OPPOSITION No B 3 064 658

Alef Education Consultancy L.L.C, Krypto Labs, Unit F1, F2, G1 - G6, Masdar City, Abu Dhabi, United Arab Emirates (opponent), represented by Adamsonjones, BioCity Nottingham Pennyfoot Street, NG1 1GF Nottingham, United Kingdom (professional representative)

a g a i n s t

Alef One, 78 Avenue Marceau, 75008 Paris, France (applicant), represented by Legabrand, 41, rue Papety, 13007 Marseille, France (professional representative).

On 21/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 064 658 is partially upheld, namely for the following contested goods and services:

Class 9: Electronic publications (downloadable); data processing and computer apparatus; games software; video telephones; computer software; software for downloading images, sounds and data, software for downloading electronic messages, with or without attached files; software for providing access to computer or data transmission networks, in particular to a world-wide communications network (such as the internet) or private or restricted access networks (such as an intranet); terminals for telecommunications; multimedia terminals; computer database servers (software); computers; recorded computer programs (listed twice); data processing apparatus; software for interactive television.

Class 35: All the services in this class, except online retail services for downloadable and pre-recorded music and movies.

Class 38: All the services in this class.

Class 41: Education, providing of training, arranging and conducting of colloquiums, conferences and congresses.

Class 42: All the services in this class.

2. European Union trade mark application No 17 874 406 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 17 874 406 for the word mark ‘ALEF ONE’. The opposition is based on European Union trade mark registration No 16 874 034 for the figurative mark . 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.

1. The goods and services

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

Class 35: Advertising; marketing; marketing research; sales promotion for others; business management assistance; business inquiries; business management and organization consultancy; professional business consultancy; business research; computerized file management.

Class 41: Educational services; organising and conducting courses, seminars, workshops, symposiums, conferences, exhibitions and classes in the fields of business and business operations, and distributing and publishing course materials in connection therewith; developing educational materials in the fields of business and business operations; all of these services being intended for use in the fields of renewable energy, power transmission and distribution, power conversion, transport, naval, contracting and a variety of other industries.

Class 42: Evaluations, estimates and scientific and technological researches undertaken by engineers; design and development of computer hardware and software; research and development of new products for third parties; technical project study; architecture; design of interior decor; developing (designing); software installation; software management; software updates or renting software; computer programming; computer consulting; data and computer program conversion other than physical conversion; data or document conversion from a physical support to a electronic support; vehicle roadworthiness testing; graphic designers services; designs (industrial designs); authenticating art work; industrial research services in the field of renewable energy; ecology and new technologies applied to vehicles; vehicles pollution control services; vehicles quality control services; consulting services on renewable energy.

Following the partial refusal of the contested mark in case B 3 066 603 of 20/11/2019, the contested goods and services are the following:

Class 9: Television apparatus; radios; cameras; audio and video cassettes; videotapes; recording discs, compact discs (audio and video), magnetic discs, optical discs, laser discs; floppy discs; terminals for telecommunications; facsimile machines, portable or mobile facsimile machines; video telephones; multimedia terminals; video game cartridges; games software; telephone cards; smart cards, cards with microprocessors; magnetic cards; identity cards, magnetic; computer software; software for downloading images, sounds and data, software for downloading electronic messages, with or without attached files; radio telephones including subscriptions, ready for use; software for providing access to computer or data transmission networks, in particular to a world-wide communications network (such as the internet) or private or restricted access networks (such as an intranet); computer database servers (software); screens, namely telephone screens, computer screens, television screens; electronic publications (downloadable); electronic images (downloadable); electronic cards providing access to telecommunications networks; compact discs [read-only memory]; DVD-rooms; data processing and computer apparatus; video cassette recorder; DVD players; telephone cards, bank cards, credit card; cinematographic apparatus; cinematographic films; animated cartoons; cleaning apparatus for sound recording discs; radio transmitters (telecommunication); sound recording strips; sound recording apparatus; sound recording carriers; tape recorders; modems; computers; recorded computer programs; radiotelephony sets; recorded computer programs; telephone answering machines; data processing apparatus; apparatus enabling the downloading, reading and recording of digital files (sound and audiovisual); sunglasses; spectacles (optics); television recorders; software for interactive television.

Class 35: Business management and organization consultancy; providing of commercial services, in particular in connection with the audiovisual, digital and new technologies sectors; advertising agencies; production of advertising films; dissemination of advertising matter; direct mail advertising, television advertising, rental of adverting space; modelling for advertising or sales promotion, publicity columns preparation; publicity material rental; publication of publicity texts; radio advertising; television advertising; radio advertising, telephone answering and messaging, in particular for subscribers who are absent and/or unavailable; transcription, arranging subscriptions to telecommunications networks; arranging subscriptions to centres providing access to computer networks or networks for the transmission of data, sound, images or moving images, in particular via wireless networks, in particular short or long-distance, telephone answering for unavailable subscribers, arranging subscriptions to computer databases, placement of artists (business management of performing artists); transcription, arranging subscriptions to telecommunications networks; arranging subscriptions to centres providing access to computer networks or networks for the transmission of data, sound, images or moving images, in particular via wireless networks, in particular short or long-distance, telephone answering for unavailable subscribers, arranging subscriptions to computer databases, placement of artists (business management of performing artists); online retail services for downloadable and pre-recorded music and movies; production of teleshopping programmes; consultancy regarding advertising communications strategy; public relations services; business auditing; business brokerage (concierge services): sales promotion; business appraisal.

Class 38: Telecommunications; television broadcasting; radio broadcasting; television broadcasting; sending of telegrams; information about telecommunications; rental of telecommunication equipment; rental of message sending apparatus; message sending; computer-aided transmission of messages and images; satellite transmission; transmission and dissemination of data, sound, images and moving images; computer-aided transmission and dissemination of data, images and animated images, in particular in the context of telephone conferences, audioconferences and videoconferences; transmission of information accessible via computerised or data transmission databases and computer database servers; radio broadcasting; radio broadcasting; communications by cellular phones; information about telecommunication; telephone services; providing access to the internet; telecommunications via national or worldwide networks (internet); providing access to logos and ring tones for fixed and mobile telephones; transmission of photographs, animated and/or still images, music and sound by telecommunications networks of all kinds (internet, mobile phone networks); transmission of photographs, images, music and sound via a local wireless network, in particular short-range local wireless networks; transmission of photographs, images, music and sounds via a radiocommunications network; broadcasting of television channels, whatever the reception media and technical broadcasting method; providing of access to a website enabling the bringing together of individuals, providing of access to websites for networking and dating; broadcasting of audiovisual programmes via computer terminals; broadcasting of audiovisual programmes on global communications networks (such as the internet) or private or restricted access networks (such as an intranet), or by cable, satellite or wave; rental of access time to databases and to data transmission and computer database servers, to wireless networks (short range or long range), to telephone, radiotelephone or data transmission networks or to global communications networks (such as the internet) or private or restricted access networks (such as an intranet), to global communications servers (such as the internet) or to private or restricted access communications servers (such as an intranet); providing of access to a social networking website for entertainment purposes; video-on-demand transmission services; television broadcasting via video-on-demand transmission services; providing telecommunications access to television programmes via video-on-demand transmission services; broadcasting movies; audio-visual communications (audio-visual transmission of information), broadcasting of television channels, in particular via internet, extranet and intranet networks; transmission of information contained in a voice server; news agency; operation of television cable networks; mobile radio, communication through computer terminals; radio communications; communications by telephone; electronic mail, in particular via telephone networks; audio-visual communications (audio-visual transmission of information), broadcasting of television channels, in particular via internet, extranet and intranet networks; transmission of information contained in a voice server; news agency; cable television broadcasting; mobile radio, communication through computer terminals; radio communications; communications by telephone; telecommunications; television broadcasting; radio broadcasting; television broadcasting; sending of telegrams; information about telecommunications; rental of telecommunication equipment; rental of message sending apparatus; message sending; computer-aided transmission of messages and images; satellite transmission; transmission and dissemination of data, sound, images and moving images; computer-aided transmission and dissemination of data, images and animated images, in particular in the context of telephone conferences, audioconferences and videoconferences; transmission of information accessible via computerised or data transmission databases and computer database servers; radio broadcasting; radio broadcasting; communications by cellular phones; information about telecommunication; telephone services; providing access to the internet; telecommunications via national or worldwide networks (internet); providing access to logos and ring tones for fixed and mobile telephones; transmission of photographs, animated and/or still images, music and sound by telecommunications networks of all kinds (internet, mobile phone networks); transmission of photographs, images, music and sound via a local wireless network, in particular short-range local wireless networks; transmission of photographs, images, music and sounds via a radiocommunications network; broadcasting of television channels, whatever the reception media and technical broadcasting method; providing of access to a website enabling the bringing together of individuals, providing of access to websites for networking and dating; broadcasting of audiovisual programmes via computer terminals; broadcasting of audiovisual programmes on global communications networks (such as the internet) or private or restricted access networks (such as an intranet), or by cable, satellite or wave; rental of access time to databases and to data transmission and computer database servers, to wireless networks (short range or long range), to telephone, radiotelephone or data transmission networks or to global communications networks (such as the internet) or private or restricted access networks (such as an intranet), to global communications servers (such as the internet) or to private or restricted access communications servers (such as an intranet); providing of access to a social networking website for entertainment purposes.

Class 41: Production of films, radio and television programmes; education, providing of training, entertainment; television and radio entertainment, in particular via national and international telecommunications networks (internet); production of shows and films; rental of motion pictures and of sound recordings; organisation of competitions relating to education or entertainment and games of all kinds, via radio, television and on the internet; arranging and conducting of colloquiums, conferences and congresses; record production; modelling agencies for artists; montage of TV and radio programmes; games provided online on a computer network; micropublishing; videotape editing; production of television programmes, videotaping; production of audiovisual programmes, shows, films, other than advertising films, and television and radio programmes; entertainment and games on mobile and fixed communication networks; cinema presentations; providing films, not downloadable, via video-on-demand transmission services; entertainment services featuring fictional characters; rental of lighting apparatus for theatrical sets or television studios; leasing of television cameras; production of television series; production of fictional works for television and cinema; production of entertainment in the form of television sitcoms; providing of artistic services, in particular in connection with the audiovisual, digital and new technologies sector.

Class 42: Providing of technical services, in particular in connection with the audiovisual, digital and new technologies sector.

Class 45: Licensing of audiovisual production rights, licensing in relation to video, television and radio formats, productions, and programmes, licensing of radio and television programmes; management of intellectual property rights (IPRs), licensing of intellectual property, intellectual property consultancy and monitoring; copyright management, legal services relating to patent exploitation; online social networking, namely social networking, facilitation of meetings (dating services), on-line social networking services.

The degree of similarity between the goods and services is a matter of law, which must be assessed ex officio by the Office even if the parties do not comment on it. However, the Office’s ex officio examination is restricted to well-known facts, that is to say, ‘facts which are likely to be known by anyone or which may be learned from generally accessible sources’, which excludes facts of a highly technical nature (03/07/2013, T‑106/12, Alpharen, EU:T:2013:340, § 51). Consequently, what does not follow from the evidence/arguments submitted by the parties or is not commonly known should not be speculated on or extensively investigated ex officio (09/02/2011, T‑222/09, Alpharen, EU:T:2011:36, § 31-32). This follows from Article 95(1) EUTMR, according to which, in opposition proceedings, the Office is restricted in its examination to the facts, evidence and arguments provided by the parties and the relief sought.

Therefore, the Opposition Division will proceed with the analysis of the similarity of the goods taking into account well-known facts, the parties’ arguments (if submitted) and the Office’s practice as reflected in the Guidelines for Examination in the Office.

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’, 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’, is used 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.

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

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

Contested goods in Class 9

The contested electronic publications (downloadable) are related to the opponent’s educational services; all of these services being intended for use in the fields of renewable energy, power transmission and distribution, power conversion, transport, naval, contracting and a variety of other industries in Class 41 as they can coincide in producers and providers, relevant public and distribution channels (e.g. companies providing educational content in the field of energy). Furthermore, they are complementary. Therefore, they are at least similar to a low degree.

The contested data processing and computer apparatus; games software; video telephones; computer software; software for downloading images, sounds and data, software for downloading electronic messages, with or without attached files; software for providing access to computer or data transmission networks, in particular to a world-wide communications network (such as the internet) or private or restricted access networks (such as an intranet); terminals for telecommunications; multimedia terminals; computer database servers (software); computers; recorded computer programs (listed twice); data processing apparatus; software for interactive television, which can be classified into, or overlap with, the categories/products of data processing equipment and computers, smartphones and software goods, are closely linked to those opponent’s services in Class 42 that are related to IT services, such as design and development of computer hardware and software. This is because manufacturers of these products (e.g. computers, smartphones and software) will also commonly provide computer- and/or software-related services (e.g. as a means of keeping the system updated). Although the nature of the goods and services is not the same, both the relevant public and the usual producers/providers of the goods and services coincide. Furthermore, these goods and services are complementary. Therefore, they are considered at least similar to a low degree.

However, the remaining contested goods, namely cameras; audio and video cassettes; recording discs, compact discs (audio and video), magnetic discs, optical discs, laser discs; video game cartridges; screens, namely telephone screens, computer screens, television screens; television apparatus; video cassette recorder; DVD-rooms; DVD players; cinematographic apparatus; cleaning apparatus for sound recording discs; sound recording apparatus; apparatus enabling the downloading, reading and recording of digital files (sound and audiovisual); tape recorders; television recorders; radios; radiotelephony sets; radio transmitters (telecommunication); radio telephones including subscriptions, ready for use; videotapes; floppy discs; identity cards, magnetic; compact discs [read-only memory]; sound recording strips; sound recording carriers; cinematographic films; animated cartoons; electronic images (downloadable); sunglasses; spectacles (optics); facsimile machines, portable or mobile facsimile machines; telephone answering machines; modems; telephone cards; smart cards, cards with microprocessors; magnetic cards; electronic cards providing access to telecommunications networks; telephone cards, bank cards, credit card, which include a diversified variety of products (e.g. audio-visual devices, smart/magnetic cards, media content, data storage devices, optical devices and fax, radio and telephonic machines), do not have sufficient relevant points of contact with the opponent’s services in Class 42 (which are essentially IT services and science/technology, design and testing services) in terms of the ‘Canon’ criteria for finding similarity; still less with those in Classes 35 (which are essentially advertising and marketing services, and business assistance, management and analysis services) and 41 (which are essentially educational services). These goods and services are obviously different in natures and purposes. They are neither in competition nor complementary in the sense that one is indispensable for the other. Moreover, they usually have different distribution channels and origin. The fact that, for instance, some of the contested goods are electronic/technological, may be computerised, use software and/or be developed/designed by research/technological companies (activities covered by the opponent’s services in Class 42) is insufficient to lead to the conclusion that they are complementary or have the same usual origin. The producers of these goods do not usually provide services such as research and development to third parties or software-related services to the final consumers. In today’s high-tech society, almost all electronic or digital apparatus functions are using integrated software in combination with hardware. However, this does not lead to the automatic conclusion that software/hardware or a fortiori, as in the present case, IT services, are similar to all goods that, for instance, use software to function successfully or can be used in combination with computers. Therefore, these goods are dissimilar to all the opponent’s services.

Contested services in Class 35

Business management and organization consultancy are identically contained in both lists of services.

The contested advertising agencies; production of advertising films; dissemination of advertising matter; publicity material rental; publication of publicity texts; radio advertising (listed twice); television advertising (listed twice); production of teleshopping programmes; consultancy regarding advertising communications strategy; direct mail advertising, rental of adverting space; modelling for advertising or sales promotion, publicity columns preparation; public relations services; sales promotion are identical to the opponent’s advertising, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested business appraisal is included in the broad category of, or overlap with, the opponent’s business management. Therefore, they are identical.

The contested business auditing; business brokerage (concierge services), which are services aimed to helps other companies to improve their accounting process and buy and sell businesses, respectively, are related to the opponent’s business management as they can coincide in purpose, have the same relevant public and usually have the same providers. Therefore, they are similar.

The contested providing of commercial services, in particular in connection with the audiovisual, digital and new technologies sectors; telephone answering and messaging, in particular for subscribers who are absent and/or unavailable; transcription, arranging subscriptions to telecommunications networks; arranging subscriptions to centres providing access to computer networks or networks for the transmission of data, sound, images or moving images, in particular via wireless networks, in particular short or long-distance, telephone answering for unavailable subscribers, arranging subscriptions to computer databases, placement of artists (business management of performing artists), some listed twice, are, in broad terms, commercial trading and consumer information services, which are related to the opponent’s advertising inasmuch as they can coincide in purpose and have the same relevant public. Therefore, they are at least similar to a low degree.

However, the remaining online retail services for downloadable and pre-recorded music and movies have different natures, purposes and methods of use to the opponent’s services in Classes 35, 41 and 42 (which are described in general terms above), and which, broadly speaking, are intended to provide others with assistance in their business management and in the sale of their goods and services by promoting their launch and/or sale (Class 35), educate in the field of renewable energies (Class 41) and, finally, provide IT solutions and develop or contribute to the generation and dissemination of scientific and technical knowledge as well as the carrying out of tests and quality controls (Class 42). Moreover, they have different usual providers and relevant publics and are not complementary or in competition. Consequently, the contested services are dissimilar to all of the opponent’s services.

Contested services in Class 38

The contested services are all types of telecommunications services through various means, such as internet, television and radio. The telecommunication and computer industries have been converging and it is difficult to draw a clear line between them. The contested services are interrelated with the creation and maintenance of specific computer programs, without which many current telecommunications devices are useless. Computer and software related services play an essential role in the provision of present-day telecommunication services. Software programs contribute to the functioning of the services, making it possible for telecommunication operators to render their services and for users to access them. Therefore, the contested telecommunications services and the opponent’s IT services in Class 42, such as design and development of computer hardware and software, are complementary because the implementation of software is a necessary part of the telecommunication services in question, and their distribution channels and the intended public may be the same (27/09/2016, T‑450/15, luvoworld / luvo et al., EU:T:2016:543, § 40-49). Consequently, they are at least similar to a low degree.

Contested services in Class 41

The contested education, providing of training, arranging and conducting of colloquiums, conferences and congresses overlap with the opponent’s educational services; all of these services being intended for use in the fields of renewable energy, power transmission and distribution, power conversion, transport, naval, contracting and a variety of other industries. Therefore, they are identical.

However, the remaining services, production of films, radio and television programmes; entertainment; television and radio entertainment, in particular via national and international telecommunications networks (internet); production of shows and films; rental of motion pictures and of sound recordings; organisation of competitions relating to education or entertainment and games of all kinds, via radio, television and on the internet; record production; modelling agencies for artists; montage of TV and radio programmes; games provided online on a computer network; micropublishing; videotape editing; production of television programmes, videotaping; production of audiovisual programmes, shows, films, other than advertising films, and television and radio programmes; entertainment and games on mobile and fixed communication networks; cinema presentations; providing films, not downloadable, via video-on-demand transmission services; entertainment services featuring fictional characters; rental of lighting apparatus for theatrical sets or television studios; leasing of television cameras; production of television series; production of fictional works for television and cinema; production of entertainment in the form of television sitcoms; providing of artistic services, in particular in connection with the audiovisual, digital and new technologies sector, are not related to any of the opponent’s services in Class 41. All the contested services refer to entertainment services and audio, video and multimedia productions while the opponent’s goods in Class 41 are very specific educational services, expressly limited to the fields of renewable energy, power transmission and distribution, power conversion, transport, naval, contracting and a variety of other industries. These services have a different nature and purpose and will usually be provided by different organisations/companies through distinct distribution channels. Furthermore, they are neither complementary nor in competition. The contested services have nothing in common with the rest of the opponent’s services in Classes 35 and 42, which, broadly speaking, are intended to provide others with assistance in their business management and in the sale of their goods and services by promoting their launch and/or sale (Class 35) and provide IT solutions and develop or contribute to the generation and dissemination of scientific and technical knowledge as well as the carrying out of tests and quality controls. Consequently, these services are dissimilar to all the opponent’s services.

Contested services in Class 42

The contested providing of technical services, in particular in connection with the audiovisual, digital and new technologies sector include, as a broader category, or overlap with, the opponent’s technical project study. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

Contested services in Class 45

The contested management of intellectual property rights (IPRSs), licensing of intellectual property, intellectual property consultancy and monitoring; licensing of audiovisual production rights, licensing in relation to video, television and radio formats, productions, and programmes, licensing of radio and television programmes; copyright management, legal services relating to patent exploitation are licensing and legal services in the field of intellectual property, which are normally rendered by lawyers specialized in IP law in the legal field. The contested online social networking, namely social networking, facilitation of meetings (dating services), on-line social networking services are providing facilities so users can meet to form relationships, share information and/or seek potential business or social partners. These services have nothing in common with the opponent’s services in Classes 35, 41 and 42, described above, that would justify similarity. The mere fact that the licensing may concern software or technology, which is also a subject of some of the opponent’s services in Class 42, is insufficient for finding similarity between them. The contested services and the abovementioned opponent’s services have a different nature and different purposes. They are neither complementary nor in competition. Moreover, they are normally offered through different distribution channels, target different publics and originate from different undertakings. Therefore, they are dissimilar.

2. Relevant public — degree of attention

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

The goods and services found to be identical or similar to varying degrees target partly the business customers with specific professional knowledge or expertise (e.g. advertising and business management services in Class 35) and partly both the professionals and the public at large (e.g. data processing equipment and computers in Class 9 and telecommunications in Class 38).

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

	ALEF ONE
Earlier trade mark	Contested sign

The relevant territory is the European Union.

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

The verbal element ‘Alef’, included in both signs, will be perceived as a meaningless fanciful word by the majority of the public even if, as the parties indicate, it may refer to the transliteration of the first letters of the Semitic and Arabic alphabets (‘א’ and ‘ا’, respectively). The consumers in the relevant territory are not familiar with these alphabets/languages. Therefore, it has an average degree of distinctiveness. If the term were associated with one of the mentioned meanings by a part of the relevant public (which must be considered fully distinctive, as it has no meaning in relation to the relevant goods and services), the concept would be the same in both signs, which would go, a fortiori, against the interest of the applicant.

The word ‘ONE’ of the contested sign will be perceived throughout the European Union as ‘single; only; the numeral 1’ (information extracted from Collins English Dictionary on 12/05/2020 at https://www.collinsdictionary.com/dictionary/english/one_1) since it is a basic English word. This element has little distinguishing significance since it may either be seen as a number referring, for instance, to the specific product line or version (see further explanations in the global assessment below) or as an allusion to the quality of the relevant goods. It is quite common to use an expression such as ‘number 1’ to refer to something of a high quality in a fashionable way and, therefore, it may convey certain positive connotations. Moreover, this element is placed at the end of the contested sign. Consequently, its impact within the overall impression will be less. 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.

The figurative element of the earlier mark may be seen as a stylised power symbol, as the applicant stated, or as an abstract, meaningless shape. It seems far-fetched that the relevant public could associate the colour combination of this element with the flag of the United Arab Emirates ( ), since the arrangement is quite different to that of the layout of the stripes on the flag, and the average consumers may not be sufficiently familiar with it to make that association. The fact that the opponent has its domicile in Abu Dhabi is not relevant, as the consumers will not necessarily be assisted by this information when encountering the sign. If the figurative element is perceived as a power symbol, it may be allusive of the energetic character of some of the opponent’s services, which are expressly limited to fields of renewable energy, power transmission and distribution …, and have, therefore, a limited distinctive character. If it is perceived as a meaningless symbol, its distinctive character is average. 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). Therefore, regardless of the concrete distinctive character of the figurative element, and notwithstanding the fact that neither of the two elements in the earlier mark can be considered dominant, the weight that the figurative element has in the overall impression produced by the contested sign is less than that of the verbal element. Moreover, as explained above in relation to the additional verbal element ‘ONE’ of the contested sign, this lower impact is reinforced by the fact that this element is placed in a secondary position.

The earlier mark’s verbal element is depicted in a very standard way in title-case letters and this scarce stylisation lacks distinctive character, as it is rather commonplace. The fact that the contested sign is registered in upper-case letters is irrelevant since the protection that results from the registration of a word mark concerns the word mentioned in the application for registration and not the specific graphic or stylistic elements accompanying that mark (07/10/2010, T‑244/09, Acsensa, EU:T:2010:430, § 28). Therefore, the font or letter case used by the contested sign could be identical to that used by the earlier mark.

Visually, the signs coincide in the distinctive verbal element ‘Alef’, which is placed at the initial part of the signs, having, therefore, a greater impact within the overall impression. The signs differ in the figurative element of the earlier mark, which may be distinctive to a greater or lesser extent (depending on the way that it is perceived) and in the second verbal element ‘ONE’ of the contested sign, which has little distinguishing significance for the reasons explained above.

Therefore, the signs are visually similar at least to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciations of the signs coincide in the sound of the distinctive verbal element ‘Alef’. They differ in the additional sound corresponding to the second word ‘ONE’ of the contested sign, which has a low degree of distinctiveness.

The applicant claimed that the verbal element ‘Alef’ will be pronounced in a different manner in each sign (as in Arabic or in English, respectively). However, there is no reasons to assume that under the perspective of the public assessed, which will generally perceive these words as fanciful, the consumers will pronounce this word differently merely by the presence or not of the additional (English) word ‘ONE’. This argument must be set aside.

Therefore, the signs are aurally highly similar.

Conceptually, neither of the signs has a meaning as a whole as the coinciding verbal element ‘Alef’ will be perceived as fanciful. However, due to the concepts conveyed by their additional elements (i.e. the power button device in the earlier mark, where perceived in this way, and the word ‘ONE’ in the contested sign), the signs are conceptually not similar. Nonetheless, this conceptual difference will have a limited impact due to the reduced impact of these elements.

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 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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The contested goods and services are partly identical, partly similar (to varying degrees) and partly dissimilar. They target the professional public and the public at large. The degree of attention may vary from average to high. The earlier mark has a normal degree of distinctiveness.

The signs are visually similar at least to an average degree, aurally highly similar and conceptually not similar. The contested sign entirely reproduces the only verbal element of the earlier mark (which has an average degree of distinctiveness) as its first word, to which consumers attach more importance. Therefore, the presence of the additional figurative element of the earlier mark and the word ‘ONE’, which have less distinctive character and impact than the coinciding element ‘Alef’, is clearly not sufficient to counterbalance the commonalities between the signs and exclude a likelihood of confusion.

Additionally, given the partial identity between the signs, it is likely that consumers will perceive the differing elements (i.e. the figurative element and the word ‘ONE’ as different versions of the marks, e.g. according to a given product line). It is common practice in the relevant market for manufacturers to make variations in their trade marks, for example by altering the typeface or colours or by adding verbal or figurative elements, to denote a new product. Therefore, the likelihood that the public may associate the signs with each other is very real.

Moreover, 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). The similarity between the signs is sufficient to outweigh the – at least – low degree of similarity between some of the goods and services.

Finally, 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).

The applicant refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions, as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T‑281/02, Mehr für Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

In the present case, the previous cases referred to by the applicant are not comparable and relevant to the present proceedings as the factors and/or degrees of distinctive character of the coinciding elements were different. The signs involved and the main reasons for concluding that there was no likelihood of confusion were the following:

1. v : the coinciding element ‘Q’ is a single letter and the stylisation of this letter, which in this case is determinant, is strikingly different.

2. v : a different layout, structure and figurative elements in addition to the conceptual differences arising from the word ‘VIVÓ’ (in contrast to ‘vivi vivo’) under the relevant Spanish-speaking consumers (because of the accent), particularly when perceived as a surname.

3. v ‘PRIMA MUSA’: under the relevant Polish-speaking consumers, the coinciding word ‘PRIMA’ is weak (as it alludes to ‘perfect, great’), and, the differing word ‘MUSA’ is meaningless and is the distinctive element of the contested sign.

On the contrary, the coinciding (meaningless) element ‘Alef’, placed at the initial part of the signs, is the most distinctive element while the additional elements will have less impact in the overall impression, as explained in detail above. Consequently, the outcome cannot be the same.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration.

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 services of the earlier trade mark.

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 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

Riccardo RAPONI

Birgit FILTENBORG

Michele M. BENEDETTI-ALOISI

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.