OPPOSITION No B 3 062 421

Naturgy Energy Group, S.A., Avda. San Luis, 77, 28033 Madrid, Spain (opponent), represented by Herrero & Asociados, Cedaceros 1, 28014 Madrid, Spain (professional representative)

a g a i n s t

Aspro Italy S.r.l., Via Galilei 32/36, 41015 Nonantola, Italy (applicant), represented by Brunacci & Partners S.R.L, Via Scaglia Est 19-31, 41126 Modena, Italy (professional representative).

On 04/08/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 062 421 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 879 312 . The opposition is based on European Union trade mark registrations No 9 202 615 , No 39 628 , and No 2 512 952 , and Spanish trade mark registrations No 2 925 504 , No 2 925 498 ‘GAS NATURAL FENOSA’ and No 3 530 999 . The opponent invoked Article 8(1)(b) and Article 8(5) EUTMR.

PROOF OF USE

In accordance with Article 47(2) and (3) EUTMR, if the applicant so requests, the opponent must furnish proof that, during the five-year period preceding the date of filing or, where applicable, the date of priority of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition will be rejected.

Proof of use of the earlier European Union trade mark registrations No 39 628 and No 2 512 952 , was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T‑296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

• The signs must be either identical or similar.

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

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

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

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

1. Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union.

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

In the present case, the contested trade mark was filed on 23/03/2018. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union prior to that date. The evidence must also show that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely

1. European Union trade mark registration No 9 202 615

Class 4: Gas fuel; electrical energy; fuel oil and industrial oil; combustible charcoal; petroleum and petroleum products.

Class 9: Photovoltaic cells; apparatus for recording, transmission or reproduction of sound or images; computer programs (software) and computers (hardware); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; signalling elements; buoys.

Class 11: Apparatus for the distribution of water and gas; sanitary installations; regulating and safety accessories for gas apparatus and pipes; gas scrubbing apparatus; household boilers and parts therefor, included in this class; gas lighters, lamps, scrubbers, burners and regulators; apparatus for air conditioning, steam generating, furnaces and boilers not included in other classes; heat accumulators; solar collectors for heating.

Class 37: Construction, installation, repair and maintenance of electricity plants, gas pipelines, gas and electricity distribution lines and networks; construction, installation, assembly, testing, commissioning of pipes and apparatus of all kinds for the production of natural gas and in particular for motor vehicles, industrial, liquid and gaseous fuels and derivatives thereof for the commercial and industrial supply thereof; construction, installation, assembly, testing, commissioning of electric installations of all kinds.

Class 38: Telecommunications services; providing access to internet platforms.

Class 39: Distribution, transport and storage of fuel, gas, electricity and water; transport by oil or gas pipeline.

Class 40: Energy production services; recycling of waste and trash; treatment and processing of waste by mechanical and chemical means and its classification; mechanical and chemical treatment and processing of all kinds of fluids; water treatment; manufacture of pipes and apparatus of all kinds for the production of natural gas, in particular for motor vehicles, industrial, liquid and gaseous fuels and derivatives thereof for the commercial and industrial supply thereof; manufacture of electric installations of all kinds.

Class 42: Engineering services; services provided by engineers dealing with appraisals, valuations, research and surveys in the technological field; technical project studies; research and development of new products; physicists, engineers, computer programmers.

2. European Union trade mark registration No 39 628

Class 4: Natural gas.

Class 6: Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware and, in particular, pipes and tubes of metal.

Class 7: Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.

Class 9: Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 16: Publications and printed matter of all kinds.

Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials and, in particular, flexible pipes, not of metal.

Class 35: Promotion of lighting, heating, cooking, refrigerating, drying and ventilating apparatus and instruments, which work with gas.

Class 37: Installation, repair and maintenance of gas and gas pipeline supply systems; installation, repair and maintenance of heating, air-conditioning, ventilating and refrigerating apparatus.

Class 39: Transport, storage and distribution of gas.

Class 42: Technical studies, projects, valuations, estimates and reports (not related to business management) concerning the use of gas.

3. European Union trade mark registration No 2 512 952

Class 4: Fuel compositions, in particular gas.

Class 9: Ducts (electricity), connections for electric lines, electric batteries; material for electricity mains; electrical ducting; electric transformers; electric loss indicators.

Class 11: Gas boilers and electric boilers, regulating and safety accessories for gas appliances and gas pipes, gas scrubbing apparatus, gas condensers, gas and electric radiators; gas generators, gas lamps; electric lighting apparatus, gas burners, gas cookers and electric cookers; ovens; stoves; wall heaters.

Class 16: Publications of all types; articles of stationery.

Class 35: Promotion and retailing of lighting, heating, cooking, refrigerating, drying and ventilating apparatus and instruments, operated by gas or electricity.

Class 37: Assembly, repair and maintenance of gas equipment, gas pipelines, boilers, gas and electric accessories and installations.

Class 38: Telecommunications services.

Class 39: Delivery services, transport and gas tanks and electricity.

Class 42: Engineering projects; research and development in the field of gas; project studies for the design of gas installations; energy optimization studies.

4. Spanish trade mark registration No 2 925 504 and

5. Spanish trade mark registration No 2 925 498 ‘GAS NATURAL FENOSA’

Class 4: Fuel gas.

Class 9: Computer programs and computer products stored on magnetic data carriers; magnetic data, sound and image carriers; apparatus for recording, transmission, reproduction or processing of sound, images or data; floppy disks; electric cables, transformers, material for electricity mains, capacitors, switches, connectors, electromagnets, resistors; electric, electronic and microelectronic apparatus, parts and components included in this class; electronic publications, downloadable.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 16: Publications; stationery.

Class 35: Information and consultancy services in relation to commercial retailing; advertising, marketing and promotions for businesses, in particular relating to products or services, by telephone, or by sending advertisements and promotional material to third parties by post or electronic mail; placing advertisements, including electronic sites accessed via computer networks; business management and organisation consultancy services; industrial management assistance; professional business consultancy, accounting consultancy; statistical information services; market studies; commercial management assistance in relation to franchising.

Class 37: Building construction services; repair services; installation services.

Class 38: Telecommunication services; providing access to internet platforms.

Class 39: Distribution, transport and storage of fuels, electricity; and oil pipeline transport services.

Class 40: Recycling of waste and rubbish; treatment and processing of waste by mechanical and chemical means and its classification; mechanical and chemical treatment and processing of all kinds of fluids; water treatment; production of power.

Class 42: Project engineering services; research and development services in the energy field; technical studies and projects for the design of power plants and the optimisation thereof.

6. Spanish trade mark registration No 3 530 999

Class 4: Gas, electricity, electrical energy, fuels.

Class 7: Power generating plants; power generating installations.

Class 9: Apparatus and devices to control energy consumption; downloadable computer applications; data transmission apparatus; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling gas and electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; data processing equipment, computers; software.

Class 11: Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; regulating and safety accessories for gas apparatus and pipes; feeding apparatus for heating boilers; gas cleaners and purifiers; boilers and gas lighters.

Class 35: Advertising; business administration; office functions; sales promotion for others; procuring of contracts for the purchase and sales of goods and services; commercial information and advice for consumers; provision of commercial information, also via the internet, the cable network or other forms of data transmission; provision of statistical information relating to business; tariff information and advisory services; commercial brokerage services; retailing and wholesaling of gas, electricity and any other sources of energy.

Class 36: Financial and monetary affairs.

Class 37: Repair and maintenance of gas and electricity distribution networks, as well as the distribution networks of any other source of electrical energy; installation, repair and maintenance of apparatus and devices to control energy consumption, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, regulating and safety accessories, feeding apparatus for heating boilers, gas cleaners and purifiers, boilers and gas lighters; provision of information in relation with the aforesaid activities.

Class 39: Distribution, transport and storage; distribution and supply of gas and electrical energy; provision of information in relation with the aforesaid activities.

Class 40: Energy production; rental of boilers; rental of electricity generating equipment; rental of heating and air-conditioning apparatus; rental of power generating equipment; rental of apparatus for conducting, switching, transforming, accumulating, regulating or controlling gas and electricity.

Class 42: Technical supervision and inspection; preparation of studies, reports, projects and assessments in the field of gas, electricity and any other sources of energy; calibration [measuring]; engineering services; rental of data processing equipment; energy auditing; advisory and consultancy services related to energy savings and consumption.

The opposition is directed against the following services

Class 37: Construction, installation, maintenance and repair of gas distribution and refuelling systems, installations, units and equipment; construction, installation, maintenance and repair of gas treatment, compression and supply systems, installations, units and equipment; construction, installation, maintenance and repair of gas drying, cooling and purification systems, installations, units and equipment; construction, installation, maintenance and repair of gas storage systems, installations, units and equipment; construction, installation, maintenance and repair of gas transport systems, installations, units and equipment; construction, installation, maintenance and repair of gas production systems, installations, units and equipment; construction, installation, maintenance and repair of liquid treatment, distribution, supply and pumping systems, installations, units and equipment; construction, installation, maintenance and repair of electronic installations and equipment, computer installations and equipment, switchboards; extraction of natural resources; extraction of gas; rental of tools, plant and equipment for construction and demolition; building, construction and demolition; vehicle repair, maintenance and refuelling; construction of structures for the transportation of natural gas; installation of pipework systems; beneath ground construction work relating to gas supply mains; dismantling of industrial equipment, installations and machines; leasing of air compressors; rental of gas or air compressors; rental of gas treatment, compression, supply, storage, transport, drying, cooling and purification systems, installations, units and equipment; gas drilling; providing of information in relation to the construction, installation, maintenance and repair of gas compression, supply, storage, transport, drying, cooling and purification systems, installations, units and equipment; cleaning of gas compression, supply, storage, transport, drying, cooling and purification systems, installations, units and equipment; providing of information in relation to the cleaning of gas compression, supply, storage, transport, drying, cooling and purification systems, installations, units and equipment; service stations (vehicle -) [refuelling and maintenance]; providing information relating to the repair or maintenance of gasoline station equipment; providing information relating to the repair or maintenance of vending machines; construction, installation, maintenance and repair of energy saving systems, installations, units and equipment; construction, installation, maintenance and repair of drying systems, installations, units and equipment; installation of environmental engineering systems; construction, installation, maintenance and repair of condensing systems, installations, units and equipment; construction, installation, maintenance and repair of energy production systems, installations, units and equipment.

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

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

• Annex 1: ranking of the most valuable trade marks in Spain in 2017, carried out by Interbrand, Brand Finance and Brandz (trade mark consultancy firms). According to this document, ‘gasNatural Fenosa’ occupied the 7th position in 2016, and the 10th in 2017, of the 100 most valuable top Spanish trade marks. According to the opponent’s translation, it further states that ‘gasNatural Fenosa’, together with two other energy companies’ trade marks, represent 14 % of the total trade mark value of the top 30 most valuable Spanish brands.

• Annex 2: internal excel spreadsheet that outlines the awards and commendations awarded for activities related to the opponent’s trade marks – such as YouTube videos and publicity spots – both nationally and internationally, between 2008 and 2017.

• Annex 3: extract in Spanish of studies carried out by Kantar Millward Brown (a company specialising in the awareness and strategic analysis of trade marks), which includes data on the public image and reputation of the opponent’s trade mark ‘gasNatural Fenosa’ in Spain, within the energy, gas and electricity sectors (in 2017).

• Annex 4: annual reports and Corporate Responsibility reports for the years 2011 to 2017, demonstrating high income figures and sales volume for ‘gasNatural Fenosa’ in relation to exploration, generation, distribution, commercialisation, and transportation of gas and electricity in Europe (mainly Spain and Italy) and internationally.

• Annex 5: photographs of various important events that the opponent has sponsored, such as ‘Madrid Fusion’, ‘Symphony Orchestra of Barcelona’ (season 2017-2018), ‘BCN film test’, ‘San Sebastian Film Festival’, ‘Report on Communication in Catalonia 2015-2016’.

• Annex 6: press summary ‘Cinergia IV presentation, and San Sebastian Festival Sponsorship Agreement’ from June 2017, which renews the sponsorship of this festival by ‘gasNatural Fenosa’ for the sixth consecutive year. According to the opponent’s translation, it states that the opponent has been considered the leading sponsor of the film industry in Spain since 2008 (according to the 2016 survey by Millward Brown).

Further articles from La Razon, Cinco Dias, Noticias de Guipuzkoa, El Diario Vasco digital newspapers and 20 Minutos magazine have also been submitted in relation to the sponsorship by ‘gasNatural Fenosa’ of the San Sebastian Festival.Further digital press, radio, television, and press agencies articles have also been submitted regarding this event.

• Annex 7: articles from the newspapers La Vanguardia and Expansion and the magazine IESE (a business school) – all dated in 2017 – in which references to ‘GasNatural Fenosa’ can be seen.

• Annex 8: extract, undated, from the ‘Leading Brands of Spain Forum’ website, which confirms the reputation of ‘gasNatural Fenosa’ as being a leading multinational gas and electricity company with close to 23 million customers worldwide – the largest integrated gas and electricity company in Spain.

Having examined the material listed above, the Opposition Division concludes that it is clear that earlier marks (1) and (4) as well as (5) ‘GAS NATURAL FENOSA’, both in its verbal and figurative representation – as the figurative components only embellish the verbal elements ‘gasNatural fenosa’ (17/03/2015, T‑611/11, Manea Spa, EU:T:2015:152) – have been subject to a long-standing and intensive use and enjoy recognition in the relevant gas and electricity sectors in Spain.

The evidence shows that these earlier trade marks have a significant presence in the relevant markets, and the figures provided show significant sales over many years. Moreover, the numbers of employees, supply points of gas and electricity, and customers worldwide, also demonstrate the reputation these trade marks have, and have maintained, over the years. These impressive figures are considered strong indications that the marks have earned recognition among the relevant public in the gas and electricity sectors, and that the opponent has undertaken steps to build up a brand image and enhanced trade mark awareness among the public.

The effects of these actions are reported in the first three pieces of evidence which show that ‘gasNatural Fenosa’ (both, in its verbal and figurative representations) is very well-known in Spain. From these documents, it is clear that the ‘gasNatural Fenosa’ trade marks enjoy a consolidated position among the leading gas and energy companies in Spain. Moreover, the evidence also shows that ‘gasNatural Fenosa’, together with two other energy companies’ trade marks, represent 14 % of the total trade mark value of the top 30 most valuable Spanish brands. Although Annex 2 is an internal document, the Opposition Division has no reason to doubt the veracity of the statements made by the opponent. The excel document shows the awards received by the opponent between 2013 and 2017 and reveal that it has maintained a quality presence in marketing media over the years. The awards mostly refer to an important presence in the sponsorship of films. In particular, an award was received in 2016 at the ‘Entertainment de Cannes Lions’, one of the most important festivals for publicity. Moreover, the documents also show awards received in the media of magazines, TV and YouTube, both in Spain and internationally. Also in relation to its presence in the media, the sponsorship of the San Sebastian Festival for the sixth consecutive year is an important piece of data to be taken into consideration (referred to and supported by the evidence submitted).The surveys in Annex 3 fulfil the requirements of independence and trustworthiness of source as they were carried out by an independent company. Therefore, the evidence submitted is a strong indication of the reputation of these earlier marks, particularly as it shows a high degree of trade mark awareness in the gas and electricity sectors. As can be seen from the evidence, the opponent, together with Endesa and Iberdrola, are the companies that come to the mind of the public when asked to name a company in the energy and gas sector. This shows awareness of the trade mark by the public.

Under these circumstances, taken as a whole, the evidence indicates that Spanish trade mark registrations, No 2 925 504 , and No 2 925 498 ‘GAS NATURAL FENOSA’, and European Union trade mark registration No 9 202 615 , enjoy an important level of recognition among the relevant public, which leads to the conclusion that the earlier trade marks enjoy a degree of reputation in Spain and, therefore, in the European Union. Whether the degree of recognition is sufficient for Article 8(5) EUTMR to be applicable depends on other factors relevant under Article 8(5) EUTMR, such as the degree of similarity between the signs, the inherent characteristics of the earlier trade mark, the type of goods/services in question, and the relevant consumers.

However, the evidence does not succeed in establishing that these trade marks have a reputation for all the goods and services on which the opposition is based, and for which reputation was claimed. The evidence refers mainly to distribution, transport and storage of fuel, gas, electricity; production of power and energy production services. There are insufficient references to the remaining goods and services for which the opponent has claimed reputation.

Consequently, the opponent has demonstrated that its Spanish trade mark registrations No 2 925 504 , and No 2 925 498 ‘GAS NATURAL FENOSA’ enjoyed a reputation in Spain on the date of filing of the EUTM application, in relation to distribution, transport and storage of fuels, electricity in Class 39 and to production of power in Class 40. The opponent also demonstrated that its European Union trade mark registration No 9 202 615 , enjoyed a reputation in the European Union for distribution, transport and storage of fuel, gas, electricity in Class 39 and energy production services in Class 40.

The evidence does not succeed in establishing that the remaining earlier marks – European Union trade mark registrations No 39 628 and No 2 512 952 , and Spanish trade mark registration No 3 530 999 – have also acquired a reputation in the relevant territory with regard to the goods and services for which the opponent claimed reputation.

As seen above, it is a requirement for the opposition to be successful under Article 8(5) EUTMR that the earlier trade mark has a reputation. Since it has not been established that earlier marks (2), (3) and (6) have a reputation, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled, and the opposition must be rejected insofar as it is based on these three earlier marks.

The examination of the opposition will continue on the grounds of Article 8(5) EUTMR with regard only to earlier Spanish trade mark registrations No 2 925 504 and No 2 925 498 ‘GAS NATURAL FENOSA’ and European Union trade mark registration No 9 202 615 .

2. The signs

(1) and (4) GAS NATURAL FENOSA (5)
Earlier trade mark	Contested sign

The relevant territories are Spain and 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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The contested sign is a figurative mark consisting of a large lower-case letter ‘a’ in a stylised white typeface against a black rectangular background, occupying the greater part of the mark. Below this, are the words ‘GAS’, and ‘Solution’ in black, arranged over two lines. All these elements are set against a white background and inside a black border.

Earlier marks (1) and (4) contain the verbal element ‘gasNatural’. Beneath this, starting under the letter ‘u’, is the verbal element ‘fenosa’. Both elements are depicted in bold, dark blue letters, in a fairly standard typeface. Following the word ‘Natural’, there is a figurative element depicting a yellow, orange, red and black butterfly.

Earlier mark (5) is the word mark ‘GAS NATURAL FENOSA’.

When perceiving a verbal sign, the relevant public will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). It follows that consumers in the relevant territories will perceive the verbal elements of the earlier signs (1) and (4) as the combination of two components, namely ‘gas’ and ‘Natural’, because the first letter of the word ‘Natural’ is in upper case and clearly divides the verbal element into two words. Moreover, these words will be recognised throughout the relevant territories for the reasons set out below.

The common element ‘GAS’ of the marks will be understood by the relevant public as ‘any substance that is neither liquid nor solid. Gas is the fuel which is used to drive motor vehicles’ (information extracted from Collins Dictionary on 15/05/2020 at https://www.collinsdictionary.com/dictionary/english/gas).

The word ‘Natural’ in the earlier marks will also be understood by the relevant public as ‘things [that] exist or occur in nature and are not made or caused by people’ (information extracted from Collins Dictionary on 15/05/2020 at https://www.collinsdictionary.com/dictionary/english/natural).

Moreover, the word ‘Solution’ of the contested mark will be understood by the relevant public as ‘a way of dealing with a problem so that the difficulty is removed’ (information extracted from Collins Dictionary on 15/05/2020 at https://www.collinsdictionary.com/dictionary/english/solution).

All these elements will be understood by the average consumers of the relevant services in Spain and the European Union, either because they are very common and widespread English words, or because they exist as such, or in very similar forms, in the relevant languages. Moreover, basic English terms such as these are widely used and familiar to a significant portion of the consumers due to the fact that English is taught/studied on a wide scale and its basic terms are easily retained even by those consumers who are not very familiar with the language.

The element ‘gasNatural/GAS NATURAL’ of the earlier marks may be perceived as referring to ‘gas or gaseous fuel of natural origin’. Moreover, the verbal element of the contested mark ‘GAS Solution’ may be perceived as referring to ‘a way of obtaining gas or creating gaseous fuel’.

Bearing in mind that the relevant services are, or may be, related to the gas and electricity sectors, it is considered that these elements, alone or combined, are non-distinctive in relation to the relevant services.

The word ‘FENOSA’ is meaningless for the relevant public and, therefore, distinctive.

The figurative element of earlier marks (1) and (4) has no connection with the relevant services. Therefore, it is also distinctive.

Finally, the letter ‘a’ of the contested mark, refers to the letter it represents, and is distinctive as it too has no relation with the contested services.

Earlier marks (1) and (4) have no element that could be considered more dominant (eye-catching) than other elements.

The element ‘a’ in the contested sign is the dominant element as it is the most eye-catching due to its comparatively large size and position at the top of the mark.

Visually, the sole similarity between the signs under comparison is the coincidence of the three-letter word ‘GAS’. However, as mentioned above, this is non-distinctive and, hence, the coincidence in this element has a very limited impact – if any – on the relevant public. Moreover, this element is placed in different positions in the marks, being in a secondary position in the contested sign. The distinctive word ‘fenosa’ of the earlier marks and the distinctive and dominant element ‘a’ of the contested mark, are clearly very different, and the additional words ‘Natural’ and ‘Solution’, despite being non-distinctive, introduce further visual differences between the marks. They will not go unnoticed by the relevant consumers when they perceive the marks visually. It is of particular importance that the distinctive and differing element of the contested sign is its first element, because it will be the first element to catch the consumers attention. Moreover, the depiction of a butterfly in the earlier marks also adds an important difference between the signs, as do the black rectangular background, white background and black border of the contested mark.

Furthermore, the signs have different overall structures, since the contested mark consists of verbal elements placed on three levels, whereas earlier marks (1) and (4) contain both figurative and verbal elements, the latter being arranged over two lines. Earlier mark (5) is a word mark.

Consequently, the signs are not visually similar.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides only in the non-distinctive element ‘GAS’, present identically in the signs, although placed differently. The pronunciation differs in the sound of the letter ‘a’ of the contested mark and of the word ‘fenosa’ of the earlier marks. It also differs in the pronunciation of the non-distinctive words ‘Natural’ and ‘Solution’ respectively.

Therefore, since the signs coincide aurally only in a word that is non-distinctive, and clearly differ in the pronunciation of their distinctive elements, they are not aurally similar.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Although the signs will be associated with the meaning of the coinciding word ‘GAS’, this is not sufficient to establish any conceptual similarity, as this component is non-distinctive and cannot indicate the commercial origin of the marks. As to the remaining concepts, the word ‘Natural’ of the earlier marks is also non-distinctive, as is the contested sign’s word ‘Solution’. Therefore, the conceptual comparison is confined to the earlier mark’s word ‘fenosa’, the depiction of a butterfly in earlier marks (1) and (4), and the contested sign’s letter ‘a’, all of which are distinctive. Consequently, taking into account these findings, the signs are not conceptually similar, since they will be associated with different concepts.

As the signs coincide only in a non-distinctive element, it is concluded that they are not similar conceptually.

As seen above, similarity between the signs is a requirement for the opposition to be successful under Article 8(5) EUTMR. Since the signs are clearly dissimilar, one of the necessary conditions contained in Article 8(5) EUTMR is not fulfilled. Therefore, the opposition must be rejected and there is no need to examine the other conditions laid down by Article 8(5) EUTMR (24/03/2011, C‑552/09 P, TiMiKinderjoghurt, EU:C:2011:177, § 66).

As the opposition must be rejected as far as it is based on Article 8(5) EUTMR, the Opposition Division will now examine the opposition on the ground of 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 2 512 952 .

1. The goods and services

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

Class 4: Fuel compositions, in particular gas.

Class 9: Ducts (electricity), connections for electric lines, electric batteries; material for electricity mains; electrical ducting; electric transformers; electric loss indicators.

Class 11: Gas boilers and electric boilers, regulating and safety accessories for gas appliances and gas pipes, gas scrubbing apparatus, gas condensers, gas and electric radiators; gas generators, gas lamps; electric lighting apparatus, gas burners, gas cookers and electric cookers; ovens; stoves; wall heaters.

Class 16: Publications of all types; articles of stationery.

Class 35: Promotion and retailing of lighting, heating, cooking, refrigerating, drying and ventilating apparatus and instruments, operated by gas or electricity.

Class 37: Assembly, repair and maintenance of gas equipment, gas pipelines, boilers, gas and electric accessories and installations.

Class 38: Telecommunications services.

Class 39: Delivery services, transport and gas tanks and electricity.

Class 42: Engineering projects; research and development in the field of gas; project studies for the design of gas installations; energy optimization studies.

The contested services are the following:

Class 37: Construction, installation, maintenance and repair of gas distribution and refuelling systems, installations, units and equipment; construction, installation, maintenance and repair of gas treatment, compression and supply systems, installations, units and equipment; construction, installation, maintenance and repair of gas drying, cooling and purification systems, installations, units and equipment; construction, installation, maintenance and repair of gas storage systems, installations, units and equipment; construction, installation, maintenance and repair of gas transport systems, installations, units and equipment; construction, installation, maintenance and repair of gas production systems, installations, units and equipment; construction, installation, maintenance and repair of liquid treatment, distribution, supply and pumping systems, installations, units and equipment; construction, installation, maintenance and repair of electronic installations and equipment, computer installations and equipment, switchboards; extraction of natural resources; extraction of gas; rental of tools, plant and equipment for construction and demolition; building, construction and demolition; vehicle repair, maintenance and refuelling; construction of structures for the transportation of natural gas; installation of pipework systems; beneath ground construction work relating to gas supply mains; dismantling of industrial equipment, installations and machines; leasing of air compressors; rental of gas or air compressors; rental of gas treatment, compression, supply, storage, transport, drying, cooling and purification systems, installations, units and equipment; gas drilling; providing of information in relation to the construction, installation, maintenance and repair of gas compression, supply, storage, transport, drying, cooling and purification systems, installations, units and equipment; cleaning of gas compression, supply, storage, transport, drying, cooling and purification systems, installations, units and equipment; providing of information in relation to the cleaning of gas compression, supply, storage, transport, drying, cooling and purification systems, installations, units and equipment; service stations (vehicle -) [refuelling and maintenance]; providing information relating to the repair or maintenance of gasoline station equipment; providing information relating to the repair or maintenance of vending machines; construction, installation, maintenance and repair of energy saving systems, installations, units and equipment; construction, installation, maintenance and repair of drying systems, installations, units and equipment; installation of environmental engineering systems; construction, installation, maintenance and repair of condensing systems, installations, units and equipment; construction, installation, maintenance and repair of energy production systems, installations, units and equipment.

The contested services in Class 37 which belong, broadly speaking, to the categories of extraction of natural resources and building, construction and demolition, mainly related to gas, have nothing in common with the opponents goods in Class 16, which are publications and stationary goods. By definition, they are clearly different from the opponent’s goods and services as they involve different activities, professionals, objectives and purposes. No link or connection can be established between them and they are therefore clearly dissimilar.

However, some of the contested services are identical or similar to the goods and services in Classes 4, 9, 11, 35, 37, 38, 39 and 42 on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark (with the exception of the goods in Class 16), which, for the opponent, is the best light in which the opposition can be examined.

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 assumed to be identical are directed at both the general public and business customers with specific professional knowledge or expertise. The degree of attention varies from average to high, depending on the price, sophistication, or terms and conditions of the goods and services.

3. The signs

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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The contested sign is a figurative mark consisting of a large lower-case letter ‘a’ in a stylised white typeface against a rectangular black background, occupying the greater part of the mark. Under it are the words ‘GAS’, and ‘Solution’ in black, arranged over two lines. All these elements are set against a white background and inside a black border.

The earlier mark is a figurative sign containing the verbal element ‘gasNatural’. Under the word ‘Natural’ is the word ‘Solutions’. Both of these elements are blue and in a fairly standard typeface. Over the letter ‘u’ of ‘Natural’, is a figurative element depicting a yellow, orange, red and black butterfly.

When perceiving a verbal sign, the relevant public will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T‑146/06, Aturion, EU:T:2008:33, § 58). It follows that consumers in the relevant territory will perceive the verbal element of the earlier sign as the combination of two components, namely ‘gas’ and ‘Natural’, because the first letter of the word ‘Natural’ is in upper case and clearly divides the verbal element into two words. Moreover, these words will be recognised throughout the relevant territory for the reasons set out below.

The common elements ‘GAS’ and ‘Solution(s)’ of both marks will be understood respectively by the relevant public as ‘any substance that is neither liquid nor solid. Gas is the fuel which is used to drive motor vehicles’ (information extracted from Collins Dictionary on 15/05/2020 at https://www.collinsdictionary.com/dictionary/english/gas) and as ‘a way of dealing with a problem so that the difficulty is removed’ (information extracted from Collins Dictionary on 15/05/2020 at https://www.collinsdictionary.com/dictionary/english/solution).

The word ‘Natural’ in the earlier mark will also be understood by the relevant public as ‘things [that] exist or occur in nature and are not made or caused by people’ (information extracted from Collins Dictionary on 15/05/2020 at https://www.collinsdictionary.com/dictionary/english/natural).

All these elements, will be understood by the average consumers of the relevant goods and services in the European Union, either because they are very common and widespread English words, or because they exist as such, or in very similar forms, in the relevant languages. Moreover, basic English terms such as these are widely used and familiar to a significant portion of the consumers due to the fact that English is taught/studied on a wide scale and that its basic terms are easily retained even by those consumers who are not very familiar with the language.

The element ‘gasNatural’ of the earlier mark may be perceived as referring to ‘gas or gaseous fuel of natural origin’, and together with the word ‘Solutions’, ‘gasNatural Solutions’, is an expression that may be understood in the relevant territory as referring to ‘a way of obtaining or creating gaseous fuel of natural origin’. Moreover, the verbal element ‘GAS Solution’ of the contested mark may be perceived as rereferring to ‘a way of obtaining gas or creating gaseous fuel’.

Bearing in mind that the relevant goods and services are or may be related to the gas and electricity sectors, it is considered that these elements, alone or combined, are non-distinctive in relation to the relevant goods or services.

The figurative element of the earlier mark has no connection with the relevant goods and services. Therefore, it is distinctive.

Finally, the letter ‘a’ of the contested mark, refers to the letter it represents, and is distinctive as it has no relation with the contested services.

The opponent argued that the presence of the word ‘Solution’ in the sign for which registration is sought greatly increases its similarity to the earlier mark, because it has the same verbal structure and is very similar to the earlier mark. While it is true that both marks share the same structure to the extent that both have the word ‘Solution(s)’ at the end, it is also true that, as seen above, this word is non-distinctive and therefore less weight can be given to it when comparing the marks.

The verbal element ‘gasNatural’ occupies a large and central space in the earlier sign in comparison to the smaller verbal element ‘Solutions’ – which clearly occupies a secondary position within the sign – and the depiction of a butterfly.

The element ‘a’ in the contested sign is the dominant element as it is the most eye-catching due to its position at the top of the sign and its larger size compared with the remaining verbal elements.

Visually, the signs have different overall structures, since the contested mark consists of verbal elements placed on three levels, whereas the earlier mark contains both figurative and verbal elements, the latter being arranged over two lines. The marks coincide in the words ‘GAS’ and ‘Solution(s)’, albeit in different typeface, positions and colours. As explained above, these elements are non-distinctive and, hence, this coincidence has a limited impact on the relevant public. The signs differ in the stylised letter ‘a’ of the contested sign and the word ‘Natural’, the colours and the figurative element of the earlier mark. The letter ‘a’ in the contested sign is large. While it does not eclipse the verbal elements ‘GAS’ and ‘solution’, it reduces their impact on the overall impression conveyed by the contested sign.

It is of particular importance that the distinctive and differing element of the contested sign is its first element because it will be the first element to catch the consumers attention.

Therefore, the signs are visually similar only to a very low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the words ‘GAS’ and ‘Solution’, present identically in both signs – although these elements have been found to be non-distinctive in relation to the relevant goods and services. The pronunciation differs in the sound of the letter ‘a’ of the contested mark (which is distinctive for the relevant services), and in the earlier mark’s word ‘Natural’ (which is non-distinctive for the relevant goods and services), and the last letter ‘s’ of its word ‘solutions’.

Therefore, since the signs coincide aurally in words that are non-distinctive, they are aurally similar only to a very low degree.

Conceptually, the public in the relevant territory will perceive the elements ‘gasNatural Solutions’ and ‘GAS solutions’ as having the meanings explained above. Furthermore, the letter ‘a’ in the contested mark will be understood as a letter of the Latin alphabet, and the figurative element in the earlier sign will be perceived as a butterfly.

As both signs will be perceived as referring to ‘GAS’, and to the extent that both contain a reference to the concept of ‘Solution(s)’, the signs are conceptually similar to a very low degree, on account of the non-distinctive character of both of these coinciding 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.

According to the opponent, the earlier trade mark has a reputation in the European Union in connection with all the goods and services for which it is registered. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 18).

The evidence submitted by the opponent to prove the reputation and highly distinctive character of the earlier trade mark has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR. Specifically, the Opposition Division concludes that the opponent did not prove that this earlier mark had acquired reputation in the European Union.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. Considering what has been stated above in section c) of this decision, the distinctiveness of the earlier mark, when taken as a whole, must be seen as low for all the goods and services in question.

5. Global assessment, other arguments and conclusion

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 goods and services have been assumed to be identical and target the public at large and professional consumers, whose level of attention is considered to vary from average to high.

The similarities between the marks are confined to the elements ‘GAS’ and ‘Solution(s)’, which are non-distinctive for the relevant goods and services. Furthermore, these two common elements do not occupy the same position in both marks.

Moreover, there are clearly perceptible visual differences due to the presence of the additional word ‘Natural’ and the figurative elements and colours of the earlier mark. In addition, the first elements of the conflicting marks are different, due to the presence of the dominant letter ‘a’ in the contested mark. Consumers generally tend to focus on the first element of a sign when being confronted with a trade mark. This is justified by the fact that 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. Consequently, besides the fact that the earlier sign contains an additional, distinctive, figurative element, which differentiates the signs, the first parts of the verbal elements in the signs are also different and this must be taken into account when assessing the likelihood of confusion between the marks.

In addition, the contested mark contains the element ‘a’, which has a normal degree of distinctiveness, has no equivalent in the contested sign and dominates the contested mark. Therefore, the overall impression given by the signs is sufficiently different to avoid any risk of confusion on the part of the public.

In its observations, the opponent emphasised the enhanced distinctiveness of the earlier mark and claimed that the risk of confusion between the marks in question is even higher as the earlier mark is well-known in relation to the goods and services in question. However, even if the earlier trade mark was reputed it would not be enough on its own to find likelihood of confusion.

Considering all the above, in particular that the similarities concern elements that have much less impact within the overall impression of the signs and that the visual and aural differences are clearly perceived, the similarities are not sufficient to lead to a likelihood of confusion on the part of the public. Consequently, even assuming that the relevant goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected as far as this ground is concerned.

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

• European Union trade mark registration No 9 202 615 ,

• European Union trade mark registration No 39 628 ,

• Spanish trade mark registration No 2 925 504 ,

• Spanish trade mark registrations No 2 925 498 ‘GAS NATURAL FENOSA’ and

• Spanish trade mark registration No 3 530 999 .

These marks are less similar to the contested sign. This is because either they contain the distinctive verbal element ‘fenosa’, or the additional non-distinctive words (for part of the public) ‘comercializador de referencia’, or they do not share the element ‘SOLUTION’ with the contested sign. These additional elements have no counterpart in the contested sign and the abovementioned earlier marks do not demonstrate stronger visual, aural or conceptual coincidences with the contested sign than the earlier mark which has already been assessed. Therefore, the same findings apply to these earlier marks, even under the presumption that the contested services are identical to the goods and services covered by these earlier marks.

As regards the enhanced distinctiveness claimed by the opponent for these four earlier trade marks, the evidence submitted by the opponent to prove this, has already been examined above under the grounds of Article 8(5) EUTMR. Reference is made to those findings, which are equally valid for Article 8(1)(b) EUTMR. Specifically, the Opposition Division concludes that the opponent did not prove that earlier European Union trade mark registration No 39 628 , and earlier Spanish trade mark registration No 3 530 999 had acquired reputation in the European Union. Therefore, the outcome cannot be different with respect to services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those services.

Consequently, the opposition is also not well founded under Article 8(1)(b) EUTMR and, therefore, must be rejected.

Given that the opposition is not well founded under Article 8(1) and Article 8(5) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR, the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Rasa BARAKAUSKIENÉ

Cristina CRESPO MOLTO

Loreto URRACA LUQUE

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.