OPPOSITION No B 3 050 367

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

Maurizio Insana, Vicolo Mons. E Peroni 8, 37036 San Martino Buon Albergo, Italy (applicant).

On 12/06/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 050 367 is rejected in its entirety.

2. The opponent bears the costs.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 636 523 for the figurative mark . The opposition is based on the following earlier marks, in relation to which the opponent invoked Article 8(1)(b) and Article 8(5) EUTMR:

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 15 301 005 ‘O2’ (word), in Classes 37, 38 and 41 (reputation claimed for services in Classes 38 and 41);

3) UK TM registration No 2 640 231 (figurative), in Classes 9, 36, 38 and 41 (reputation claimed for goods and services in Classes 9, 36, 38 and 41);

4) UK TM registration No 3 012 801 (figurative), in Classes 35, 36 and 44 (reputation claimed for services in Classes 35 and 36);

5) UK TM registration No 3 065 680 (figurative), in Classes 9, 16, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45 (reputation claimed for goods and services in Classes 9, 35, 36, 38 and 41);

6) 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);

7) EUTM registration No 16 139 917 (figurative), in Classes 3, 4, 6, 8, 16, 21, 24, 28, 29, 30, 35, 39, 43, 44 and 45 (reputation claimed for services in Class 35).

PRELIMINARY REMARK REGARDING BASIS OF THE OPPOSITION

In its observations of 26/10/2018, filed after the opposition period, the opponent relied on other earlier marks in addition to the ones that were mentioned in the notice of opposition (e.g. EUTMR No 12 428 074 registered in Classes 3 and 5, which is not indicated in the notice of opposition), and argued that it had raised Article 8(5) EUTMR in relation to Classes of goods or services for which reputation claim was not mentioned in the notice of opposition (e.g. earlier EUTM No 9 279 456 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, while in the notice of opposition the opponent claimed reputation only for the services in Classes 35 and 36 of this mark).

As follows from Article 46 EUTMR, the grounds on which the opposition is based should be specified within the period of three months in which the opposition can be filed. The opponent has precisely and comprehensively listed both the earlier marks and the relevant goods and services on which the opposition is based in the notice of opposition; therefore, the earlier marks and new classes of goods and services invoked by the opponent after the opposition period cannot be taken into account.

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 6), EUTMR No 13 108 139, and earlier mark 7), EUTMR 16 139 917, because they cover identical services as the contested sign.

a) The services

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

EUTM No 13 108 139  (figurative)

Class 41: Education; sporting and cultural activities.

EUTM No 16 139 917 (figurative)

Class 44: Medical services; hygienic and beauty care for human beings or animals; beauty salons; healthcare services.

The contested services are the following:

Class 41: Health club services [health and fitness training]; health and wellness training; provision of health club [physical exercise] facilities; bodywork therapy instruction; training and instruction.

Class 44: Medical services; psychological counseling; cosmetic treatment; beauty salon services.

Contested services in Class 41

The contested health club services [health and fitness training]; health and wellness training; provision of health club [physical exercise] facilities are included in, or overlap with, the opponent’s sporting and cultural activities of EUTM No 13 108 139. Therefore, they are identical.

The contested bodywork therapy instruction; training and instruction overlap with the opponent’s education of EUTM No 13 108 139. Therefore, they are identical.

Contested services in Class 44

The contested medical services; beauty salon services are identically included in the opponent’s list of services of EUTM No 16 139 917.

The contested psychological counseling is part of the human healthcare services classified in Class 44. These contested services are included in the broader category of the opponent’s healthcare services of EUTM No 16 139 917 and they are, therefore, identical.

The contested cosmetic treatment is included in the opponent’s hygienic and beauty care for human beings or animals of EUTM No 16 139 917. Therefore, these services are identical.

a) Relevant public — degree of attention

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

In the present case, the services found to be identical are directed at the public at large. The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. In the case of medical services, the degree of attention will be rather high considering the implications on health.

b) The signs

EUTM No 16 139 917 EUTM No 13 108 139
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 trade marks are figurative marks composed of the single element ‘O₂’, depicted in fairly standard black and dark blue typefaces, respectively. The verbal element refers to the concept of a chemical formula, namely oxygen in its most stable form; this concept is commonly known and the relevant public will be aware of it. As it has no clear meaning related to any of the opponent’s services in Class 41, it is inherently distinctive to an average degree for these services. As regards the services in Class 44, oxygen may have some applications in the medical industry, it may be used in conjunction with medical and beauty treatments. However, the reference to the chemical formula ‘O₂’, as such, is not customary on the market given that ‘oxy’, ‘oxygen’ or other equivalents are usually used, the distinctiveness of this element for the opponent’s services in Class 44 must be seen as just below average.

The Office does not agree with the opponent’s view regarding the inherent high distinctiveness of this mark (due to the fact that the element ‘O₂’ is unusual in the context of the relevant goods and services). It should be recalled that a trade mark will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C-379/12 P, H/Eich, EU:C:2013:317, § 71). Enhanced distinctiveness can only be attributed to a mark based on intensive use and recognition on the market.

The contested trade mark is a figurative mark composed of the words ‘KEN-BO₂’ depicted in various colours grading from yellow on the left through yellowish-green and greenish-blue in the middle to light blue on right. Below it, there is the expression ‘SIAMO ENERGIA’ in a much smaller grey typeface in upper case.

The element ‘KEN-BO₂’ of the contested sign is considered its dominant element (most visually eye-catching), while ‘SIAMO ENERGIA’ is secondary on account of its much smaller size, less prominent position and use of a plain colour. However, the Opposition Division disagrees with the opponent that this element will go unnoticed by the public; even if secondary, it is still clearly visible in the contested sign and by no means negligible.

The expression ‘KEN-BO₂’ as such is meaningless. However, the words ‘KEN’ and/or ‘BO’ have or may be associated with certain meanings in the relevant territory. For example, ‘KEN’ may be understood as a noun referring to ‘[o]ne's range of knowledge or understanding’ or a verb ‘know’ in English and Dutch (information extracted from Oxford Dictionary and Dict.com on 11/06/2019 at en.oxforddictionaries.com/definition/ken and www.dict.com), and ‘slush’, ‘oil’ or ‘grease’ in Hungarian (information extracted from Sztaki Dictionary on 11/06/2019 at szotar.sztaki.hu/en/search?dict=hun-eng-sztaki-dict&fromlang=hun&tolang=eng&flas
h=&E=1&vk=&in_form=1&searchWord=ken&M=1&P=0&C=1&T=1). The word ‘BO’, on the other hand, may be understood as an exclamation used suddenly to surprise someone who is unaware of one's presence (another term for ‘boo’) in English, as an interjection expressing doubt or indecision (another spelling of ‘boh’) in Italian, as a noun meaning ‘sandwich’ in Dutch, as a verb ‘live’ or ‘reside’ in Danish or as a conjunction, equivalent to ‘because’, in Polish (information extracted from Oxford Dictionary, Garzanti Linguistica Dictionary, Dict.com and Słownik Języka Polskiego PWN on 11/06/2019 at en.oxforddictionaries.com/definition/bo; www.garzantilinguistica.it/ricerca/?q=bo; www.garzantilinguistica.it/ricerca/?q=boh; www.dict.com; sjp.pwn.pl/szukaj/bo.html). At the same time, these two words may be understood as given names, ‘KEN’ being a name of Scottish/Gaelic origin, used either as a masculine given name or as a short form of names with the letters ‘Ken’ (like Kenneth, Kenan, Kendrick, Kendall, Kennedy, Mackenzie or Kenson), and ‘BO’ being a name of Swedish/Danish origin, also used as short form for several names, like Beaufort, Beauregard, Bonita or Bonnie (information extracted on 11/06/2019 at en.wikipedia.org/wiki/Ken_(given_name); en.wikipedia.org/wiki/Bo_(given_name)).

As follows from case-law, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). This is justified by the fact that consumers naturally look for a meaning when reading a word and, in addition, in the present case the dominant part of this sign is broken down into by the hyphen. Therefore, at least the part of the public that will perceive certain meaning(s) of ‘KEN’ and/or ‘BO’ will break the expression ‘KEN-BO₂’ down into these two elements. As their meanings are not descriptive, allusive or otherwise weak in relation to the contested services, their inherent distinctive character is average. The number ‘2’, written as a subscript, that follows ‘BO’, will be perceived as a number with no additional meaning and is, therefore, inherently distinctive to an average degree.

At the same time, it cannot be excluded that a part of the public will perceive the expression ‘KEN-BO₂’ as a whole and consider it meaningless, and therefore for that part of the public it will be inherently distinctive to an average degree for the contested serviced.

The opponent argued that the ‘O₂’ element of the contested mark stands out as it is depicted wholly in blue and overhangs the text underneath, which gives it the impression of being quite separate. The opponent suggested that ‘O₂’, or possibly the ‘KEN-BO₂’ element, will be perceived as the indicator of the commercial origin of the contested services. As explained above, ‘KEN-BO₂’ constitutes the contested sign’s dominant element. In the Opposition Division’s view, ‘O₂’ does not stand out in the contested sign. The whole expression ‘KEN-BO₂’ is portrayed in the same type and style (‘O₂’ is neither larger nor in bold in comparison to the remaining letters) and follows the same pattern in which colours grade from yellow to light blue. In fact, the light blue of ‘O₂’ is very similar to the greenish-blue of the letter ‘B’ that directly precedes it. For the same reasons, the Opposition Division disagrees with the opponent that ‘O₂’ is the first element that the public will perceive. There is no reason why the relevant public would single out this particular element. They will perceive it as merely a part of the longer expression ‘KEN-BO₂’ and will not attach any particular importance to ‘O₂’ alone or its use in the colour blue, as argued by the opponent.

The Italian expression ‘SIAMO ENERGIA’ translates as ‘we are energy’ (information extracted from Reverso Translation on 11/06/2019 at www.reverso.net/
translationresults.aspx?lang=EN&direction=italian-english). The opponent argued that this expression is descriptive for health club services, wellness and fitness instruction in terms of either being motivational or being a reference to the services offered to increase a person’s energy. In the Opposition Division’s view, it is not descriptive of any particular characteristics of the contested services, yet it may be perceived as a slightly laudatory slogan; therefore, its inherent distinctive character is below average for the Italian-speaking public. However, the word ‘SIAMO’ is meaningless in the remaining languages of the territory and inherently distinctive to an average degree. ‘ENERGIA’ will be understood as or associated with the meaning of the English noun ‘energy’ in all the languages of the relevant territory (it exists in Estonian, Finnish, Hungarian, Polish and Portuguese and it is highly similar in the remaining languages, for example ‘energiya / енергия’ in Bulgarian, ‘energija’ in Croatian, ‘energie’ in Czech, Dutch, German, Romanian and Slovak, ‘énergie’ in French and ‘energía’ in Spanish). Moreover, this word may be perceived as slightly laudatory for the contested services (as it may suggest that the contested services may have positive, ‘energizing’ effect on the consumers’ frame of mind or physical condition); therefore, its inherent distinctive character is below average.

The stylisation of the verbal elements of the marks under comparison is largely decorative and inherently distinctive to no more than a low degree. When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

Bearing in mind the above explanations, it must be concluded that the marks refer to distinct concepts. While the earlier marks clearly evoke the concept of the oxygen, the words ‘KEN’ and/or ‘BO’ of the contested sign will be associated with different concepts in different parts of the relevant territory. In addition, at the very least the word ‘ENERGIA’ will be associated throughout the relevant territory (and ‘SIAMO ENERGIA’ in the Italian-speaking part) with a concept that, even if less distinctive, differs from that of the earlier marks and has no counterpart in them. Therefore, the signs are conceptually not similar.

Even assuming that a part of the public were to perceive a reference to a chemical formula in the contested sign, this public would not link it with only ‘O₂’, but with the whole sequence ‘BO₂’ which refers to a chemical compound given that the letter ‘B’ indicates ‘boron’ in the periodic table. ‘Boron’ is a ‘chemical element, semimetal, essential to plant growth and of wide industrial application’ (information extracted from Encyclopaedia Britannica on 11/06/2019 at www.britannica.com/science/boron-chemical-element). Consequently, this public would perceive ‘BO₂’ as a chemical compound composed of boron and oxyanions (whether real or imaginary) or ‘some’ chemical compound that is unknown to this public (by analogy 21/05/2015, T-55/13, F1H20 / F1 et al., EU:T:2015:309, § 41).

However, the fact that a chemical compound contains oxyanions is not sufficient to render any significant degree of conceptual similarity (if any at all) with oxygen. The concepts of a chemical compound and a chemical element are quite distinct in chemistry and a link resulting from such a coincidence would be at most very remote, if any. Therefore, even in such a case, considering the remaining conceptual differences, the signs would be conceptually similar to, at best, a very low degree.

Visually, the signs coincide in the element ‘O₂’; thus, the whole of the earlier marks is entirely incorporated at the end of the contested sign’s dominant element ‘KEN-BO₂’, although portrayed in a slightly different manner.

The contested sign differs from the earlier marks in the letters ‘KEN-B**’, which constitute the longer part of its dominant element, including the beginning. It also differs in the expression ‘SIAMO ENERGIA’, which, although secondary and less distinctive (in a part of the relevant territory, while in another part the word ‘SIAMO’ is distinctive to an average degree), adds additional differences between the signs. Finally, they differ in the stylisation of their verbal elements, which, however, is distinctive to no more than a low degree and, therefore, has a limited impact on the perception of the signs.

Aurally, 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 ‘O₂’ element.

The pronunciation differs in the sound of the remaining verbal components of the contested sign, namely ‘KEN-B**’ and the expression ‘SIAMO ENERGIA’, which have no counterpart in the earlier mark. As a result, the pronunciation of the contested sign is much longer. The stylisation of the signs and the hyphen symbol of the contested sign are not subject to a phonetic assessment.

It is important to note 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. 

Therefore, bearing in mind in particular that the earlier marks are very short, and that the contested mark is much longer and differs mainly in its beginning, it is concluded that the signs are visually and aurally similar to no more than 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.

c) 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.

According to the opponent, its earlier marks have been extensively used and enjoy an enhanced scope of protection. As regards earlier mark 6), the reputation was claimed for goods and services in Classes 9, 35, 36, 38 and 41, and as regards the earlier mark 7), the reputation was claimed for services in Class 35.

As will be explained in detail in the section ‘REPUTATION — ARTICLE 8(5) EUTMR’ of this decision, the opponent proved reputation for, inter alia, education; sporting and cultural activities in Class 41 of its earlier mark 6), which are relevant for the current comparison. Therefore, it is considered that the earlier mark has an enhanced distinctiveness for these services.

The opponent did not explicitly claim (and in any event did not prove) reputation or enhanced distinctiveness for any services in Class 44, including the medical services; hygienic and beauty care for human beings or animals; beauty salons; healthcare services of the opponent’s earlier mark 7), which are relevant for the current comparison. Consequently, the assessment of the distinctiveness of this earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark in relation to these services in Class 44 must be seen as just below average.

d) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (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).

In the present case, the services are identical. The signs are visually and aurally similar to no more than a low degree and they are conceptually not similar or a conceptual similarity is very low, at best. Earlier mark 6) has an enhanced distinctiveness for the opponent’s services in Class 41 and the distinctiveness of earlier mark 7) for the opponent’s services in Class 44 is just below average.

The relevant public is composed of the public at large displaying an average to high degree of attention.

Although the only verbal element of the earlier marks, ‘O₂’, is entirely incorporated in the contested sign, it does not stand out in this sign, but constitutes merely a part of the longer sign that is located at the end of its dominant element, ‘KEN-BO₂’. In the Opposition Division’s view, the relevant public will perceive this dominant element of the contested sign (as a whole) as the main indicator of commercial origin of the services, and will neither single the ‘O₂’ element out nor will it attach any particular importance to this coinciding element.

The signs show important differences on the conceptual level, in particular that the words ‘KEN’ and ‘BO’ will be associated with different meanings that are distinct from the concept evoked by the earlier marks. This makes it even less likely that the public will perceive ‘O₂’ as an element that plays an independent distinctive role in the contested sign. As explained in section c) above, even assuming that a part of the public would perceive a link to a chemical formula in the contested sign, it would not be with the element ‘O₂’ alone, but with the sequence ‘BO₂’, and it would lead to, at best, a very low degree of conceptual similarity between the signs, if any.

It should be underlined again that, according to case-law, the shorter a sign, the more easily the public is able to perceive all its single elements. The earlier marks are very short, as they are composed of the single word with only two characters. In contrast, the contested sign is much longer and composed of several elements. The main differing elements of the contested sign are located at its beginning, where consumers normally focus their attention, and they are distinctive to an average degree. The contested sign also differs in the whole expression ‘SIAMO ENERGIA’, which, although secondary and less distinctive (in a part of the relevant territory, while in another part the word ‘SIAMO’ is distinctive to an average degree), adds additional visual, aural and conceptual differences between the signs.

Consequently, the above-mentioned elements introduce important differences between the signs that will not remain unnoticed by the public.

In its submissions, the opponent relied on the judgement of 06/10/2005, C-120/04, Thomson Life, EU:C:2005:594, in particular on paragraphs 29-31. However, 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 ‘O₂’ element is not only located in a more distant position, but merely constitutes a part of the longer expression. In addition, the elements of this expression ‘KEN’ and ‘BO’ have certain meanings in the relevant territory. Therefore, in the present case, the public is not likely to single out and attach any particular importance to the element ‘O₂’.

The opponent also relied on several earlier decisions of the Opposition Division, all of which are not comparable to the present case:

 in the decision of 09/02/2009, case B 9 52 541, the Office compared the marks and , which were found to be conceptually not similar. In that case, the coinciding part appeared at the beginning of the contested sign, where consumers normally focus their attention, which is not the case here;

 in the decision of 28/07/2010, case B 1 126 061, concerning the contested sign and in the decision of 10/09/2013, case B 1 945 453, concerning the contested sign , the element ‘O₂’ was clearly separated visually, while the only remaining verbal elements were either descriptive or laudatory for the relevant goods (in Classes 32 and 33 and in Classes 3, 5 and 10 respectively). In the present case, ‘O2’ is joined with other elements that are dominant and distinctive and the services are different.

 in the decision of 28/03/2014, case B 11 587 524, concerning the contested sign , although the element ‘O₂’ was joined with the word ‘eYe’, it was clearly separated visually by use of a larger font and bold type, while the remaining verbal component, ‘eYe’, had a clear meaning that was considered weak, which is not the case here.

For the sake of completeness, it must be noted that the opponent also argued that it has trained consumers to its uses of the mark ‘O₂’ either alone or with a number of different elements, such as O₂ SHOP, O₂ SIP TRUNKING, O₂ Health, O₂ Money, O₂ Music. 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 its 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 services 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.

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 constitutes only a short fraction of the contested sign and which cannot be attributed any independent distinctive role in this sign, is not sufficient to trigger likelihood of confusion, including a likelihood of association. The differences between the signs will allow the public, even the public displaying an average degree of attention and despite an enhanced distinctiveness for some services, to safely distinguish the marks under comparison. This applies all the more to the public displaying a higher degree of attention.

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 services are identical cannot, in this case, compensate for the differences between the signs.

Considering all the above, even despite the fact that the services are identical and the opponent’s earlier mark 6) has an enhanced distinctiveness (and reputation) for the services in Class 41, the relevant public will not attach particular importance to the element ‘O₂’ of the contested sign, and 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.

The opponent also based its opposition on other goods and services of earlier marks 6) and 7) , as well as on numerous goods and services of earlier marks 1) ‘O2’ (word), 2) ‘O2’ (word), 3) , 4)  and 5) , 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 services were found identical). The fact that earlier marks 1) and 2) are word marks, ‘O2’, does not increase their similarity with the contested sign, because the similarity is actually stronger when mark is depicted with the number ‘2’ as a subscript. The figurative depiction of earlier mark 5) makes it even less visually similar to the contested sign than the marks already compared. 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.

The opponent also argued that some of its other goods and services from Classes 9, 35, 36, 38 and 41 of its earlier marks 1) to 7), respectively, enjoy an enhanced distinctiveness or reputation. However, the contested services in Class 41 have already been found identical to the opponent’s services in Class 41 for which reputation has been proved. Therefore, the outcome cannot be different on the basis of these marks and other goods or services that are identical, similar to varying degrees or dissimilar. And as regards the contested services in Class 44, the goods and services for which the opponent has actually proved reputation, as will be explained below, namely its core telecommunication goods (Class 9), telecommunications services (Class 38) and services relating to either education, entertainment, sporting and cultural activities (Class 41), are dissimilar to the contested medical services; psychological counseling; cosmetic treatment; beauty salon services in Class 44. The similarity of goods and services is a sine qua non condition for there to be likelihood of confusion. Therefore, an enhanced degree of distinctiveness for these goods and services cannot change the outcome.

Therefore, no likelihood of confusion exists with respect to the contested services 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 regarding the contested services.

REPUTATION — ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier mark 6), EUTM No 13 108 139 for the figurative mark  , to which the opponent referred in its observations as being the most similar to the contested sign and which covers the broadest specification of the goods and services for which reputation has been claimed. For reasons of simplification, all the references to the ‘O₂’ or ‘O2’ brand are references to this earlier figurative mark and its representation.

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 above-mentioned 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.

a) Reputation of the earlier trade mark

According to the opponent, the earlier trade mark has a reputation in the European Union.

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.

In the present case, the contested trade mark has a filling date of 22/12/2017. Therefore, the opponent was required to prove that the trade mark 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. They include various telecommunications-related apparatus, such as 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 list. However, they can be found in the notice of opposition, which can be accessed through https://euipo.europa.eu.

On 26/09/2018, 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 recently 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 earlier trade mark 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 mark, its continual growth and market presence as well as an innovative character that is constantly expanding and developing.

With regard to the services for which repute has been claimed, it is plain from the evidence that the opponent has successfully proved that it has gained a reputation for all the services in Class 38. However, a reputation of the opposing brand extends also to the opponent’s education; entertainment; sporting and cultural activities in Class 41, as the opponent has been strongly involved 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 have 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, the evidence clearly relates to telecommunications apparatus.

All in all, the evidence shows that the earlier trade mark enjoys a strong reputation for all its core services in Class 38, but also for, at least, the above-mentioned services in Class 41 and some goods in Class 9, namely those related to telecommunications apparatus. The reputation is confirmed at the very least for the territory of the United Kingdom, which is sufficient for concluding that the earlier trade mark has reputation in the European Union. It is pointed out that 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 mark has a reputation for the remaining goods and services, in particular the goods in Class 9 that are not related to telecommunications apparatus and the services in Classes 35 and 36. 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 mark’s reputation for these remaining goods and services.

The opponent did not claim reputation for any services in Class 44 and, indeed, the evidence is insufficient to establish the earlier mark’s reputation (or enhanced distinctiveness) in relation to any of these services.

b) The signs

The earlier mark 6) 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.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar, although to a low extent. 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.

The opposition is directed against the following services:

Class 41: Health club services [health and fitness training]; health and wellness training; provision of health club [physical exercise] facilities; bodywork therapy instruction; training and instruction.

Class 44: Medical services; psychological counseling; cosmetic treatment; beauty salon services.

The inherent distinctiveness of the earlier mark for the goods and services in Classes 9, 38 and 41 for which reputation has been proved, as referred to above, is normal.

As regards the similarity of the services, although the opponent’s reputation in Class 41 does not arise from educational, sporting or cultural activities concerning specifically health, fitness or wellness, there is at least an overlap between these services of the opponent and the contested ones. Therefore, all the contested services in Class 41 must be considered identical to the opponent’s services in Class 41 of EUTM No 13 108 139, for which reputation has been proved. They target an overlapping clientele (the public at large).

In contrast, the contested services in Class 44 are different from the opponent’s goods and services of EUTM No 13 108 139 for which reputation has been proved and extend largely to telecommunication apparatus in Class 9, telecommunications services in Class 38 and educational, sporting and cultural activities in Class 41. There is no relationship whatsoever between the contested medical services; psychological counselling and the opponent’s goods and services, as they very clearly diverge in their nature, purpose, distribution channels and providers and are neither complementary nor in competition. As regards the remaining services in Class 41, the markets of cosmetic treatment; beauty salon services, just like the market of cosmetics, have nothing in common with and are completely distinct from those of mobile telephony and telecommunication services and the related services (by analogy 04/11/2013, R 401/2012-4, BIO2YOU (fig.) / THE O2 (fig.) et al., § 34). The public targeted by the contested services is very different from that targeted by these services and the opponent’s goods and services fulfil different needs. Indeed, the contested services are sufficiently removed from the goods and services in Classes 9, 38 and 41 for which the earlier mark has a reputation.

As already analysed above under the grounds of Article 8(1)(b) EUTMR, there is no likelihood of confusion between the marks regarding the contested services in Class 41. All the more, there can be no likelihood of confusion for the contested services in Class 44 and the opponent’s goods and services for which reputation has been proved, which are not similar. The similarity of goods and services is a sine qua non condition for there to be likelihood of confusion.

As explained in detail under the grounds of Article 8(1)(b) EUTMR, the signs are visually and aurally similar to no more than a low degree and they are conceptually not similar or, in any event, a conceptual similarity is at best very low. The earlier mark is very short, while the contested trade mark is much longer and composed of several elements, ‘KEN-BO₂ SIAMO ENERGIA’. The structure of the contested sign, its distinctive elements and location of the coinciding part at the end of the contested sign’s dominant element makes it very unlikely that the relevant public will single ‘O₂’ out and focus on this element and its colour. Instead, the public will perceive it as merely a part of the longer expression, ‘KEN-BO₂’, with no independent and distinctive role. This is strongly supported by the fact that the distinctive elements ‘KEN’ and BO’ will be associated with certain meanings in the relevant territory, and therefore the public will focus on these meanings. Moreover, the remaining verbal elements of the contested sign, ‘SIAMO ENERGIA’, although secondary and less distinctive (in a part of the relevant territory, while in another part the word ‘SIAMO’ is distinctive to an average degree), introduce additional distinguishing features.

Even assuming that the public were to perceive a reference to a chemical formula in the contested sign, they would perceive the sequence ‘BO₂’ and not ‘O₂’ alone. As explained above, the coincidence of the element ‘O₂’, in view of the conceptual differences resulting from other elements of the contested sign, cannot lead to more than a very low degree of conceptual similarity between the signs. The opponent did not claim nor proved that it uses its ‘O₂’ mark as part of other trade marks referring to chemical compounds.

Therefore, and in any event, the relevant public will not single out and attach any particular importance to the element ‘O₂’ in the contested sign and, when confronted with the contested services in Classes 41 or 44, the earlier reputed trade mark will not be brought to the public’s mind.

Consequently, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that the marks under comparison are sufficiently removed from each other, as explained in detail under the grounds of Article 8(1)(b) EUTMR, and 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. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected.

The opponent has also based its opposition on the following earlier trade marks with reputation:

a) EUTM registration No 9 279 456 ‘O2’ (word), reputation claimed for services in Classes 35 and 36;

b) EUTM registration No 15 301 005 ‘O2’ (word), reputation claimed for services in Classes 38 and 41;

c) UK TM registration No 2 640 231 (figurative), reputation claimed for goods and services in Classes 9, 36, 38 and 41;

d) UK TM registration No 3 012 801 (figurative), reputation claimed for services in Classes 35 and 36;

e) UK TM registration No 3 065 680 (figurative), reputation claimed for goods and services in Classes 9, 35, 36, 38 and 41;

f) EUTM registration No 16 139 917 (figurative), reputation claimed for services in Class 35.

These earlier marks are identical or nearly identical to the one that has been compared above and for which the opposition failed under Article 8(5) EUTMR. They all refer to the same verbal elements ‘O2’ or ‘O₂’ and their figurative characteristics, where applicable, cannot make them more similar to the contested sign than the earlier trade mark that has already been compared above. Since the claim of reputation regarding these other earlier marks refers to the same goods and services already examined under the ‘link’ and the documents submitted by the opponent were already analysed in detail above, the outcome cannot be different with respect to the goods and services for which the opposition has already been rejected.

Therefore, no ‘link’ will be established between these marks and the contested sign, and 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. In the present case, the applicant did not appoint a professional representative within the meaning of Article 120 EUTMR and therefore did not incur representation costs.

The Opposition Division

Liliya YORDANOVA

Jakub MROZOWSKI

Ewelina ŚLIWIŃSKA

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.