OPPOSITION No B 3 050 770

O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, Cambridge CB25 9PD, United Kingdom (professional representative)

a g a i n s t

Kugler Behälter- und Anlagenbau GmbH, Am Eisberg 8, 72202 Nagold, Germany (applicant).

On 02/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 770 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 580 606 for the figurative mark . The opposition is based on the following earlier marks:

1. EUTM registration No 9 279 456 ‘O2’ (word), in Classes 1, 2, 4, 6, 7, 8, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 39, 42, 43, 44 and 45 (reputation claimed for services in Classes 35 and 36);

2. EUTM registration No 13 108 139 (figurative), in Classes 9, 35, 36, 38, 41 and 42 (reputation claimed for goods and services in Classes 9, 35, 36, 38, 41);

3. UK TM registration No 2 279 371 (figurative), in Classes 9 and 38 (reputation claimed for goods and services in Classes 9 and 38);

4. EUTM registration No 15 167 307 (figurative), in Classes 1, 2, 5, 7, 10, 11, 12, 13, 15, 17, 19, 20, 22, 23, 26, 27, 31, 37 and 40.

The opponent invoked Article 8(1)(b) EUTMR regarding all earlier marks and also Article 8(5) EUTMR in connection with earlier marks 1), 2) and 3).

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s earlier mark 1), EUTM No 9 279 456, and its earlier mark 4), EUTM No 15 167 307, given that they have the widest scope of protection and both of them cover the goods in Class 1 that are most relevant in the present case.

1. The goods

The opposition is based, inter alia, on the following goods:

Earlier mark 1): EUTM No 9 279 456 ‘O2’ (word)

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry, none of the aforementioned goods being gases for industrial purposes; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Earlier mark 4): EUTM No 15 167 307 (figurative)

Class 1: Unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; alcohol; antifreeze; compost.

The contested goods are the following:

Class 1: Fertilisers, and chemicals for use in agriculture, horticulture and forestry; compost activators; additives (chemical -) for compost; soil additives [fertilising]; chemicals used in agriculture, horticulture and forestry; chemical fertilizers; manures; compost mixtures of mineral based material in particulate form; mineral fertilising preparations; preparations for fortifying plants.

The contested manures are identically included in the list of goods of the opponent’s earlier marks 1) and 4).

Fertiliser is ‘a substance such as solid animal waste or a chemical mixture that you spread on the ground in order to make plants grow more successfully’ or ‘any substance, such as manure or a mixture of nitrates, added to soil or water to increase its productivity’; compost is ‘a mixture of decayed plants and vegetable waste which is added to the soil to help plants grow’ or ‘specially treated soil that you buy and use to grow seeds and plants in pots’ (information extracted from Collins Dictionary on 01/08/2019 at https://www.collinsdictionary.com/dictionary/english/fertilizer and https://www.collinsdictionary.com/dictionary/english/compost).

The contested fertilisers, and chemicals for use in agriculture, horticulture and forestry; compost activators; additives (chemical -) for compost; soil additives [fertilising]; chemicals used in agriculture, horticulture and forestry; chemical fertilizers; compost mixtures of mineral based material in particulate form; mineral fertilising preparations; preparations for fortifying plants are all included in the broad categories of, or at the very least overlap with, the opponent’s chemicals used in agriculture, horticulture and forestry, none of the aforementioned goods being gases for industrial purposes of the earlier mark 1). Therefore, they are identical.

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.

In the present case, the goods found to be identical are specialised goods directed, mostly, at the professional public with specific professional knowledge or expertise in the field of chemicals used in agriculture, horticulture and forestry. However, at least a part of these goods, such as manures, may be distributed, for example, through general garden centres and may be used in home gardens by the public at large.

The Opposition Division does not share the opponent’s opinion that the degree of attention of that public is average. The level of attention paid by the public will be higher than average given that the goods at issue are chemical products having particular properties that will have a direct effect on the health of plants. In addition, the environmental impact of the goods covered by a trade mark (e.g. how poisonous and dangerous they are for people’s health and how much harm they can cause the environment) may result in an increase in the relevant consumer’s degree of attention (11/10/2013, R 1252/2012‑2, FLOROVIT / FLORA FIT, § 16; 22/03/2011, T‑486/07, CA, EU:T:2011:104, § 41).

Therefore, the degree of attention of the relevant public, both the professional public and the public at large, is deemed to be higher than average.

3. The signs

Earlier mark 1) O2 Earlier mark 4)
Earlier trade marks	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 marks are a word mark ‘O2’ and a figurative mark with the sole element ‘O₂’ depicted in a fairly standard black typeface. They both refer to the concept of a chemical formula, namely, oxygen in its most stable form. This chemical formula is commonly known and, as such, the relevant public will be aware of this concept. The fact that the earlier word mark ‘O2’ is not represented in subscript is irrelevant since this formula is frequently referred to in both ways. In addition, in the case of word marks, it is the word as such that is protected and not its written form, therefore, the earlier word mark could be depicted as ‘O₂’.

As regards an inherent distinctiveness of this element, it is noted that oxygen is widely used in the chemical industry. In relation to chemical substances, such as the relevant goods in the present case, this meaning will be obvious (03/07/2012, R 2304/2010‑2, O2 0% MDI emission (FIG. MARK) / O2 et al., § 29). The purification preparations may contain oxygen as in ozone purification preparations and/or those used in ‘dissoloved oxygen gereration’, just to name few examples. Therefore, the earlier marks will suggest that the goods contain oxygen or are otherwise oxygen-related.

It should be born in mind that the earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. In other words, when dealing with the distinctiveness of the earlier mark as a whole, the latter should always be considered to have at least a minimum degree of inherent distinctiveness. The Court made it clear that ‘in proceedings opposing the registration of a [European Union] trade mark, the validity of national trade marks may not be called into question’ (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40-41). The opponent did not claim (nor prove, as seen below in the decision) an enhanced distinctiveness in relation to any goods in Class 1. Therefore, it is concluded that ‘O2/O₂’ has at most a very low degree of inherent distinctive character for the opponent’s goods taken for the purpose of this comparison, chemicals used in agriculture, horticulture and forestry, none of the aforementioned goods being gases for industrial purposes; manures. The Opposition Division took note of the fact that the opponent restricted the scope of the goods of its earlier mark 1) by specifying none of the aforementioned goods being gases for industrial purposes. However, this limitation cannot increase the degree of distinctiveness of ‘O2/O₂’, because oxygen in chemicals may also appear in liquid or solid forms, and, therefore, its inherent distinctive character must, nevertheless, be seen as at most very low.

The earlier figurative mark 4) has no element that could be considered clearly more dominant (eye-catching) than other elements. The stylisation of its verbal elements is fairly standard and hardly adds any additional distinctiveness to the verbal elements.

The contested sign is a figurative mark composed of the element ‘BiO₂’, where ‘Bi’ is portrayed in red and ‘O₂’ in turquoise, and two green leafs device appearing instead of a dot above the letter ‘i'.

The opponent argued that ‘O₂’ stood out in the contested mark and that it was designed to be read as its dominant element. Although ‘O₂’ is depicted in a different colour, the whole element ‘BiO₂’ is portrayed in an otherwise identical typeface and style; ‘O₂’ is neither larger nor in bold compared with the remaining letters. Therefore, in the Opposition Division’s view, the contested sign has no element(s) that could be considered clearly more dominant (eye-catching) than other elements. The stylisation of the verbal elements is largely decorative and distinctive to a very low degree; in fact, it hardly adds any additional distinctiveness to the verbal elements.

The relevant public is likely to perceive the contested sign as the word ‘BIO’, followed by the digit ‘2’ in subscript, given that ‘BIO’ has an obvious meaning and is commonly used throughout the EU as an abbreviation for ‘biological’ and to make reference to life, living organisms, organic and natural substances produced without the use of artificial chemicals or environmental sustainability (04/11/2013, R 401/2012‑4, BIO2YOU (FIG. MARK) / THE O2 (FIG. MARK) et al., § 19). Such a perception is even more likely considering that this meaning is relevant for the contested goods, all of which can be produced from organic substances. Consequently, ‘BIO’ is inherently distinctive to no more than a very low degree, while ‘2’ will be perceived as a number with no additional meaning(s) that is inherently distinctive to an average degree. The green leafs are a common motif used to indicate that goods are of a biological nature and is inherently distinctive to at most a very low degree. The combination of the word ‘Bio’ and the digit ‘2’ in subscript is not obvious and has a certain degree of inherent distinctiveness.

Bearing in mind the above, it must be concluded that the marks under comparison refer to distinct concepts. While the earlier marks clearly evoke the concept of oxygen, the contested sign will be associated with biological origin of the goods (through the word ‘BiO’ and the green leafs device) and with the numeral ‘2’. Therefore, the signs are conceptually not similar.

Average consumers normally perceive a mark as a whole and do not proceed to analyse its various details (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 25). However, even assuming that a part of the public were to perceive a reference to ‘O₂’ in the contested sign, as the opponent claims, this fact alone would not lead to any significant degree of conceptual similarity between the signs, because that part of the public would immediately associate ‘O₂’ with its informative content. Ipso facto, the Opposition Division disagrees with the opponent that ‘O2’ is highly distinctive for the contested goods, such as fertilisers and manures. In fact, it is just the opposite.

It is well known that plants are made up of four main elements: hydrogen, carbon, nitrogen and, notably, oxygen, and that they release oxygen as a waste product of photosynthesis. Use of fertilisers or manures may, among other effects, accelerate plants’ growth and their release of oxygen. In addition, organic fertilisers may contain oxygen or organic compounds with oxygen. Therefore, ‘O2’ is inherently distinctive to at most a very low degree for these goods. In that sense, this public might perceive ‘BiO₂’ as a word play between the words ‘biological’ and ‘oxygen’, being, for example, an allusion to the organic origin of the goods, the use of which may result in a faster production of oxygen or, simply, indicating an environmentally friendly product (03/07/2012, R 2304/2010‑2, O2 0% MDI emission (FIG. MARK) / O2 et al., § 31). Consequently, this part of the public would not attach much trade mark significance (if any at all) to ‘O₂’ on its own, but would perceive, primarily, a play between the (very weak) elements ‘BIO’ and ‘O₂’, reinforced by the concept of the green leafs, which together establish the contested sign’s distinctive character, albeit only weak.

Given that this play of various elements is absent from the earlier marks and that the coinciding element ‘O₂’ is distinctive to at most a very low degree and located at the contested sign’s end, the degree of conceptual similarity between the marks would be, at best, very low.

At the same time, it is important to underline that the earlier marks are very short and, according to case-law, the shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, small differences may frequently lead in short words to a different overall impression (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39).

In addition, the differing elements are located at the beginning of the contested sign, namely in the part of the sign where consumers normally focus their attention (21/05/2015, T‑420/14, Wine in Black / NOVAL BLACK, EU:T:2015:312, § 25). 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, the signs coincide in the element ‘O₂’; therefore, the whole single element of the earlier marks is entirely incorporated at the end of the contested sign’s verbal element ‘BiO₂’, although depicted in a slightly different way. The public normally pays less attention to the endings of signs (17/03/2004, T‑183/02 & T‑184/02, Mundicor, EU:T:2004:79, § 81; 16/03/2005, T‑112/03, Flexi Air, EU:T:2005:102, § 64-65).

The contested sign differs from the earlier marks in the letters ‘Bi**’, which constitute half of the contested sign located at its beginning, where the public normally focuses its attention, and in the green leafs device, both of which have no counterpart in the earlier marks. The figurative signs differ in the stylisation of their verbal elements, their overall structures and composition of the elements.

Therefore, bearing in mind in particular the distinctiveness issues mentioned above, the fact that earlier marks are very short and that the contested sign is twice as long and differs at its beginning, the signs are visually similar to at most a low degree.

Aurally, the two elements of the earlier marks will be pronounced separately, for example, o-two in English, o-dos in Spanish or o-zwei in German. The public in the entire relevant territory will immediately recognise the word ‘BIO’ in the contested sign and will pronounce it as such. Therefore, the contested sign will be pronounced, for example, bio-two in English, bio-dos in Spanish or bio-zwei in German. Consequently, there will be a strong differing sound at the beginning of the signs and a short pause between ‘BiO’ and ‘₂’, and not, as the opponent claims, between ‘Bi’ and ‘O₂’.

Consequently, and irrespective of the different pronunciation rules in the different parts of the relevant territory, the pronunciation of the signs coincides, to a certain degree, in the sound of the element ‘O₂’. It differs in the sound of the remaining letters of the contested sign, namely ‘Bi**’, which are placed at the beginning of that sign and attract more of the public’s attention. The stylisation of the figurative signs, including the green leafs device in the contested sign, is not subject to a phonetic assessment.

Therefore, bearing in mind in particular the distinctiveness issues mentioned above, and the fact that earlier marks are very short, while the contested sign will have a strong differing sound at its beginning, the signs are aurally similar to a low degree.

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

4. Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier marks have been extensively used and enjoy an enhanced scope of protection. The opponent did not invoke Article 8(5) EUTMR in relation to the goods in Class 1 of the earlier mark 1) and it did not specifically invoke Article 8(5) EUTMR in relation to any goods and services of the earlier mark 4) taken for comparison purposes. The opponent did claim, in general, that its earlier marks have an enhanced distinctiveness. However, it specifically mentioned only the goods and services in Classes 9, 35, 36, 38 and 41, which are entirely different and have nothing in common with any of the contested goods in Class 1. The opponent did not claim explicitly (and in any event did not prove) enhanced distinctiveness or reputation for any goods in Class 1 of any of the earlier marks or any goods and services that might be considered similar to them.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated in section c) of this decision, and in line with judgment 24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, cited above, the distinctiveness of the earlier mark 1) in relation to the opponent’s chemicals used in agriculture, horticulture and forestry, none of the aforementioned goods being gases for industrial purposes; manures and of the earlier mark 4) in relation to the opponent’s manures in Class 1 must be seen as (at most) very low.

5. Global assessment, other arguments and conclusion

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

The goods are identical. The signs are visually similar to at most a low degree and aurally similar to a low degree. As explained in section c) of this decision, the signs are conceptually not similar or a conceptual similarity is very low, at best. The relevant public is composed of the professional public and the public at large (e.g. gardening enthusiasts), whose degree of attention is higher than average.

The earlier marks 1) and 4) as a whole are inherently distinctive to at most a very low degree for the opponent’s goods taken for the purpose of this comparison. Enhanced distinctiveness has not been invoked or established for these goods.

The signs show significant visual, phonetic and conceptual differences, despite sharing the element ‘O₂’. They are very short, as they are composed of two and four characters, respectively. It is recalled again that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39). The contested sign differs in the letters ‘Bi’, which make that mark twice as long as the opponent’s marks. Moreover, it differs in the green leafs device, which has no counterpart in the earlier marks. All these differing elements will not remain unnoticed by the relevant public that displays a higher than average degree of attention.

In addition, it is of particular importance in the overall assessment that the letters ‘Bi’ are located at the beginning of the contested mark, ‘BiO₂’. In accordance with case-law, the relevant public normally attaches more importance to the first part of words (10/12/2008, T‑290/07, Metronia, EU:T:2008:562, § 50). Therefore, the public will pay more attention to the differences located at the beginning of the contested sign than to the similarities located at its end.

It is also important that the letters ‘Bi’ and ‘O₂’ are depicted without a space and that the element ‘BiO’, composed from its three first characters, has an obvious meaning that will be immediately grasped by the public in the entire territory. For this reason, at least a substantial part of the relevant public will perceive the signs as being conceptually not similar to each other.

Even if a part of the public were to perceive ‘O₂’ at the end of the contested sign, as explained in section c), it would immediately associate this element with its informative content. This public would understand that the contested sign’s distinctive character hinges on a play of several (very) weak elements, the words ‘BIO’ and ‘O₂’, and the green leafs device, and that this underlying concept, immediately noticeable through the contested sign’s structure and composition, is absent from the earlier marks.

While a company is certainly free to choose a trade mark with a low or even non-distinctive character, including trade marks with descriptive and non-distinctive words, and use it on the market, it must accept, however, in so doing, that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011‑5, 4REFUEL (FIG. MARK)/REFUEL, § 15). This implies that the scope of protection of that mark, as having a weak distinctive character, is weaker than that of a mark with normal distinctive character (11/10/2013, R 1252/2012‑2, FLOROVIT / FLORA FIT, § 35). Therefore, in such as case, even small differences may be sufficient to exclude a risk of confusion.

The differing elements between the marks are important, because they will be perceived visually, aurally and conceptually. Consequently, they influence all the aspects of comparison: the structure of the signs, their pronunciation and intonation, and meanings (13/05/2015, T‑102/14, TPG POST / DP et al., EU:T:2015:279). These differences are easily noticeable in the overall impression created by the signs and are sufficient to dispel a likelihood of confusion between them.

Based on the overall assessment of the earlier marks and the contested sign, the Opposition Division takes the view that the coincidence in ‘O₂’, which is distinctive for the relevant goods to at most a very low degree, is not sufficient to trigger a likelihood of confusion. The differences between these short signs will allow the public to safely distinguish the marks under comparison. Moreover, consumers are not likely to make assumptions regarding the commercial origin of the goods or, indeed, economic links between commercial undertakings, merely on the basis of the coincidence in the element ‘O₂’ of the contested sign, which is distinctive to at most a very low degree.

According to the principle of interdependence, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division has taken this principle into account when assessing the likelihood of confusion, and the fact that the goods are identical cannot, in this case, compensate for the differences between the signs.

Considering all the above, the similarity between the marks is not sufficient to trigger a likelihood of confusion on any part of the public. Therefore, the opposition based on Article 8(1)(b) EUMTR must be rejected.

For the sake of completeness, the Office notes that the opponent argued that the letters ‘Bi’ of the contested sign sounded like the word ‘by’ and, therefore, the public may perceive the contested sign as ‘By O₂’ and, consequently, as a sub-brand or offering under the opponent’s mark. However, in the Opposition Division’s view, such a perception is highly unlikely. Even if a sound of the letters ‘Bi’ may seem phonetically similar to the word ‘by’ (at least to the English-speaking part of the public and not to the remaining publics, which have different pronunciation rules and do not, necessarily, understand the word ‘by’), this would not affect the visual or conceptual perceptions of the marks. Visually, the contested sign , written without a space, does not call to mind ‘By O₂’, not even remotely. Conceptually, ‘Bio’ has an obvious meaning throughout the relevant territory. In view of this meaning, the public is not likely to make artificial assumptions regarding other, unlikely, interpretations of the contested sign merely on account of a similar sound of some elements. Moreover, the relevant goods may have a direct impact on consumers’ health and it is likely that the public will inspect the marks visually before the actual purchase. Hence, the visual aspect is more important than the aural one and this argument of the opponent must be set aside.

The opponent also relied on the judgment of 06/10/2005, C‑120/04, Thomson Life, EU:C:2005:594, in particular paragraphs 29-31. In the Opposition Division’s view, this case is not comparable to the present one. In case C‑120/04, the Court compared the word marks ‘LIFE’ versus ‘THOMSON LIFE’, where ‘THOMSON’ was a company name and ‘LIFE’ constituted a separate word located in the second position. In the present case, however, the element ‘O₂’ is joined together with the letters ‘Bi’ and creates a different expression, ‘BiO₂’ which has a meaning of its own — not to mention that the letters ‘Bi’ are not a company name. Even if a part of the public were to perceive the element ‘O₂’ separately, it would not be because of its independent distinctive role within this sign, but because of its informative content (20/02/2018, T‑118/16, BEPOST /ePOST (fig.) et al., EU:T:2018:86, § 69).

The opponent argued that it had trained consumers to its uses of the mark ‘O₂’ either alone or with a number of different elements, such as O2 PROTECT, O₂ SHOP, O₂ SIP TRUNKING, O₂ Health, O₂ Money, O₂ Music, etc. Therefore, it remains necessary to consider whether the earlier marks, all characterised by the presence of the same component ‘O₂’, constitute a ’family of marks’ or ‘marks in a series’. In the opponent’s view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same element as the earlier marks, will be led to believe that the goods identified by that mark may come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the Bainbridge case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65). When the opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. In the present case, the opponent did not base its opposition on the marks to which it refers as belonging to the same family. The marks that form the basis of this opposition consist exclusively of the elements ‘O2’ or ‘O₂’. Therefore, the family of marks cannot be established.

The opponent also relied on several earlier decisions of the Office, namely:

• B 2 818 527, dated 27/10/2017, concerning the contested sign ‘O2ME’

• B 2 494 659, dated 16/03/2017, concerning the contested sign

• B 2 378 126, dated 02/03/2017, concerning the contested sign

• B 2 532 904, dated 05/10/2016, concerning the contested sign .

However, in all of these cases, the element ‘O₂’ was either clearly detached visually, much larger than the remaining elements, isolated by a hyphen or, at least, could be easily separated conceptually by the public because all the individual elements had clear meanings (‘O2’ and ‘ME). Moreover, none of these cases concerned the goods in Class 1 for which the earlier marks’ inherent distinctiveness is very low.

In the Opposition Division’s view, the present case bears more resemblance to cases R 2304/2010‑2, concerning the sign and B 2 284 415, concerning , where the opponent’s actions directed against the above-mentioned marks applied for, inter alia, goods in Class 1, were rejected and the inherent distinctiveness of the element ‘O2’ for goods in Class 1 was questioned.

The opponent also based its opposition on other goods and services of earlier marks 1) and 4), as well as on all the goods and services of earlier marks 2) and 3), as listed above. The Opposition Division will not fully transcribe these goods and services due to the lengthy lists. However, they can be found in the notice of opposition, which can be accessed through https://euipo.europa.eu. These signs are identical or nearly identical to the one that has been compared above and for which the opposition failed under Article 8(1)(b) EUTMR (although the goods were found identical). Therefore, the outcome cannot be different on the basis of these marks and goods and services that are identical, similar to varying degrees or dissimilar.

Therefore, no likelihood of confusion exists with respect to the contested goods and any of the goods and services of earlier marks on which the opposition is based. The examination of the opposition will continue under the grounds of Article 8(5) EUTMR.

REPUTATION — ARTICLE 8(5) EUTMR

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds for refusal of Article 8(5) EUTMR are only applicable when the following conditions are met:

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. Reputation of the earlier trade marks

According to the opponent:

• the earlier mark 1) ‘O2’ (word) has a reputation in the European Union for all the services in Classes 35 and 36;

• the earlier mark 2) (figurative) has a reputation in the European Union for all the goods and services in Classes 9, 35, 36, 38 and 41;

• the earlier mark 3) (figurative) has a reputation in the United Kingdom for all the goods and services in Classes 9 and 38.

For reasons of simplification, all references to the ‘O₂’ or ‘O2’ brand are references to these earlier marks (and their representations, where applicable) and all references to the goods and services in Classes 9, 35, 36, 38 and 41 are references to the respective goods and services of the earlier marks, as listed above.

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

The contested trade mark has a filling date of 10/12/2017. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the relevant territories prior to that date. The evidence must also demonstrate that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely all the goods and services in Classes 9, 35, 36, 38 and 41 of the earlier marks 1), 2) and 3). They include telecommunications-related apparatus, like mobile telecommunication apparatus; telecommunications network apparatus, and other less or more specialised goods, mainly for scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching purposes (Class 9), and services related mainly to advertising, business management, business administration, office functions, accounting, retail sale (Class 35), financial matters, real estate (Class 36), telecommunications (Class 38) and education, entertainment, sporting and cultural activities (Class 41). The Opposition Division will not fully transcribe these goods and services due to the lengthy lists. However, they can be found in the notice of opposition, which can be accessed through https://euipo.europa.eu.

On 13/11/2018, the opponent submitted evidence to support this claim. As the opponent requested that certain commercial data contained in the evidence be kept confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists, inter alia, of the following documents:

• Witness statement by Peter Holmes, Director of Brand for Telefónica Europe plc, one of the subsidiary companies from the opponent’s group of companies. Mr Holmes states that he has been associated with this group since 2007.

•  Mr Holmes briefly sets out the history of the company, which started in 2001 in the United Kingdom, by its demerger from British Telecom (Exhibit PH3). He also presents, year by year, the successes of the opponent’s brand, which was launched in the middle of 2002 (Exhibit PH4). A huge number of press releases, media coverage, awards, examples of marketing, advertising and sponsorship activities and market studies are referred to. The materials refer to, inter alia, a variety of services offered and mobile devices marketed by the opponent and the date the company commenced trading stock on the London Stock Exchange. Given the extensive nature of the material provided, Mr Holmes highlights several important events (and press releases) such as, in 2002, the implementation of the first wireless email solution; the huge growth of its client base in 2002; a sponsorship agreement with Arsenal FC whereby O2 became its exclusive mobile communications partner (in April 2002) and the opponent’s significant revenues (with the service revenue growing by 17,7% to GBP 3 672 million and the total revenue by 11,5% to GBP 4 276 million). Mention is made of the fact that O2 Germany topped 4 million customers; reference is made to agreements with high profile IT companies to market and distribute mobile data services and of the development of new messaging and interactive services with Arsenal FC, Bayer Leverkusen and Big Brother 3. The opponent was the UK market leader for SMS. Press releases mention high profile sponsorship of ‘Big Brother’, which resulted in raising the company’s profile thanks to the large viewing figures associated with this prime time reality programme.

•  In evidence concerning 2003 reference is made to: the opponent as being the top text messaging provider, handling on average more than 30 million messages per day; provision of a range of interactive mobile services for ‘Pop Idol’ (popular reality show); the launch of ‘Tesco Mobile’, 50-50 joint venture, offering mobile services in Tesco stores across the UK, using the opponent’s technology and network; the launch of a new mobile video service in the UK, including exclusive Rugby World Cup content, enabling customers to download and stream video content; the launch of ‘O2 Music’, Europe's first mobile ‘over the air’ music download service enabling customers to select, download and store the latest chart hit and popular music via their mobile handset onto a specially designed ‘O2 Digital Music Player’ (in a partnership with world renown labels). Another press release refers to online subscription growing by 5% per month and the company’s online channel being the most popular in Europe, signing up a total of one million online customers. References to independently audited figures (25/11/2003) showing that the company has the best UK mobile call success rate ever, beating all figures previously published by Oftel (an independent regulator and competition authority for the UK communications industries, with responsibilities across television, radio, telecommunications and wireless media).

• 2004 evidence includes information regarding the expanse of the opponent’s services and its further growth. Of particular interest and dated 26/05/2004, a press release announced the partnership of the company with the English National Opera (ENO) regarding the first ever live opera concert in Trafalgar Square. Further partnerships with sports bodies, including Arsenal FC and Premier Rugby, are mentioned as well as the opponent being selected by the National Lottery operator Camelot to provide the SMS messaging capability that will help users to play draw-based lottery games via text message.

• 2005 includes evidence that mention further contracts and sponsorships (e.g. announcement of sponsorship of The O2 in London in a multi-year deal worth GBP 6 million per year). It refers to the launch of ‘Mobile TV’ and states that Tesco Mobile reached the one million customer milestone.

• 2006 includes further press releases regarding a partnership with BMW, new platforms for further interactive services and a contract awarded by the UK government which concerns the provision of fire and rescue services with a new secure and highly resilient digital radio system and a contract with E.ON Bayern that comprises the use of energy completely from renewable sources. Press release dated 19/09/2016 announces sponsorship of another O2 Wireless Festival with The Who, Depeche Mode, David Gray and James Blunt and offering mobile ticketing for the first time.

•  Evidence for 2007 includes details concerning the opponent’s intention to improve response times and enhance patient care for Welsh ambulance services, announcing that the Welsh Ambulance Service NHS trust has signed a contract worth GBP 32 million with the opponent for the provision of advanced, secure digital communications; information concerning a contract with the AA (Automobile Association in the UK) until 2011; further information regarding broadband improvements; the launch of 02 WALLET which paves the way for the mass market use of mobile phones to pay for purchases or travel around London. Reference is also made to the ‘best service’ accolade and the opponent being named the 5^th best place to work as well as the fact that the opponent will be the exclusive UK carrier for Apple's iPhone.

•  For 2008 amongst the press releases are those that show that the opponent has joined forces with LP+ to bring mobile learning to UK schools, further references to improved services and partnerships and on 27/06/2008 a feature entitled ‘The O2 celebrates its first birthday’ discussing the success of the venue. Reference is made to the opponent’s plans to launch a GBP 6 million marketing campaign and 02 Germany’s plans to increase the number of shops across Germany to 1 100. According to the press release of 28/02/2008, O2 Ireland will be the exclusive Irish carrier for Apple's iPhone and, according to the press release of 11/06/2008, Telefónica will distribute the Apple’s iPhone in 12 Latin American countries and the Czech Republic.

•  In 2009, of particular interest is a release regarding the O2’s expansion into personal finance with its ‘O2 Money’ and into the laptop market. Deutsche Post World Net, the No. 1 global express and logistics provider with its DHL brand, selected Telefónica to manage its communications services across 28 European countries over the next five years. Mention is made of the fact that O2 ranks highest in customer satisfaction among UK fixed and mobile broadband Internet Service Providers (according to the J. D. Power and Associates 2008 UK Broadband ISP Customer Satisfaction Study).

•  Information for 2010 includes details regarding the opponent’s social action with GBP 5 million investment in young people; the O2 brand’s further expansion into new fields and markets, such as the launch of the first location-based mobile marketing, ‘O2 Health’ to deliver better self care for patients and smarter working practices for staff, and the launch of a market leading GBP 5 per month mobile broadband tariff.

•  In 2011, the opponent’s media service, ‘O2 More’, reached two million customers since its launch in November 2009; the opponent was the first to switch on new superfast 3G 900Mhz network and it broke a new Guinness World Record for recycling thousands of mobile phones via O2 Recycle; the opponent announced ‘O2 Lease’, the first smartphone leasing programme in the UK for consumers. In addition, reference is made to ‘The O2’ shows and the ‘O2 Wake Up Call app, as part of its ‘Get Up for England’ campaign.

•  Documents for 2012 give information about the signing of the 4 year partnership renewal with the Rugby Football Union; the release of the three year sustainability plan, a flexible working pilot in the opponent’s Slough headquarters and ‘Help at Hand’, the UK’s first telecare service built around mobile technology. The collaboration between the opponent and Nike to create a digital sports club, delivered via mobile app is mentioned.

•  For 2013 there are a variety of press releases concerning O2 and its media services, including O2’s Exclusive Priority Partnership for Beyoncé’s tour; creation of first joint venture between banks (CaixaBank, Santander) and telecom (Telefónica) to develop new digital businesses; the launch of the 4G network in London, Leeds and Bradford, reaching five million people and the conclusion of the agreement to deliver communications services as part of the Smart Meter Implementation Plan of Great Britain worth GBP 1.5 billion.

•  In 2014, of particular interest is information regarding the launch of ‘Wear the Rose', 360-degree virtual reality sports experience; the announcement that the opponent would be the exclusive distributor of the 1^st smartphone designed by Amazon (Fire) and that in fewer than 3 years from the launch of its first hot-spot, ‘O2 Wifi’ had signed-up 10 million customers, becoming the fastest growing Wifi network (measured by growth in registered users), with 500 000 new registrations per month.

•  In 2015, the opponent partnered an advertising campaign ’#WearTheRose in 2015’; announced an exclusive partnership with Channel 4 around the broadcaster’s new digital TV service All 4; O2 Think Big started a new initiative to help unemployed young people gain work experience and get their foot on the career ladder through rugby and the O2 Academy opened three new venues in London, Manchester and Birmingham named O2 Institute Birmingham, O2 Forum Kentish Town and O2 Ritz Manchester. In addition, O2 retained the ‘Website of the Year’ trophy.

•  In 2016, of particular interest is information regarding the opponent’s launch of the UK's first smartwatch with embedded SIM, the Samsung Gear S2 classic 3G and extension of the partnership between the opponent and England Rugby until September 2021. The opponent received the awards ‘Excellence in Managed Services’ and ‘Team of the Year’ for marketing.

•  Information for 2017 includes details regarding the opponent’s partnership with AEG for The O2, which secured the opponent as The O2’s naming rights partner for a further ten years, and the opponent’s ‘10^th Birthday’ concert which was to host musicians such as, inter alia, Ed Sheeran and Celine Dion; the opponent’s GBP 80 million investment in the London network; launch of the new campaign in support of the England Women’s Rugby Team, defending their world title; and O2 Gurus delivering digital boot camps across South Wales.

Preliminary comments on the evidence

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

The opponent states that due to the large-scale advertising and promotion, combined with extensive sales, the O2 brand has achieved massive recognition in the marketplace and has come to be identified uniquely with the opponent in the minds of consumers. The opponent claims that its company is one of the most important players in the mobile telecommunications field. The opponent refers to an advertising awareness study conducted between 2002 and 2004 in which the opponent came second and another from 2013-2014 placing the opponent in first place.

The witness statement is fully backed up by press releases and copies from the relevant media. Several awards that have been won are mentioned and the exhibits show that in 2003-2004 the O2 brand was awarded the ‘Business Superbrand’ and the ‘Cool Brand Leader’ award. The publication ‘Business Superbrands’ lists the 60 strongest business to business brands on an annual basis, the opponent’s intensive launch marketing campaign has been described as follows: ‘at launch in May 2002, it began its high-profile brand building campaign, using the visually striking oxygen bubbles in blue water image that has become its trade mark symbol. By the end of the launch phase, which involved advertising across TV, print and poster media supported by direct marketing, O2 had become a well-known brand, achieving levels of recognition on a par with its rivals’. Throughout the following years, the opponent continued investing substantial amounts in advertising and marketing. As can be seen in the Advertising Exposure and Spend 2006-2009 document (Exhibit PH6), the overall advertising spend per year between these dates was very significant (the exact details are marked confidential). This document also summarises the most significant advertising campaigns and provides details of high profile exclusive products, details of TV campaigns and TV/radio sponsorships. According to the witness statement, the advertising spend was as also this high in 2010 – 2014.

According to the witness statement, by 2004, the O2 brand had already won the Institute of Practitioners in Advertising Award (IPA), an award supported by the Financial Times amongst others and mentioned as the ‘most prestigious advertising award a brand can win’. The publication mentions, with reference to an NOP survey, ‘One of O2’s most impressive achievements has been how rapidly it has established itself in the market…’ Further awards include the ‘Marketing Initiative of the Year Award’ in November 2003 at The Utility Industry Achievement Award; the award for ‘Advertiser of the Year’ awarded by the National Business Award, also in November 2003; ‘Best Network of the Decade’ in October 2004 for showing the most innovation in encouraging the uptake of mobile data over the last ten years; and again in November 2004 at the IPA Advertising Effectiveness Awards the Blue Ribband Grand Prix plus an additional Gold Award, acknowledging the company as having run the UK’s most successful advertising campaigns for the preceding two years. A number of other awards are mentioned in 2006 and 2007 for very similar feats. In 2008, the ‘O2’ (arena) won the ‘Venue of the Year’ at the Music Week Awards 2008. Together with AEG Europe it won the ‘Music and Brand Partnership of the Year’ category.

In 2010, the opponent won the Gold IPA Effectiveness award for its O2 campaign and IPA Gold for its Priority campaign as well as IPA Best Use of Media for its O2 and Priority campaigns. In 2012, the brand ranked 8th in ‘Brands most admired by Marketers in the UK’. In 2013, it won a Brand of the Year title by IPM Awards, while O2 Academies won Gold in the Sponsorship Marketing Category and Silver in the Long Term Marketing Category, by Marketing Agencies Associations Worldwide Awards. In 2014, the brand won, inter alia, the Shorty Award for Best Use of Social Media for Telco (for the ‘Be More Dog’ campaign) and the Cannes Lion for Innovative Use of Technology (for ‘Wear the Rose’). In 2015, O2 won Marketing Society Brand of the Year and Website of the Year (for www.o2.co.uk as the ‘Overall winner’ of the ranking, out of 227 websites nominated in 19 categories), as well as several other awards for sponsorship. Furthermore, Telefonica UK was chosen as Britain’s Most Admired Company 2015 in the category ‘Telecoms’ by MT Management Today.

Also mentioned in the statement and attached in the exhibits is Millward Brown Optimor’s BrandZ Top 100, a ranking which identifies the world’s most valuable brands measured by their dollar value. The opponent’s company occupies the 77^th spot on the 2009 list with a value of USD 8 601 000 000 and is considered the 4^th most valuable brand in the UK (after Vodafone, Tesco and HSBC). By 2010, O2 occupied the 70^th spot with a 23% increase in Brand Value and also ranked 14^th in the Top 20 Risers Section. According to the statement, in 2011, it occupied 74^th spot with an estimated brand value of USD 11 694 000 000, an increase of 10%. In 2012, there was an estimated brand value of USD 8 600 000 and in 2013, an estimated brand value of USD 6 000 000, ranking 9th in the UK. In 2014, the estimated brand value fell 5% to USD 5 656 000 following a decline in financial metrics.

Also referred to, and supported by exhibits, is the sponsorship of music festivals and events such as the ‘O2 Wireless Music Festival’ in Hyde Park, London (more than 30 000 visitors a day). By 2008, the festival had already gathered more than 100 000 participants over a single weekend. Numerous other such events are referred to as well as ‘The Brits’ which is the most prestigious music awards ceremony in the UK. In this regard the venue ‘The O2’ is referred to as having a 23 000 capacity arena, live music club, theatre, flexible exhibition space, deluxe multi-screen cinema, restaurants, cafés, bars and a proposed London regional casino. The musical and entertainment content is then brought exclusively to the ‘O2’ phones and devices, and customers enjoy certain privileges such as the first chance to book tickets.

Reference is also made to ‘The David Beckham Academy’, which is one of the first parts of a development project managed by its partner AEG and aims to transform the area into an entire entertainment and sporting destination. There are also eleven music venues across the UK (several places in London, Birmingham, Bristol, Glasgow, Liverpool, Newcastle, Oxford, Sheffield and Leeds) that until 2013 (at least) had been re-branded as an ‘O2 Academy’ to promote music. Also included are adverts from O2’s wireless festival, information concerning the O2 arena where a range of concerts is held and where the finals of the Olympic gymnastics and basketball finals are to be held. Extremely successful groups and artists (AHA, Depeche Mode, Michael Jackson) are mentioned as having performed there. In 2011, the O2 arena in London was voted Best International Arena of the Year at the Pollstar Concert Industry Awards in Los Angeles for the fourth time in a row since its opening in 2007. During this period, the venue had sold over 11 million tickets.

Mention is also made of heavy sponsorship of the England Rugby Team since 2003 and the fact that this sponsorship was extended until September 2021, making it one of the longest-standing sports sponsorships globally. In the years directly preceding the date of the contested application, the opponent won several sponsorship awards, e.g. in 2016 Sponsorship of the Year for England Rugby, Best Rugby World Cup Sponsor and Best Sports Sponsorship for England Rugby and in 2017 Best Live Music Sponsorship for O2 Academies and Best Sports Sponsorship for England Rugby.

Conclusion on reputation

The evidence is extensive and it is clear that the ‘O2’ brand has been subject to a long-standing and intensive use and is generally known in the relevant market (at the very least in the United Kingdom), where it enjoys a consolidated position among the leading brands. This has been attested by diverse independent sources as annexed in the statement. The sales figures, marketing expenditure, outcomes from opinion polls and the number of awards going back to at least 2004 clearly show the success of the marks, their continual growth and market presence as well as an innovative character that is constantly expanding and developing.

However, it does not apply to all the earlier marks and all the goods and services for which the reputation has been claimed. It is plain from the evidence that the opponent has successfully proved that it has gained a strong reputation for all the services in Class 38. The reputation of the opposing brand also extends to the opponent’s education; entertainment; sporting and cultural activities in Class 41 of the earlier mark 2), as the opponent has been involved for a long period in a number of activities relating to these fields, either through organisation of events (e.g. O2 arena or O2 Think Big initiatives) or their heavy sponsorship (e.g. of the England Rugby Team).

The opponent has submitted voluminous documentation in this regard concerning not only its telecommunication services in Class 38, but also regarding its expansion into the education, entertainment, sporting and cultural industry as well as the development of its technical expertise in this area. What started as partnerships or sponsorships with industry players has quickly grown into the opponent’s brand becoming known and reputed as one of the actual players. This is due to the opponent’s investments and efforts made in this direction, as can be inferred from the evidence, the awards won (including for the sponsorships) and arguments presented by the opponent. As to the goods in Class 9 of the earlier marks 2) and 3), the evidence clearly relates to telecommunications apparatus.

Summing up, the evidence shows that the earlier trade marks 2) and 3) enjoy a high reputation for all their core services in Class 38 and an average reputation for, at least, education, entertainment, sporting and cultural services in Class 41 (earlier mark 2) and some goods in Class 9, namely those related to telecommunications apparatus. The reputation is confirmed at the very least for the United Kingdom, which is the territory of the earlier mark 3) and is sufficient for concluding that the earlier trade mark 2) has a reputation in the European Union. The Court indicated that an EU trade mark must be known in a substantial part of the EU by a significant part of the public concerned by the goods or services covered by that trade mark. In view of the facts of the particular case, the territory of the Member State in question (Austria) was considered to constitute a substantial part of the territory of the EU (06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 29-30).

However, the evidence does not succeed in establishing that the earlier trade marks have a reputation for the remaining goods and services, in particular the goods of the earlier marks 2) and 3) in Class 9 that are not related to telecommunications apparatus, the services in Class 41 of the earlier mark 2) that are not related to education; entertainment; sporting and cultural activities and any of the services in Classes 35 and 36 of the earlier marks 1) and 2). There was no or very little evidence regarding these goods and services. The opponent claimed that it has a presence in a number of sectors apart from its core telecommunications such as the health, financial services and insurance sectors and retail of fast-moving consumer goods. Indeed, the evidence demonstrates some use of the earlier mark in some of these fields, but it is not conclusive and does not allow the Opposition Division to draw unambiguous conclusions regarding any degree of the earlier marks’ reputation for any of these remaining goods and services.

The opponent did not claim reputation for any goods in Class 1 or any related goods and services, and, indeed, the evidence is insufficient to establish the earlier mark’s reputation (or enhanced distinctiveness) in relation to any of them.

b) The signs

The opponent did not prove reputation for any of the services of the earlier mark 1) for which reputation was claimed and the examination will continue without this mark.

As regards the earlier marks 2) and 3), they are essentially identical to the earlier mark 4), which has already been compared with the contested sign above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR, as the slight variation in the shape and colour of these marks does not alter the findings.

c) The ‘link’ between the signs

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria. The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

As seen above, the earlier marks enjoy a high degree of reputation for services in Class 38 and an average degree of reputation for certain goods and services in Classes 9 and 41. The signs are similar, although to a rather low degree. The inherent distinctiveness of the earlier marks for the goods and services in Classes 9, 38 and 41 for which reputation has been proved is normal, as ‘O2/O₂’ is not descriptive, allusive or otherwise weak in relation to these goods and services.

The opposition is directed against fertilisers, and chemicals for use in agriculture, horticulture and forestry; compost activators; additives (chemical -) for compost; soil additives [fertilising]; chemicals used in agriculture, horticulture and forestry; chemical fertilizers; manures; compost mixtures of mineral based material in particulate form; mineral fertilising preparations; preparations for fortifying plants in Class 1, namely various chemicals used in agriculture, horticulture or forestry. These contested goods clearly diverge in their relevant nature, purpose, methods of use, distribution channels and outlets when compared with the goods and services for which reputation has been found. In addition, they normally have different providers and are neither complementary nor in competition. Indeed, on the whole, the contested goods are very far removed from the goods and services for which the earlier marks have a reputation and, very clearly, there can be no risk of confusion between them.

While the relevant sections of the public of the conflicting marks may overlap to some extent (bearing in mind that the contested goods also target the public at large, such as gardening enthusiasts), the goods and services at issue are so different that the contested sign is unlikely to bring the earlier marks to the mind of the relevant public.

Despite the innovative character of the earlier marks and the opponent’s expansion into various sectors, which, however, mainly concern service-based industries, the sectors to which the contested goods pertain are very different. The chemical sector is a very specific field in which professional, academic and technical knowledge is paramount and this is clearly very different from the opponent’s area of expertise. The relevant public will clearly not expect the earlier marks to be linked with these fields. The huge difference in usage between the goods and services makes it very unlikely that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR. It is even less likely that when purchasing the contested goods the public will link these to a mark that is in fact reputed for goods and services that have nothing relevant in common whatsoever.

Even though the signs share ‘O₂’, this does not mean that the relevant public is likely to establish a link between them. Given that the contested goods may have a direct impact on consumers’ health or on the environment, the marks are likely to be closely inspected visually before the purchase. The public’s degree of attention is higher than average and the differences between the signs, in particular on the visual level, will be clearly perceived. It is recalled again that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. The marks in the present case are very short; the differences are located at the beginning of the contested sign, where the public normally focuses its attention, while the similarities are located at its end.

Finally, as explained in case R 2304/2010-2, mentioned above, at § 54, it is clear that even a mark which may be highly distinctive inherently and, moreover so, by extensive use cannot be entitled to protection against a mark in a completely different area in which the same element is descriptive (or weak). Thus, the distinctive character and even widespread reputation cannot be used against the same mark being used in a completely different area in which the same designation is purely descriptive (or weak).

In the present case, the similarities stem from a very weak element of the contested sign. Therefore, even despite the earlier marks’ reputation in Classes 9, 38 and 41, the contested sign as applied for Class 1 is unlikely to bring the earlier trade marks to the mind of the average consumer.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

As no ‘link’ will be established between these marks and the contested sign, the opposition must also be rejected insofar as it is based Article 8(5) EUTMR.

CONCLUSION

Since the opposition failed on all grounds on which it was based it must be rejected in its entirety.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings. According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

Although the winning party is no longer represented by a professional representative at the time of rendering this decision, it was represented by a professional representative within the meaning of Article 120 EUTMR in the course of the opposition proceedings. Therefore, the winning party incurred representation costs which it is entitled to recover, in accordance with Article 18(1)(c) EUTMIR.

The Opposition Division

Liliya YORDANOVA

Jakub MROZOWSKI

Gueorgui IVANOV

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.