OPPOSITION No B 3 051 267

Indecemi, S.L., Avda. Del Carme, Nº2, 46715 Alqueria De La Comtessa, Spain (opponent), represented by Imma Marti Peiro, C/ Manuel Sanchis Guarner, Nº 8, 3º, pta 8, 46702 Gandia, Spain (professional representative)

a g a i n s t

Milan Šebesta, Vinohrady 2631, 69701 Kyjov, Czechia (applicant), represented by Jaromír Přikryl, Včelín 1161, 768 24, Hulín, Czech Republic (professional representative).

On 12/09/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 051 267 is partially upheld, namely for the following contested goods and services:

Class 6: Fittings (listed two times).

Class 11: Apparatus for lighting.

Class 35: Commercial intermediation services of goods, namely Metal profile materials, Hoop iron, Plates of metal, Pipes and tubes of metal, Pipe elbow joints of metal, Metal tubing, Branching pipes of metal, Pipe flanges of metal, Flanges, Fittings, Fittings, Connectors and other water, gas and heating installation materials, including pipe fittings, all of metal, Sanitary apparatus and installations, and water supply apparatus; Showers; Shower heads; Water flow regulators and water saving devices; Mixer taps of all kinds for washbasins and bath tubs; Sanitary ware of artificial stone, in particular washbasins for bathroom furniture; Atypical slab-shaped washbasins; Bathtubs; Bidets; Urinals [sanitary fixtures]; Toilet installations; Shower trays; Shower stalls; plates; Bath plumbing fixtures; Set units of bathroom; Regulating apparatus for water apparatus; Taps [faucets]; backflow preventors; Fittings; Heating installations; Air conditioning installations; Apparatus for lighting, steam generating, cooking; Apparatus for refrigerating, drying, ventilating; Panel radiators, finned radiators; Kitchen ranges; Kitchen extractor hoods; Ovens, other than for experimental purposes; Refrigerators; Chest freezers; Water supply systems for household purposes; Sealing and regulating elements for heating and water systems; Apparatuses for heating; Heating equipment products, in particular burners, Industrial burners, Gas fittings and regulators for burners; Expansion tanks for heating installations; Heating apparatus and Boilers; Regulators for heating systems and generators; regulating accessories for water and gas installations and pipes; Control consoles for boilers and burners and combustion regulating systems; Advertising, namely Metal profile materials; Hoop iron; Plates of metal; Pipes and tubes of metal; Pipe elbow joints of metal; Metal tubing; Branching pipes of metal; Pipe flanges of metal; Flanges; Fittings; Fittings; Connectors and other water, gas and heating installation materials, including pipe fittings, all of metal, Sanitary apparatus and installations, and water supply apparatus; Showers; Shower heads; Water flow regulators and water saving devices; Mixer taps of all kinds for washbasins and bath tubs; Sanitary ware of artificial stone, in particular washbasins for bathroom furniture; Atypical slab-shaped washbasins; Bathtubs; Bidets; Urinals [sanitary fixtures]; Toilet installations; Shower trays; Shower stalls; plates; Bath plumbing fixtures; Set units of bathroom; Regulating apparatus for water apparatus; Taps [faucets]; backflow preventors; Fittings; Heating installations; Air conditioning installations; Apparatus for lighting, steam generating, cooking; Apparatus for refrigerating, drying, ventilating; Panel radiators, finned radiators; Kitchen ranges; Kitchen extractor hoods; Ovens, other than for experimental purposes; Refrigerators; Chest freezers; Water supply systems for household purposes; Sealing and regulating elements for heating and water systems; Apparatuses for heating; Heating equipment products, in particular burners, Industrial burners, Gas fittings and regulators for burners; Expansion tanks for heating installations; Heating apparatus and Boilers; Regulators for heating systems and generators; regulating accessories for water and gas installations and pipes; Control consoles for boilers and burners and combustion regulating systems.

2. European Union trade mark application No 17 867 602 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 17 867 602 for the figurative mark . The opposition is based on EUTM registrations No 17 040 403 and EUTM No 15 894 711 for the figurative mark . The opponent invoked Article 8(1)(a) and (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.

1. The goods and services

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

1) EUTM No 15 894 711

Class 20: School furniture; Household furniture; Wall partitions [furniture]; Inflatable furniture; Trolleys [furniture]; Soundproof cabinets [furniture]; Upholstered convertible furniture; Portable writing surfaces [furniture]; Leather furniture; Mobile pedestals [furniture]; Movable screens [furniture]; Glass furniture; Computer furniture; Furniture for shops; Modular shelving [furniture]; Mobile display units [furniture]; Mobile partitions [furniture]; Modular desks [furniture]; Furniture for kitchens; Metal cabinets [furniture]; Office furniture; Metal furniture and furniture for camping; Furniture for children; Furniture cabinets; Racks being furniture of metal; Furniture; Furniture and furnishings; Furniture for camping; Furniture for vivariums; Wine racks [furniture]; Corner units [furniture]; Racks [furniture] for casks; Letter racks [furniture]; Key racks [furniture]; Fireguards; Locker boxes [furniture]; Drafting tables; Sales counters [furniture]; Removable partitions [furniture] of metal; Pedestal units [furniture]; Disc cabinets [furniture]; Consignment shelving [furniture]; Potato bins [furniture]; Indoor window blinds [shades] [furniture]; Storage modules [furniture]; Dressers; Boot trays [furniture]; Garden furniture made of metal; Key cabinets; Clothes racks [furniture]; Printer stands; Saw benches [furniture]; Loudspeaker stands [furniture]; Metal office furniture; Storage units [furniture]; Support stands [furniture]; Street furniture, not of metal; Display fittings [furniture] of metal; Bathroom furniture; Woven timber blinds [furniture]; Mobile storage racks [furniture]; Stands [furniture] for telephones; Sectional metal units [furniture]; Multiposition stands [furniture]; High seats [furniture]; Portable partitions [furniture]; Hanging storage racks [furniture]; Magazine storage files [furniture]; Rotating stands [furniture]; Portable sales display units [furniture]; Portable work surfaces [furniture]; Screens [furniture] for display purposes; Plastic furniture for gardens; Sectional non-metallic units [furniture]; Kitchen units; Relocatable metal storage racks [furniture]; Non-metallic storage racks [furniture]; Fire safe cabinets [furniture] of metal; Storage drawers [furniture]; Garden furniture manufactured from wood; Holders for brochures [in the nature of furniture]; Metal wall units [furniture]; Non-metallic wall shelves [furniture]; Book rests [furniture]; Furniture partitions of wood; Storage baskets [furniture]; Wall screening [furniture] for offices; Fire safe cabinets [furniture] (non-metallic -); Pedestal storage units [furniture]; Racks being furniture made of non-metallic materials; Relocatable non-metallic storage racks [furniture]; Holders for display material [furniture]; Wood surrounds [furniture] for electronic apparatus; Shelving frames, not of metal [furniture]; Bathroom fittings in the nature of furniture; Partitions (non metallic -), [furniture] made from interlocking panels; Units [furniture] for the display of literature; Plaques (decorative wall -) [furniture] not of textile; Racks [furniture] made principally of plastics for storage purposes; Kits of parts [sold complete] for assembly into articles of furniture; Units [furniture] for the display of stationery; Screens [furniture] for use as room dividers in offices; Non-metal safety gates for babies, children, and pets.

2) EUTM No 17 040 403

Class 35: Retail services connected with the sale of furniture; Wholesale services in relation to furnishings; Retail services in relation to furnishings; Wholesale services in relation to lighting; Wholesale services in relation to furniture; Retail services in relation to furniture; Shop retail services connected with carpets; Sales administration; Procurement of contracts for the purchase and sale of goods and services; Arranging subscriptions to Internet services; Arranging of contracts for the purchase and sale of goods and services, for others; Arranging commercial transactions, for others, via online shops; Provision of online price comparison services; Clerical services for the taking of sales orders; Procurement services for others [purchasing goods and services for other businesses]; Business administration services for processing sales made on the internet; Electronic commerce services, namely, providing information about products via telecommunication networks for advertising and sales purposes; Online ordering services; Wholesale ordering services; Telemarketing services; Computerized on-line ordering services; Providing consumer information relating to goods and services; Administrative processing and organising of mail order services; Updating of business information on a computer data base; Collection and systematization of business data; Market research; Cost benefit analysis; Business management analysis; Analysis of marketing trends; Dissemination of commercial information; Commercial information research studies; Provision of on-line business and commercial information; Information or enquiries on business and marketing; Business information; Providing an on-line commercial information directory on the internet; Commercial information services; Commercial information services, via the internet; Providing business information via a web site; Providing consumer product information via the Internet; Provision of information concerning commercial sales; Advertising, marketing and promotional consultancy, advisory and assistance services; Distribution of advertising, marketing and promotional material; Product demonstrations and product display services; Trade show and commercial exhibition services; Provision of advertising space, time and media; Public relations services; Loyalty, incentive and bonus program services; Advertisements (Placing of -); Compilation of advertisements for use on the internet; Developing promotional campaigns for business; Design of marketing surveys; Marketing; Web indexing for commercial or advertising purposes; Trade marketing [other than selling]; Product marketing; Direct marketing; Internet marketing; Web site traffic optimization; Arrangement of advertising; Arranging and conducting of advertising events; Planning of marketing strategies; Arranging and conducting of promotional events; Preparation of advertisements; Preparation of advertising campaigns; Preparation of advertising material; Preparation of marketing plans; Presentation of companies and their goods and services on the Internet; Presentation of companies on the Internet and other media; Producing promotional videotapes, video discs, and audio visual recordings; Production of sound recordings for advertising purposes; Production of sound recordings for marketing purposes; Production of video recordings for advertising purposes; Production of advertising material; Promoting the goods and services of others over the Internet; Promoting the goods and services of others via computer and communication networks; Sales promotion; On-line promotion of computer networks and websites; Promotion, advertising and marketing of on-line websites; Publication of publicity materials; Publication of publicity materials on-line; Advertising; Advertising via electronic media and specifically the internet; Advertisement via mobile phone networks; Advertising through all public communication means; On-line advertising on a computer network; Advertising business especially in the field of telematic and telephone networks; Advertising the goods and services of online vendors via a searchable online guide; Advertising of business web sites; Banner advertising; Advertisement for others on the Internet; Online advertisements; Advertising and marketing; Business marketing services; Advertising services provided via the internet; Advertising services relating to the sale of personal property; Publicity and sales promotion services; Publicity services; Advertising services for the promotion of e-commerce; Business management services relating to electronic commerce; Provision of information and advisory services relating to e-commerce.

Following a limitation, the contested goods and services are the following:

Class 6: Metal profile materials; Hoop iron; Plates of metal; Pipes and tubes of metal; Pipe elbow joints of metal; Metal tubing; Branching pipes of metal; Pipe flanges of metal; Flanges; Fittings; Fittings; Connectors and other water, gas and heating installation materials, including pipe fittings, all of metal.

Class 11: Sanitary apparatus and installations, and water supply apparatus; Showers; Shower heads; Water flow regulators and water saving devices; Mixer taps of all kinds for washbasins and bath tubs; Sanitary ware of artificial stone, in particular washbasins for bathroom furniture; Atypical slab-shaped washbasins; Bathtubs; Bidets; Urinals [sanitary fixtures]; Toilet installations; Shower trays; Shower stalls; plates; Bath plumbing fixtures; Set units of bathroom; Regulating apparatus for water apparatus; Taps [faucets]; backflow preventors; Fittings; Heating installations; Air conditioning installations; Apparatus for lighting, steam generating, cooking; Apparatus for refrigerating, drying, ventilating; Panel radiators, finned radiators; Kitchen ranges; Kitchen extractor hoods; Ovens, other than for experimental purposes; Refrigerators; Chest freezers; Water supply systems for household purposes; Sealing and regulating elements for heating and water systems; Apparatuses for heating; Heating equipment products, in particular burners, Industrial burners, Gas fittings and regulators for burners; Expansion tanks for heating installations; Heating apparatus and Boilers; Regulators for heating systems and generators; regulating accessories for water and gas installations and pipes; Control consoles for boilers and burners and combustion regulating systems.

Class 35: Commercial intermediation services of goods, namely Metal profile materials, Hoop iron, Plates of metal, Pipes and tubes of metal, Pipe elbow joints of metal, Metal tubing, Branching pipes of metal, Pipe flanges of metal, Flanges, Fittings, Fittings, Connectors and other water, gas and heating installation materials, including pipe fittings, all of metal, Sanitary apparatus and installations, and water supply apparatus; Showers; Shower heads; Water flow regulators and water saving devices; Mixer taps of all kinds for washbasins and bath tubs; Sanitary ware of artificial stone, in particular washbasins for bathroom furniture; Atypical slab-shaped washbasins; Bathtubs; Bidets; Urinals [sanitary fixtures]; Toilet installations; Shower trays; Shower stalls; plates; Bath plumbing fixtures; Set units of bathroom; Regulating apparatus for water apparatus; Taps [faucets]; backflow preventors; Fittings; Heating installations; Air conditioning installations; Apparatus for lighting, steam generating, cooking; Apparatus for refrigerating, drying, ventilating; Panel radiators, finned radiators; Kitchen ranges; Kitchen extractor hoods; Ovens, other than for experimental purposes; Refrigerators; Chest freezers; Water supply systems for household purposes; Sealing and regulating elements for heating and water systems; Apparatuses for heating; Heating equipment products, in particular burners, Industrial burners, Gas fittings and regulators for burners; Expansion tanks for heating installations; Heating apparatus and Boilers; Regulators for heating systems and generators; regulating accessories for water and gas installations and pipes; Control consoles for boilers and burners and combustion regulating systems; Advertising, namely Metal profile materials; Hoop iron; Plates of metal; Pipes and tubes of metal; Pipe elbow joints of metal; Metal tubing; Branching pipes of metal; Pipe flanges of metal; Flanges; Fittings; Fittings; Connectors and other water, gas and heating installation materials, including pipe fittings, all of metal, Sanitary apparatus and installations, and water supply apparatus; Showers; Shower heads; Water flow regulators and water saving devices; Mixer taps of all kinds for washbasins and bath tubs; Sanitary ware of artificial stone, in particular washbasins for bathroom furniture; Atypical slab-shaped washbasins; Bathtubs; Bidets; Urinals [sanitary fixtures]; Toilet installations; Shower trays; Shower stalls; plates; Bath plumbing fixtures; Set units of bathroom; Regulating apparatus for water apparatus; Taps [faucets]; backflow preventors; Fittings; Heating installations; Air conditioning installations; Apparatus for lighting, steam generating, cooking; Apparatus for refrigerating, drying, ventilating; Panel radiators, finned radiators; Kitchen ranges; Kitchen extractor hoods; Ovens, other than for experimental purposes; Refrigerators; Chest freezers; Water supply systems for household purposes; Sealing and regulating elements for heating and water systems; Apparatuses for heating; Heating equipment products, in particular burners, Industrial burners, Gas fittings and regulators for burners; Expansion tanks for heating installations; Heating apparatus and Boilers; Regulators for heating systems and generators; regulating accessories for water and gas installations and pipes; Control consoles for boilers and burners and combustion regulating systems.

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

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

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

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

Contested goods in Class 6

The contested Fittings (listed two times) are similar to the opponent’s Household furniture in Class 20 of earlier mark 1. They can have similar nature, purpose and method of use. Furthermore, they can have the same distribution channels and relevant public.

The contested goods Metal profile materials; Hoop iron; Plates of metal; Pipes and tubes of metal; Pipe elbow joints of metal; Metal tubing; Branching pipes of metal; Pipe flanges of metal; Flanges; Connectors and other water, gas and heating installation materials, including pipe fittings, all of metal are dissimilar to the opponent’s goods and services in Class 20 (which include furniture and fittings therefor) and 35 (which include mainly services rendered by persons or organizations principally with the object of help in the working or management of a commercial undertaking, or help in the management of the business affairs or commercial functions of an industrial or commercial enterprise, as well as services rendered by advertising establishments primarily undertaking communications to the public, declarations or announcements by all means of diffusion and concerning all kinds of goods or services). They have different nature, purpose and method of use. Furthermore, they do not share the same relevant public, distribution channels and commercial origin, and they are neither complementary nor in competition.

Contested goods in Class 11

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 apparatus for lighting are similar to a low degree to the opponent’s wholesale services in relation to lighting of earlier mark 2.

The remaining contested goods Sanitary apparatus and installations, and water supply apparatus; Showers; Shower heads; Water flow regulators and water saving devices; Mixer taps of all kinds for washbasins and bath tubs; Sanitary ware of artificial stone, in particular washbasins for bathroom furniture; Atypical slab-shaped washbasins; Bathtubs; Bidets; Urinals [sanitary fixtures]; Toilet installations; Shower trays; Shower stalls; plates; Bath plumbing fixtures; Set units of bathroom; Regulating apparatus for water apparatus; Taps [faucets]; backflow preventors; Fittings; Heating installations; Air conditioning installations; Apparatus for steam generating, cooking; Apparatus for refrigerating, drying, ventilating; Panel radiators, finned radiators; Kitchen ranges; Kitchen extractor hoods; Ovens, other than for experimental purposes; Refrigerators; Chest freezers; Water supply systems for household purposes; Sealing and regulating elements for heating and water systems; Apparatuses for heating; Heating equipment products, in particular burners, Industrial burners, Gas fittings and regulators for burners; Expansion tanks for heating installations; Heating apparatus and Boilers; Regulators for heating systems and generators; regulating accessories for water and gas installations and pipes; Control consoles for boilers and burners and combustion regulating systems are dissimilar to the opponent’s goods and services in Classes 20 and 35. They have different nature, purpose and method of use. Furthermore, they differ in distribution channels, relevant public and commercial origin, and they are neither complementary nor in competition.

Contested services in Class 35

The contested Advertising, namely Metal profile materials; Hoop iron; Plates of metal; Pipes and tubes of metal; Pipe elbow joints of metal; Metal tubing; Branching pipes of metal; Pipe flanges of metal; Flanges; Fittings; Fittings; Connectors and other water, gas and heating installation materials, including pipe fittings, all of metal, Sanitary apparatus and installations, and water supply apparatus; Showers; Shower heads; Water flow regulators and water saving devices; Mixer taps of all kinds for washbasins and bath tubs; Sanitary ware of artificial stone, in particular washbasins for bathroom furniture; Atypical slab-shaped washbasins; Bathtubs; Bidets; Urinals [sanitary fixtures]; Toilet installations; Shower trays; Shower stalls; plates; Bath plumbing fixtures; Set units of bathroom; Regulating apparatus for water apparatus; Taps [faucets]; backflow preventors; Fittings; Heating installations; Air conditioning installations; Apparatus for lighting, steam generating, cooking; Apparatus for refrigerating, drying, ventilating; Panel radiators, finned radiators; Kitchen ranges; Kitchen extractor hoods; Ovens, other than for experimental purposes; Refrigerators; Chest freezers; Water supply systems for household purposes; Sealing and regulating elements for heating and water systems; Apparatuses for heating; Heating equipment products, in particular burners, Industrial burners, Gas fittings and regulators for burners; Expansion tanks for heating installations; Heating apparatus and Boilers; Regulators for heating systems and generators; regulating accessories for water and gas installations and pipes; Control consoles for boilers and burners and combustion regulating systems are included in the opponent’s broader category of advertising of earlier mark 2. Therefore, they are identical.

The contested Commercial intermediation services of goods, namely Metal profile materials, Hoop iron, Plates of metal, Pipes and tubes of metal, Pipe elbow joints of metal, Metal tubing, Branching pipes of metal, Pipe flanges of metal, Flanges, Fittings, Fittings, Connectors and other water, gas and heating installation materials, including pipe fittings, all of metal, Sanitary apparatus and installations, and water supply apparatus; Showers; Shower heads; Water flow regulators and water saving devices; Mixer taps of all kinds for washbasins and bath tubs; Sanitary ware of artificial stone, in particular washbasins for bathroom furniture; Atypical slab-shaped washbasins; Bathtubs; Bidets; Urinals [sanitary fixtures]; Toilet installations; Shower trays; Shower stalls; plates; Bath plumbing fixtures; Set units of bathroom; Regulating apparatus for water apparatus; Taps [faucets]; backflow preventors; Fittings; Heating installations; Air conditioning installations; Apparatus for lighting, steam generating, cooking; Apparatus for refrigerating, drying, ventilating; Panel radiators, finned radiators; Kitchen ranges; Kitchen extractor hoods; Ovens, other than for experimental purposes; Refrigerators; Chest freezers; Water supply systems for household purposes; Sealing and regulating elements for heating and water systems; Apparatuses for heating; Heating equipment products, in particular burners, Industrial burners, Gas fittings and regulators for burners; Expansion tanks for heating installations; Heating apparatus and Boilers; Regulators for heating systems and generators; regulating accessories for water and gas installations and pipes; Control consoles for boilers and burners and combustion regulating systems refer to services around the purchasing of products for third parties, including any negotiations that this involves on price and availability, preparations of contracts for the sale and purchase of goods and agreements or communications carried out between buyers and sellers. They are included in the opponent’s broader category of procurement services for others [purchasing goods and services for other businesses] of earlier mark 2 as procurement services for others [purchasing goods and services for other businesses] and commercial intermediation services of goods are synonyms. Therefore, they are identical.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be identical or similar to various degrees are directed at the public at large as well as at business customers with specific professional knowledge or expertise.

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.

3. The signs

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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The marks are not meaningful in certain territories, for example for a substantial part of the Italian speaking public. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Italian-speaking part of the public.

The signs have no element that could be considered clearly more dominant than other elements.

Visually and aurally, the signs coincide in ‘*-K-L-U-M’. However, they differ in the first letter ‘S’ of the earlier mark and in the slightly stylisation of the marks which is decorative and has a less impact.

Therefore, the signs are highly similar.

Conceptually, neither of the signs has a meaning for the public under analysis in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Distinctiveness of the earlier marks

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

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

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

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar to various degrees and partly dissimilar.

The public’s degree of attentiveness may vary from average to high.

The distinctiveness of the earlier mark is normal.

The marks are visually and aurally highly similar.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

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

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Italian-speaking part of the public and therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested sign must be rejected for the goods and services found to be identical or similar to various degrees to those of the earlier trade mark. As regards the contested goods that have been found similar to a low degree to the opponent’s services, the principle of interdependence enunciated above applies. Therefore the similarity between the signs is sufficient to counteract the low similarity between some of the goods and services, and a likelihood of confusion exists also in relation to them.

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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on Article 8(1)(a) EUTMR and directed against these remaining goods and services because the signs and the goods/services are obviously not identical.

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

Francesca CANGERI

Francesca CANGERI

Riccardo RAPONI

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.