OPPOSITION No B 3 065 038

Lulu's Fashion Lounge, LLC, 195 Humboldt Ave., 95928, Chico, United States of America (opponent), represented by Würtenbergerkunze, Maximiliansplatz 12b, 80333, München, Germany (professional representative)

a g a i n s t

Lulu Centre LLC, Street No. 16, Karama, Dubai, United Arab Emirates (applicant), represented by Haseltine Lake Kempner LLP, Fountain House, 4 South Parade, Leeds LS1 5QX, United Kingdom (professional representative).

On 25/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 038 is partially upheld, namely for the following contested goods and services:

Class 9: Life-saving apparatus and instruments; optical apparatus and instruments.

Class 10: Orthopaedic articles.

Class 14: Jewellery.

Class 18: Carrying bags.

Class 25: Clothing, footwear, headgear.

Class 28: Gymnastic and sporting articles.

Class 35: Administrative processing of purchase orders; Business administration; Business information; Business inquiries; Business management; Commercial administration of the licensing of the goods and services of others; Commercial information and advice for consumers [consumer advice shop]; Office functions; The bringing together, for the benefit of others, of a variety of goods namely vacuum cleaners, clothes dryers, dishwashers, fan heaters, fan coolers, refrigerators, microwave ovens, ovens, televisions, toaster and toaster ovens, vacuum cleaners, washing machines, jewellery, precious stones, watches, stationary items, belts, wallets, portfolio cases, mobile phone cases, handbags, luggage, furniture, kitchen utensils and accessories, clothing, footwear, head gear, embroidery articles, games and sports apparatus, grocery and food items (excluding the transport thereof), enabling customers to conveniently view and purchase those goods; such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes.

Class 40: Clothing alteration; custom tailoring; dressmaking.

2. European Union trade mark application No 17 867 023 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 17 867 023 . The opposition is based on international trade mark registration No 1 230 611 ‘LULU’S’ designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

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

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

a) The goods and services

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

Class 25: Clothing, namely dresses, tops, sweaters, vests, jackets, skirts, pants, jeans, shorts, leggings, tights, socks, overalls, swimwear, rompers, jumpsuits, lingerie, bodysuits; headwear, namely, hats; footwear, namely, shoes, boots, flip flops, sandals.

Class 35: Computerized on-line ordering featuring general merchandise and general consumer goods; computerized on-line ordering services in the field of clothing, shoes, jewelry and accessories; computerized on-line retail store services in the field of clothing, shoes, jewelry and clothing accessories, shoe accessories and jewelry accessories.

The contested goods and services are in Classes 1-45 (inclusive), the full list of which may be viewed at https://euipo.europa.eu/eSearch/#details/trademarks/017867023.

Following a limitation made by the applicant on 25/09/2018, the contested goods in Class 31 were restricted to the following:

Class 31: Raw and unprocessed agricultural, aquacultural, horticultural and forestry products; raw and unprocessed grains and seeds; fresh fruits and vegetables, fresh herbs; live animals; foodstuffs and beverages for animals; malt; none of the aforesaid to include natural plants and flowers; bulbs, seedlings and seeds for planting.

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

The term ‘including’, used in the applicant’s list of goods indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

As the opposition is directed against Classes 1-45 (inclusive), the Opposition Division considers it appropriate to commence the comparison of goods and services with contested Classes 25 and 35, which are also the classes upon which the opposition is based, then considering the other contested classes for which there is a similarity, before outlining the remaining contested classes for which there is a dissimilarity of goods/services with those of the earlier mark.

Contested goods in Class 25

The contested clothing, footwear, headgear include, as broader categories the opponent’s clothing, namely dresses, tops, sweaters, vests, jackets, skirts, pants, jeans, shorts, leggings, tights, socks, overalls, swimwear, rompers, jumpsuits, lingerie, bodysuits; headwear, namely, hats; footwear, namely, shoes, boots, flip flops, sandals. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

As a preliminary remark, the wording such services may be provided by retail stores, wholesale outlets, through mail order catalogues or by means of electronic media, for example, through web sites or television shopping programmes placed at the end of the contested services in Class 35 does not affect the scope of the contested services in this class and so are not repeated in the comparison set out below.

The contested the bringing together, for the benefit of others, of a variety of goods namely vacuum cleaners, clothes dryers, dishwashers, fan heaters, fan coolers, refrigerators, microwave ovens, ovens, televisions, toaster and toaster ovens, vacuum cleaners, washing machines, jewellery, precious stones, watches, stationary items, belts, wallets, portfolio cases, mobile phone cases, handbags, luggage, furniture, kitchen utensils and accessories, clothing, footwear, head gear, embroidery articles, games and sports apparatus, grocery and food items (excluding the transport thereof), enabling customers to conveniently view and purchase those goods are either identical with, or similar to, the opponent’s computerized on-line retail store services in the field of clothing, shoes, jewelry and clothing accessories, shoe accessories and jewelry accessories as they have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use. Furthermore, they coincide in relevant public and distribution channels.

Indeed, the sale of goods is not a service within the meaning of the Nice Classification. Therefore, the activity of retail in goods as a service for the earlier mark is registered does not consist of the mere act of selling the goods, but in the services rendered around the actual sale of the goods, which are defined in the explanatory note to Class 35 of the Nice Classification by the terms “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods”.

The opponent’s computerized on-line ordering featuring general merchandise and general consumer goods; computerized on-line ordering services in the field of clothing, shoes, jewelry and accessories in Class 35 are in the nature of procurement services whereby the listed products are procured by the opponent on behalf of business customers. Such services are provided in a ‘back office’ capacity in support of the commercial operations of an organisation. Contrary to the observations of the opponent, the said online ordering are not in the nature of retail services. They are not directed at the general public but, instead, at business customers for whom the specified subject matter (i.e. general merchandise, general consumer goods, clothing, shoes, jewelry and accessories) is procured. This view is supported by the fact that the list of services of the opponent in Class 35 separately and distinctly includes online retail store services.

Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. Such services include, for example, business information, business inquiries, and commercial information and advice for consumers [consumer advice shop].

Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an employment agencies, auditors and outsourcing companies. Such services, include also, for example, commercial administration of the licensing of the goods and services of others.

Office functions are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information in computer databases, invoicing, and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

In light of the foregoing it follows, therefore, that the contested administrative processing of purchase orders; business administration; business information; business inquiries; business management; commercial administration of the licensing of the goods and services of others; commercial information and advice for consumers [consumer advice shop]; office functions are similar at least to a low degree to the opponent’s computerized on-line ordering featuring general merchandise and general consumer goods as they have the same purpose, namely the purpose of helping with the running of businesses. They usually coincide in providers and relevant public.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc..

Advertising services are fundamentally different in nature and purpose from the manufacture of goods or the provision of many other services. The fact that some goods or services may appear in advertisements is insufficient for finding similarity. Therefore, advertising is dissimilar to the goods or services being advertised.

It follows that the contested advertising; presentation of goods on communication media, for retail purposes; publicity and the opponent’s computerized on-line ordering featuring general merchandise and general consumer goods; computerized on-line ordering services in the field of clothing, shoes, jewelry and accessories are dissimilar, since a professional in the procurement sector would not be expected by the relevant consumer to provide advertising strategies or related services such as publicity or presentation of goods. The said contested services are dissimilar also to the remaining goods and services of the opponent in Classes 25 and 35 as they do not share relevant points of contact such as would justify a finding of similarity.

Contested goods in Class 9

The contested life-saving apparatus and instruments include within their scope goods such as safety boots for use in industry [for protection against accident or injury] which are similar to a low degree with the opponent’s footwear, namely boots in Class 25 as they have the same nature as the opponent’s goods. They usually coincide in relevant public and method of use. It follows that the contested term is also similar to a low degree to the opponent’s said goods in Class 25.

The contested optical apparatus and instruments include sports googles which are similar to a low degree with the opponent’s headwear, namely, hats in Class 25 (which include sports hats, such as ski hats) as they usually coincide in producer, relevant public and distribution channels. It follows that the contested term is also similar to a low degree to the opponent’s said goods in Class 25.

However, the remainder of the contested goods in Class 9 which includes mainly apparatus and instruments for scientific or research purposes, audiovisual and information technology equipment are dissimilar to all the goods and services for which the earlier mark is registered in Classes 25 and 35 since they do not have any relevant points of contact that could justify finding a level of similarity between them.

Contested goods in Class 10

The contested orthopaedic articles include orthopaedic footwear which are similar to a low degree to the opponent’s footwear, namely, shoes, boots, flip flops, sandals in Class 25 as they have the same nature. They usually coincide in relevant public and method of use. It follows that the contested term is also similar to a low degree to the opponent’s said goods in Class 25.

However, the remainder of the contested goods in Class 10 which include mainly surgical, medical, dental and veterinary apparatus, instruments and articles generally used for the diagnosis, treatment or improvement of function or condition of persons and animals are dissimilar to all the goods and services for which the earlier mark is registered in Classes 25 and 35 since they do not have any relevant points of contact that could justify finding a level of similarity between them.

Contested goods in Class 14

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, the contested jewellery are similar to a low degree to the opponent’s computerized on-line retail store services in the field of jewelry.

However, the remainder of the contested goods in Class 14 which include mainly precious metals and certain goods made of precious metals or coated therewith, as well as clocks and watches, and component parts therefor are dissimilar to all the goods and services for which the earlier mark is registered in Classes 25 and 35 since they do not have any relevant points of contact that could justify finding a level of similarity between them. The above reasoning as regards the opponent’s retail services does not apply in this case, since similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in the present case, since the goods at issue are not identical.

Contested goods in Class 18

The contested carrying bags are related to the opponent’s clothing, namely dresses, tops, sweaters, jackets, skirts, pants, jeans, shorts in Class 25. This is because they are likely to be considered by the consumers as aesthetically complementary accessories to articles of outer clothing, because they are closely coordinated with these articles and may well be distributed by the same or linked manufacturers, and it is not unusual for clothing manufacturers to directly produce and market them. Moreover, these goods usually coincide in relevant public and can be found in the same retail outlets. Therefore, these goods are considered to be similar.

However, the contested luggage; umbrellas and parasols in Class 18 are not similar to the opponent’s said goods in Class 25. The nature of these goods is very different from that of the opponent’s clothing, namely dresses, tops, sweaters, vests, jackets, skirts, pants, jeans, shorts, leggings, tights, socks, overalls, swimwear, rompers, jumpsuits, lingerie, bodysuits; headwear, namely, hats; footwear, namely, shoes, boots, flip flops, sandals. In particular, luggage are for carrying things when travelling and do not satisfy the same needs as clothing, headgear and footwear. The contested luggage; umbrellas and parasols serve very different purposes, do not usually have the same retail outlets and are not usually made by the same manufacturers. Therefore, these goods are considered dissimilar.

Moreover, the remainder of the contested goods in Class 18 which includes mainly leather, imitations of leather and certain goods made of those materials are dissimilar to all the goods and services for which the earlier mark is registered in Classes 25 and 35 since they do not have any relevant points of contact that could justify finding a level of similarity between them.

Contested goods in Class 28

Sports clothing such as the opponent’s clothing, namely jumpsuits are items of apparel designed specifically to be worn when doing sport. The purpose and nature of these goods are different from those of the contested gymnastic and sporting articles, which are articles and apparatus for all types of sports and gymnastics, such as weights, halters, tennis rackets, balls and fitness apparatus. However, undertakings that manufacture gymnastic and sporting articles may also manufacture jumpsuits. Therefore, the contested gymnastic and sporting articles are similar to a low degree to the opponent’s clothing, namely jumpsuits in Class 25 as they usually coincide in producer, relevant public and distribution channels.

However, the remainder of the contested goods in Class 28, namely games, toys and playthings; video game apparatus; decorations for Christmas trees are dissimilar to all the goods and services for which the earlier mark is registered in Classes 25 and 35 since they do not have any relevant points of contact that could justify finding a level of similarity between them.

Contested services in Class 40

The contested clothing alteration; custom tailoring; dressmaking in Class 40 are similar to a low degree to the opponent’s clothing, namely dresses, jackets, skirts, pants, in Class 25 as they usually coincide in relevant public. Producers of ready-made clothing (for instance suits and wedding dresses) frequently provide tailoring services, which are closely related to fashion design.

However, the remainder of the contested services in Class 40 which includes mainly services not included in other classes, rendered by the mechanical or chemical processing, transformation or production of objects or inorganic or organic substances, including custom manufacturing services are dissimilar to all the goods and services for which the earlier mark is registered in Classes 25 and 35 since they do not have any relevant points of contact that could justify finding a level of similarity between them.

The contested goods in Classes 1, 2, 3, 4, 5, 6, 7, 8, 11, 12, 13, 15, 16, 17, 19, 20, 21, 22, 23, 24, 26, 27, 29, 30, 31, 32, 33 and 34

As to the similarity between goods, this concerns a matter of law which has to be ruled on by the Office, if need be on its own motion, since it is necessary to resolve that matter in order to ensure a correct application of Article 8(1)(b) EUTMR (15/07/2015, T-24/13, CACTUS OF PEACE CACTUS DE LA PAZ / CACTUS, EU:T:2015:494, § 23 and the case-law cited).

The contested goods in the listed classes, summarised below for convenience, are dissimilar to all the goods and services for which the earlier mark is registered in Classes 25 and 35 since they do not have any relevant points of contact that could justify finding a level of similarity between them:

 Classes 1, 2, and 4 consist mainly of chemical products for use in industry, science and agriculture including those which go into the making of products belonging to other classes, paints colourants and preparations used for protection against corrosion, and industrial oils and greases, fuels and illuminants;

 Classes 3 and 5 include mainly non-medicated toiletry preparations, as well as cleaning preparations for use in the home and other environments, pharmaceuticals and other preparations for medical or veterinary purposes;

 Classes 6, 7, and 8 consist mainly of unwrought and partly wrought metals including ores and certain goods made of common metals, machines, machine tools, motors and engines, and hand tools and implements for preforming tasks;

 Classes 11, 12, and 13 consist mainly of environmental control apparatus and instruments, vehicles and apparatus for the transport of people and goods, firearms and pyrotechnical products;

 Classes 15, and 16 consist mainly of musical instruments, and paper, cardboard and certain goods made of these materials;

 Classes 17, 19, 20, and 21 consist mainly of electrical, thermal and acoustic insulating materials and plastics, building and construction materials, furniture and goods made of materials such as wood, cork and reed, and mainly small hand-operated utensils and apparatus for household and kitchen use and cosmetics and toilet utensils, and glassware, porcelain and earthenware;

 Classes 22, 23, 24, 26, and 27 consist mainly of canvas, natural or synthetic yarns and threads for textile use, fabrics and fabric covers, natural or synthetic hair for wear, and hair adornments, as well as small decorative items intended to adorn a variety of objects, not included in other classes, and products intended to be added as furnishings to previously constructed floors and walls.

 Classes 29, 30, 31, 32, and 33 consist of food and drink products for human and animal consumption as well as raw and unprocessed agricultural, aquacultural, horticultural and forestry products, raw and unprocessed grains and seeds;

 Class 34 consists of tobacco and articles used for smoking, as well as certain accessories and containers related to their use.

In particular, with respect to the contested goods in Class 24, the mere fact that textiles and clothing usually have the same nature is not sufficient to make them similar given that they differ in the other relevant factors.

Although the contested goods in Class 26 include clothing accessories, and so have some points in common with clothing products, they are dissimilar to the opponent’s goods in Class 25. Unlike the contested goods in Class 26, the opponent’s goods are readymade garments, footwear and headgear. They do not have the same nature, purpose, or method of use and they cannot be considered in competition with each other.

The contested services in Classes 36, 37, 38, 39, 41, 42, 43, 44, and 45

The contested services in the listed classes, summarised below for convenience, are dissimilar to all the goods and services for which the earlier mark is registered in Classes 25 and 35 since they do not have any relevant points of contact that could justify finding a level of similarity between them:

 Class 36 includes mainly services rendered in financial and monetary affairs and services rendered in relation to insurance contracts of all kinds;

 Class 37 includes mainly services rendered by contractors or subcontractors in the construction or making of permanent buildings, as well as services rendered by persons or organizations engaged in the restoration of objects to their original condition or in their preservation without altering their physical or chemical properties;

 Class 38 includes mainly services allowing at least one person to communicate with another by a sensory means;

 Class 39 includes mainly services for the transport of people, animals or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding;

 Class 41 covers mainly services rendered by persons or institutions in the development of the mental faculties of persons or animals, as well as services intended to entertain or to engage the attention;

 Class 42 includes mainly services provided by persons, individually or collectively, in relation to the theoretical and practical aspects of complex fields of activities, such services provided by members of professions such as chemists, physicists, engineers, computer programmers;

 Class 43 includes mainly services provided by persons or establishments whose aim is to prepare food and drink for consumption and services provided to obtain bed and board in hotels, boarding houses or other establishments providing temporary accommodation;

 Class 44 includes mainly medical care, hygienic and beauty care given by persons or establishments to human beings and animals; it also includes services relating to the fields of agriculture, horticulture and forestry;

 Class 45 for legal services; security services for the physical protection of tangible property and individuals; babysitting; guard services.

b) Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar are directed partly at the public at large and partly at business customers with specific professional knowledge or expertise. The degree of attention is average save for the relevant business services in Class 35 for which the degree of attention is high.

c) The signs

LULU’S
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

For a substantial part of the relevant public, the verbal term ‘LULU’S’ of the earlier word mark will be perceived as referring to a male or female forename or a diminutive form thereof, notwithstanding that it is presented as the genitive singular form in English. For the remainder of the relevant public, the earlier mark will be perceived as a fanciful and meaningless term. In any event, as this term does not bear a reference to the relevant goods or services, it is normally distinctive.

In the case of word marks, the word itself is protected and not its written form. Therefore, it is irrelevant whether the marks under comparison are written in upper or lower case letters.

The contested sign, which consists of the verbal term ‘LuLu’ (in which the letters ‘L’ are in upper case and the letters ‘u’ in lower case) presented in a stylised type face of a decorative nature, will also be perceived as a male or female forename (or diminutive form thereof) by a substantial part of the relevant public and as a fanciful meaningless term by the remaining part of that public. In any event, as this term does not bear a reference to the relevant goods or services, it is normally distinctive.

Visually, the signs coincide in the identical letter string ‘LULU’. They differ in the apostrophe and final letter ‘S’ of the earlier mark and the stylisation of the contested sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. It follows that the difference in the ending of the earlier mark will have less impact on the relevant consumer. Moreover, the stylisation of the contested sign and the fact that letters ‘L’ are in upper case while the letters ‘u’ are in lower case, are features of a decorative nature that will not prevent the relevant consumer from perceiving immediately the letter string ‘LULU’ therein.

On the basis of the above, the signs at issue are considered to be visually highly similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛LULU’, present identically in both signs. The pronunciation differs in the sound of the final letter ‘S’ of the earlier mark, which has no counterpart in the contested sign, which, however, coming at the end of the earlier mark, has less phonetic impact. It follows that the signs at issue are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. For the part of the relevant public for which both of the signs will be perceived as referring to the same male or female forename (or diminutive form thereof), they are conceptually similar to at least a high degree. For the remainder of the relevant public, the signs will be meaningless and since for this part a conceptual comparison is not possible, the conceptual aspect will not influence the assessment of the similarity of the signs.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. The Office also takes account of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

The marks under analysis have been found to be visually and phonetically highly similar and either conceptually at least highly similar or with no conceptual comparison possible. The relevant goods are partly identical, partly similar to varying degrees, and partly dissimilar. The earlier mark is distinctive to a normal degree and the degree of attention of the relevant consumer is average or high.

Taking the relevant factors into account, the Opposition Division considers that the similarities between the signs at issue clearly outweigh the differences such that there is a likelihood of confusion on the part of the relevant public, even for the part that may display a high degree of attention.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark including those found similar to a low degree, in view of the above-mentioned principle of interdependence.

The rest of the contested goods and services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods and services cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Catherine MEDINA

Kieran HENEGHAN

Boyana NAYDENOVA

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.