; electronic game services and competitions provided by means of the internet; electronic game services provided by means of the internet; electronic games services provided by means of a global communication network; electronic games services provided from a computer database or by means of the internet; electronic games services provided via a global computer network; electronic games services, including provision of computer games on-line or by means of a global computer network; entertainment provided via a global communication network; entertainment provided via the internet; entertainment services relating to sport; fan club organisation; fan club services; fan club services (entertainment); fan clubs; game services provided by means of communications by computer terminals or mobile telephone; game services provided on-line from a computer network; gaming services for entertainment purposes; games services provided via computer networks and global communication networks; hosting of fantasy sports leagues; information about entertainment and entertainment events provided via online networks and the internet; information relating to computer gaming entertainment provided online from a computer database or a global communication network; internet games (non-downloadable); interactive entertainment services; on-line gaming services; online interactive entertainment; organising and conducting lotteries; organising of sporting events, competitions and sporting tournaments; organising of sports competitions and equestrian contests; providing a computer game that may be accessed by users on a global network and/or the internet; providing a computer game that may be accessed network-wide by network users; providing games; providing information about sporting activities; providing information to game players about the ranking of their scores of games through the web sites; providing information on-line relating to computer games and computer enhancements for games; providing interactive multi-player computer games via the internet and electronic communication networks; providing on-line information in the field of computer gaming entertainment; providing on-line interactive computer games; providing online entertainment in the nature of fantasy sports leagues; providing online entertainment in the nature of game tournaments; providing sports entertainment via a website; provision of games by means of a computer based system; provision of news relating to sport; provision of on-line computer games; provision of on-line entertainment; virtual reality game services provided on-line from a computer network; gaming services; online gaming services; gambling; online gambling services; lottery services.

Class 42: Computer aided graphic design; computer network design for others; computer specification design; computer system design; computer-aided design of video graphics; computer website design; creating and maintaining computer sites (web sites) for others; consumer product design; creating and designing web pages for others; creating and maintaining web sites for others; creating electronically stored web pages for online services and the internet; creating, designing and maintaining web sites; creation and provision of web pages to and for third parties; creation of internet web sites; database design and development; design and creating web sites for others; design and development of electronic data security systems; design and development of networks; design and development of new products; design and development of new technology for others; design and graphic arts design for the creation of web pages on the internet; design and graphic arts design for the creation of web sites; design and maintenance of computer sites for third parties; design and development of testing and analysis methods; design and development of telecommunications networks; design and maintenance of web sites for others; design and testing for new product development; design and testing of new products; design of brand names; design of computer databases; design of games; design services for data processing systems; design services relating to computer hardware and to computer programmes; design services relating to data processing tools; design services relating to data processors; design services relating to data processing test tools; design services relating to data transmission test tools; designing and developing webpages on the internet; designing and implementing network web pages for others; designing and implementing web sites for others; designing of electronic systems; designing websites for advertising purposes; graphic design; graphic design for the compilation of web pages on the internet; graphic illustration design; graphic illustration services for others; homepage and webpage design; internet web site design services; new product design; product design; product design and development; product development; product development consultation; product development for others; rendering of computer graphics (digital imaging services); technological services and design relating thereto; web site design and creation services; website development for others; website development services; design services; creating and maintaining websites for cellular phones; creation of computing platforms for third parties; design and development of data storage systems; design and development of data processing systems; design and development of electronic database software; design, creation and programming of web pages; development and testing of computing methods, algorithms and software; development of computer based networks; development of computer systems; development of systems for the storage of data; development of systems for the processing of data; development of systems for the transmission of data; diagnosing computer hardware problems using software; integration of computer systems and networks; maintenance of data processing software; monitoring of computer systems by remote access; on-line computer services; planning, design, development and maintenance of online websites for third parties; providing information about the design and development of computer software, systems and networks; remote server administration; rental and maintenance of computer software; updating websites for others; design and development of computer hardware; it services; backup services for computer hard drive data; application service provider services; application service provider [asp], namely, hosting computer software applications of others; cloud computing; computer services concerning electronic data storage; computerised business information storage; configuration of computer networks by software; configuring computer hardware using software; consultancy and information services relating to software rental; consulting in the field of cloud computing networks and applications; creating and maintaining websites for mobile phones; data back-up services; data warehousing; digital asset management; electronic data storage; electronic data back-up; electronic data storage and data back-up services; electronic storage of archived e-mails; electronic storage of documents; electronic storage of documents and archived e-mails; electronic storage of entertainment media content; electronic storage of files and documents; electronic storage of images; platform as a service [PaaS]; online data storage; programming of software for inventory management; providing back-up computer programs and facilities; providing computer facilities for the electronic storage of digital data; providing electronic memory space on the internet; providing software on a global computer network; providing temporary use of web-based applications; providing temporary use of web-based software; rental of application software; rental of computer game software; rental of computer software; rental of computer programs; rental of computer software and programs; software as a service [SaaS] services; server hosting.

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.

The contested services in Class 35

The applicant’s negotiation of advertising contracts is similar to a low degree to the opponent’s advertising services in Class 35, since the negotiation of contracts is one of the procedures carried out by advertising companies in order to set the conditions of contracts with clients. Therefore, they can coincide in purpose, can target the same consumers and can come from the same kind of undertakings.

The rest of the contested services in Class 35 are identical to the opponent’s advertising services in Class 35, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include or overlap with, the contested services. For instance, advertising is included identically in both lists, and the contested distribution of advertising brochures; publication of advertising texts; distribution of advertising leaflets fall into the broad category of the opponent’s advertising services.

The contested services in Class 38

These are all telecommunication services, mainly carried out using telecommunication apparatus (such as computers or telephones), and with some operating via the internet. Some consist of broadcasting services or the provision of access to data (e.g. databases), mainly on the internet or other networks. Others consist of providing information in relation to communication and telecommunications (e.g. on-line information services relating to telecommunications).

Therefore, the contested services are similar to at least a low degree to at least one of the following of the opponent’s goods covered by Class 9: telecommunications installations, apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images. In relation to at least one of these categories of the opponent’s goods the contested services coincide in purpose, are complementary, coincide in distribution channels/points of sale and can target the same consumers.

The contested services in Class 41

These consist of services rendered by persons or institutions in the development of mental faculties and for entertainment (e.g. gambling/gaming-related services). Other parts of the contested services in this class consist of sports-related services and of publishing services.

The contested services consisting of publishing services (i.e. electronic text publishing services; issue of publications; multimedia entertainment software publishing services; multimedia publishing of electronic publications; providing electronic publications; providing on-line publications) are similar to the opponent’s computer programs (which include recorded computer software) since they can coincide in purpose, can target the same consumers and can come from the same kind of undertakings.

The rest of the contested services in Class 41 are identical to at least one of the opponent’s broad categories of services training, entertainment, sporting and cultural activities in the same class. Either they are identically contained in both lists (including synonyms) or the opponent’s services include, are included in, or overlap with, the contested services.

The contested services in Class 42

These are partly technological (IT) services; partly various types of design services; partly graphic design services of various types (e.g. graphic design; graphic illustration design; graphic illustration services for others); partly creation and development services; and partly programming- and implementation of technology-related services.

The specification ‘products’ appearing in some of the contested services (e.g. design and development of new products) is understood as referring to various types of goods, inter alia, software. It should also be noted that the opponent’s computer software in Class 9 is a broad category, which includes all kinds of software, including that designed and used for graphic design purposes (e.g. computer graphics software). Finally, the contested design of brand names, as classified in Class 42, is understood as a graphic design service, despite the fact that it is related to the design of a brand. Based on these clarifications, the conclusion below is reached.

All the contested services in this class are similar to at least a low degree to the opponent’s computer software in Class 9. These goods and services coincide in distribution channels, can target the same consumers and are likely to originate from the same kind of companies.

2. 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.

The goods and services found to be identical or similar (to varying degrees) are directed at the public at large, professionals from the IT field and business customers. The degree of attention paid by the public during their purchase will vary from average, in relation to goods or services frequently purchased or that are not expensive (e.g. entertainment services), to high, in relation to goods or services that are specialised, infrequently purchased and/or expensive, and/or that require technical knowledge in order to be used (e.g. programming of software for inventory management).

3. The signs

LILLYWHITES	Lilywhitesbet.com
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 likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application(18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57).

For the English-speaking part of the public the signs under comparison are mentally dissected into various words which are identifiable/recognised independent elements. This perception leads to a conceptual similarity between the marks that will not arise for the part of the public perceiving the marks as meaningless invented terms (e.g. Spanish-speaking consumers). Therefore, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public (e.g. Ireland and Malta) since it is considered the best-case scenario for likelihood of confusion to arise.

The earlier mark is perceived by the English-speaking consumers as formed by a name (i.e. ‘LILLY’) and a surname (i.e. ‘WHITE’) and by the ending ‘S’, which is used in English to denote possession. The correct use of this ending ‘S’ would require it to have been preceded by an apostrophe (i.e. ‘WHITE’S’). However, even if the apostrophe is not present, English-speaking consumers will perceive it in the same way. As a whole, the earlier mark is perceived as meaning ‘of/belonging to a person named Lilly White’.

For the sake of completeness, the Opposition Division notes that the word ‘Lilly’ is also the name of a flower for the English-speaking consumers. However, they will perceive it as a person’s name due to the elements accompanying it, namely the word ‘WHITE’ (understood as a surname) and the ending ‘S’ (denoting possession).

The same concept described above will be perceived in the contested mark in relation to ‘Lilywhites’, since ‘LILLY’ and ‘Lily’ are alternative spellings for the same name. English-speaking consumers will also carry out the mental dissection of ‘bet’ and ‘.com’ in this sign. This is because the word ‘bet’ is understood as the English word for ‘wager’ or ‘gamble’, and ‘.com’ is the commonly used domain name (top-level domain) used in website addresses. As a whole, the contested sign is perceived by the English-speaking consumers as the name of a website, meaning ‘a bet belonging to/made by a person named Lilly White’.

The elements ‘LillyWhites’ and ‘Lilywhites’ of the earlier and contested sign, respectively, are of average distinctive character.

The element ‘bet’ of the contested mark is either descriptive or allusive of the characteristics of some of the services involved (e.g. betting exchange services; betting services) in relation to which it can be seen as a reference to their content or their intended purpose and it is therefore of, at most, a lower than average degree of distinctive character in relation to them. However, this element is, distinctive for the rest of goods and services (e.g. digital transmission of voice) in relation to which it has no meaning.

Lastly, the element ‘.com’ of the contested mark will be immediately recognised by consumers as referring to a website, namely, a generic top-level domain (28/06/ 2016, T‑134/15, SOCIAL.COM, EU:T:2016:366, § 23) and conveying the idea that the services may be inspected or bought online (13/12/2007, T‑134/06, Pagesjaunes.com, EU:T:2007:387, § 63). As such, it is considered void of distinctive character. However, this does not mean that the element is necessarily negligible in the overall impression conveyed by the mark applied for.

The earlier mark has no element more distinctive than others. The most distinctive part of the contested sign is ‘Lilywhites’ and, in relation to part of the goods and services, ‘bet’.

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. In the present case, it is relevant to note that the coinciding elements (despite the differing single/double ‘L’ in ‘Lily’ and ‘LILLY’) constitute the entire earlier mark and the beginning of the contested sign. In this same line, the differing ‘bet.com’ is read and pronounced at the end of the contested mark, and is of reduced impact for this reason.

Visually, the signs coincide in the sequence of letters ‘L-i-l-y-w-h-i-t-e-s’, and differ in the double ‘L’ of ‘LILLY’ of the earlier mark, and in the elements ‘bet’ and ‘.com’ of the contested sign. However, the differing ‘L’ referred to is likely to be overlooked, since it is preceded and followed by sequences of coinciding letters, and is a mere repetition of one of those coinciding letters. Therefore, its visual impact is minimal. The differing ‘bet’ and ‘.com’ are considered of reduced impact, for the reasons explained above (i.e. their degree of distinctiveness and/or their position within the signs).

The marks are visually similar to a high degree.

Aurally, since ‘Lily’ and ‘LILLY’ are aurally identical, the signs coincide in the sound of ‘LILLYWHITES’ and ‘Lilywhites’. The earlier mark is entirely contained in the contested sign, being the first element pronounced in it.

The marks differ in the pronunciation of ‘bet’ and ‘.com’, of the contested sign, which are of reduced impact, for the reasons explained above.

Therefore, the marks are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. The signs are perceived as referring to the same person (called Lilly/Lily White), and denoting possession by her (i.e. letter ‘s’ following ‘White’). The marks differ in the concepts of ‘bet’ and ‘.com’ which, as explained above, are of reduced impact.

Therefore, it is considered that the marks are conceptually similar to a high degree.

4. 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and 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.

5. Global assessment, other arguments and conclusion

The signs are highly similar from the visual, aural and conceptual perspectives, and the earlier mark is of average distinctive character.

The coincidences between the marks rely on the fact that the earlier mark is entirely contained in the contested sign, in which it is the first element read and pronounced and, at least in relation to part of the goods and services, also the most distinctive part of it. Even though the spelling of these coinciding elements is not exactly the same, due to the difference in the single or double ‘L’ of ‘Lily’/’LILLY’, this has no aural or conceptual impact, and is easily overlooked from the visual perspective.

The signs differ in elements considered of reduced impact, for various reasons (i.e. their low degree of distinctive character, if any, and/or their position within the contested sign).

The goods and services found to be identical or similar (to varying degrees) are directed at the public at large, professionals from the IT field, and business customers, who will pay a degree of attention that will vary from average to high, depending on their characteristics.

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).

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 this case, it is considered that the remarkable coincidences between the marks, together with the identity or similarity (to varying degrees) of the goods and services are clearly enough to counteract their dissimilarities, and to lead consumers to confusion with regard to their commercial origin.

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, in this case 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).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. 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.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

María Clara IBÁÑEZ FIORILLO

María del Carmen SUCH SANCHEZ

Vita VORONECKAITE

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.