OPPOSITION No B 3 065 897

Cactus S.A., Route d’Arlon, La Belle Etoile, L-8050 Bertrange, Luxembourg (opponent), represented by Office Freylinger S.A., 234, route d’Arlon, B.P. 48, L-8001 Strassen, Luxembourg (professional representative)

a g a i n s t

ΚΩΝΣΤΑΝΤΙΝΟΣ Ν. ΑΝΑΣΤΑΣΙΟΥ ΚΑΙ ΣΙΑ ΕΕ, 3ο χλμ. Π.Ε.Ο. ΛΑΡΙΣΑΣ – ΒΟΛΟΥ, 41202 ΛΑΡΙΣΑ, Greece (applicant), represented by Dr. Helen G. Papaconstantinou and Partners, Law Firm, 2, Coumbari Street Kolonaki, 106 74 Athens, Greece (professional representative).

On 28/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 065 897 is upheld for all the contested services.

2. European Union trade mark application No 17 888 023 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 17 888 023 for the figurative mark . The opposition is based on European Union trade mark registration No 2 532 083 for the word mark ‘BRUNO’. The opponent invoked Article 8(1)(b) 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.

The applicant requested that the opponent submit proof of use of the trade mark on which the opposition is based, namely European Union trade mark registration No 2 532 083 for the word mark ‘BRUNO’.

The date of filing of the contested application is 13/04/2018. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in the European Union from 13/04/2013 to 12/04/2018 inclusive.

The request was submitted in due time and is admissible given that the earlier trade mark was registered more than five years prior to the relevant date mentioned above.

Furthermore, the evidence must show use of the trade mark for the goods and services on which the opposition is based, namely the following:

Class 30: Coffee, tea, cocoa, chocolate and chocolate-based products, sugar, coffee substitutes.

Class 35: Advertising, business management, inter alia management of shops, supermarkets, hypermarkets or shopping centres; business administration, office functions, among other radio and/or television advertising, dissemination of advertising matter, publication of publicity texts, distribution of publicity material, market studies, bill posting, business management assistance, demonstration of goods, distribution of samples, opinion polls, personnel recruitment, cost price analysis, public relations; retail services; retail sales services in relation to goods sold by a supermarket or hypermarket; retail sales services in relation to all everyday consumer goods, inter alia in relation to food, clothing (clothing, footwear and headgear), DIY and interior and exterior decorating (paints, ironmongery, tools and machine tools, DIY supplies), gardening, electrical and household electrical appliances, audio-visual, hi-fi, video, photography, sanitary apparatus and installations, in relation also to the field of computing (computers, accessories, programmes, software and hardware) and telephony, games and toys, sports articles, horological instruments and jewellery, in relation also to homes and furnishing, among other tableware, glassware and cutlery (knives, spoons, forks), household goods and toiletries, perfumery and cosmetics, sanitary preparations and articles, leather, imitations of leather, luggage and umbrellas, furniture, picture frames and mirrors, haberdashery and yarns and threads for textile use, fabrics and household linen, carpets and curtains, haberdashery and trimmings, carpets and floor and wall coverings, Christmas decorations, flowers, plants and seeds.

Class 40: Torrefaction.

Class 43: Dining services (food), bar, cafe, café, cafeteria services; catering services.

According to Article 10(3) EUTMDR, the evidence of use must consist of indications concerning the place, time, extent and nature of use of the opposing trade mark for the goods or services in respect of which it is registered and on which the opposition is based.

On 29/04/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 04/07/2019 to submit evidence of use of the earlier trade mark. This time limit was subsequently extended until 04/09/2019. On 02/09/2019, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

• Annex 1: an extract from www.cactus.lu (print date 22/07/2019), showing the history of the opponent’s company from 1900 to 2017.

• Annex 2: an undated photograph of the ‘Bruno’ roasting plant located in Luxembourg, as claimed by the opponent (Annex 2.1). The sign is visible on the front of the building; an extract from the opponent’s website www.cactus.lu (print date 22/07/2019) ‘My coffee roaster’, stating: ‘We serve only Bruno Bio Fairtrade coffee in all our restaurants. This is Fairtrade-certified organic coffee, produced by the Oro Verde Farming Cooperative, which represents several hundred small producers from Lamas province (Peru). We roast this coffee in our own plant in Windhof’. Furthermore, it states: ‘The coffee we roast in Windhof includes our own range of Cactus coffees, Leesch and Bruno coffees. You can find all your favourite blends in all our stores as well as in our Bruno Coffee Shops …’. The sign is visible (Annex 2.2).

• Annex 3: undated pictures of Bruno coffee packaging bags, with the following indications: Costa Rica, Colombie, Bella Estrella, Ethiopie Sidamo, Felicidad, Guatemala, Décaféiné, Bio-Fairtrade, Espresso, Dessert, etc., of 200 g, 250 g or 500 g; some of the packaging includes the date of 06/09/2019 as the preferred consumption date. The sign is shown as or .

• Annex 4: an extract from www.cactus.lu (print date 19/08/2019), showing 56 supermarkets/shops including their addresses in Luxembourg and pictures of the same showing shop signs featuring ‘CACTUS’, some without but mostly with the figurative element of a cactus, as well as shop signs featuring this figurative element together with the words ‘Marché’, ‘hobbi’ or ‘shoppi’.

• Annex 5: a copy of an invitation to attend a demonstration of the roasting of ‘Bruno’ Bio-Fairtrade coffee on 08/07/2008 in the opponent’s roasting plant ‘Kaffi Leesch’ (as claimed by the opponent) at the following address: route des 3 Cantons L- 8399 Windhof (Annex 5.1); an undated picture, showing packaging of ‘Bruno’ coffee and paper cups including the sign (Annex 5.2); an extract of the Luxembourger Wort (a German-language Luxembourgish daily newspaper), dated 02/02/2019, titled ‘Engagement in Peru’. According to the information provided by the opponent in its submission, the evidence ‘reports on the opponent’s efforts to ensure the turnover of “Bruno” coffee and thereby the income of primary coffee producers by exclusively selling it in “Bruno” coffee shops and Cactus restaurants. Having been launched in 2008, this initiative has resulted in the average sale of 6.5 million cups of ”Bruno” coffee per year’. A coffee package and a paper coffee cup are shown bearing (Annex 5.3).

• Annex 6: undated pictures of a coffee shop, coffee packaging, a coffee cup, a paper coffee cup, sugar stick packaging, all displaying , and a purchase receipt issued by Cactus S.A. in Beltrange, Luxembourg, for the sale of ‘Bruno’ Costa Ric. 250 g and ‘Bruno’ café tasse; a picture of the menu board displaying demonstrates the availability of the promotion of Bruno Bio- Fairtrade coffee grains 1 kg packaging until 17/08/2019.

• Annex 7: copies of promotions of ‘Bruno’ coffee packaging available in ‘Bruno’ coffee shops (e.g. ‘Bruno’ Bio-Fairtrade, ‘Bruno’ Espresso 500 g, ‘Bruno’ Déjeuner and ‘Bruno’ pur Colombie 250 g), showing promotions closing dates, for example, 02/03/2014, 09/03/2014, 16/03/2014, 23/03/2014, 30/03/2014, 11/05/2014, 08/06/2014, 05/04/2015, 09/07/2016, 26/11/2016, 18/02/2017, 14/10/2017, 10/02/2018 and 08/09/2018. The sign is shown as on coffee packaging and on some promotion boards.

• Annex 8: numerous promotional leaflets ‘Cactus News’, dated between 19/02/2013 and 09/09/2018, showing ‘Bruno’ coffee packaging available for sale in Bruno Coffee Shops and in Cactus establishments. The sign is depicted on the packaging; there are also promotions of ‘Bruno’ coffee and a dessert available in Cactus Inn restaurants (e.g. on 05/11/2013).

• Annex 9: an extract from the opponent’s website www.cactus.lu (print date 14/08/2019), referring to daily menus available from 12/08/2019 to 17/08/2019 in the Cactus’ restaurants. There is no reference to the sign at issue.

• Annex 10: information on the dissemination of the opponent’s advertising leaflets (Annex 8) in Luxembourg, for 2013-2017; in Germany for 2013-2014; in Belgium for 2013-2017 and in France for 2013-2017.

• Annex 11: internal documents (as stated by the opponent) concerning the purchase of ‘Bruno’ coffees (e.g. ‘Bruno’ dejeuner 500 g, ‘Bruno’ choco latte, ‘Bruno’ amandes, ‘Bruno’ dessert 1 kg, ‘Bruno’ santos 250 g, ‘Bruno’ Colombie 250 g, ‘Bruno’ Mocca 500 g, ‘Bruno’ mini viennois, ‘Bruno’ decafeine 500 g, ‘Bruno’ mocca 500 g, ‘Bruno’ black, bio ‘Bruno’ fairtrade 1 kg, ‘Bruno’ dolce 1 kg, ‘Bruno’ Guatemala 250 g, ‘Bruno’ espresso 500 g, ‘Bruno’ Costa Rica 250 g, ‘Bruno’ Ethiopie Sidamo and ‘Bruno’ easter blend 500 g) issued between 02/04/2013 and 08/04/2019. There are no details of a seller (name of business or contact information).

• Annex 12: a table showing, according to the opponent, sales figures for ‘BRUNO’ coffee products (including ‘Bruno’ Pur Costa Rica 250 g, ‘Bruno’ Maragogype 250 g, ‘Bruno’ Pur Santos Tristar 250 g, ‘Bruno’ Pur Guatemala 250 g, ‘Bruno’ Felicidad Fairtrade, ‘Bruno’ Dessert 500 g, ‘Bruno’ Dejeuner 500 g, ‘Bruno’ Decafeine Grains 500 g, ‘Bruno’ Mocca 500 g, ‘Bruno’ Espresso 1 kg, ‘Bruno’ Coffee To Go, ‘Bruno’ Pur Colombie 250 g, ‘Bruno’ 100 % Arabica Fairtrade 1 kg and ‘Bruno’ Black 1 kg), between 01/2014 and 10/2018. According to the information in the opponent’s submission, the turnover figures refer to the ‘Bruno’ products sold in Cactus supermarkets, Bruno coffee shops and various corners available in Cactus supermarkets, in Luxembourg.

• Annex 13: the minutes of the Extraordinary Shareholders Meeting of 21/11/2008 (Annex 13.1). This Annex also includes invoices issued between 10/2013 and 08/2018 by the opponent to various clients in Luxembourg, concerning the sale of ‘Bruno’ coffee (Annex 13.2). There are some references to the earlier mark, such as Bio Bruno Fairtrade 1 kg, Bruno Dessert 1 kg, Bruno Dolce 1 kg, Bruno Espresso 1 kg, Bruno Black 1 kg and Bruno Descafeine Grains 500 g.

In accordance with Article 10(3) EUTMDR, the indications and evidence required in order to provide proof of use must consist of indications concerning the place, time, extent and nature of use of the opponent’s trade mark for the relevant goods and services.

These requirements for proof of use are cumulative (05/10/2010, T‑92/09, STRATEGI / Stratégies, EU:T:2010:424, § 43). This means that the opponent is obliged not only to indicate but also to prove each of these requirements. However, the adequacy of the indication and proof as to the place, time, extent and nature of use has to be considered in view of the entirety of the evidence submitted. A separate assessment of the various relevant factors, each considered in isolation, is not suitable (17/02/2011, T‑324/09, Friboi, EU:T:2011:47, § 31).

The documents submitted show that the place of use is, inter alia, Luxembourg. This can be inferred, in particular from some addresses or names of towns in Luxembourg (e.g. Annexes 12 and 13.2). Therefore, the evidence relates to the relevant territory.

The evidence submitted shows constant and regular use of the mark during the relevant period. Therefore, the evidence proves the time of use.

The documents filed, namely the invoices, the purchase receipts (Annex 11) and the list of sales transactions (Annex 12), provide the Opposition Division with sufficient information on the commercial volume, territorial scope, duration, and frequency of use. The evidence demonstrates that the opponent’s use of the mark at issue for at least coffee was such as to maintain an outlet for the goods and that the owner has seriously tried to acquire a commercial position in the relevant market by using its mark within the relevant period. Therefore, the Opposition Division considers that the opponent provided sufficient indication on the extent of use of the earlier mark in Luxembourg.

In the context of Article 10(3) EUTMDR, the expression ‘nature of use’ includes evidence of use of the sign in accordance with its function, of use of the mark as registered, or of a variation thereof according to Article 18(1), second subparagraph, point (a) EUTMR, and of its use for the goods and services for which it is registered. According to Article 18(1), second subparagraph, point (a), EUTMR, the following will also constitute use within the meaning of paragraph 1: use of the European Union trade mark in a form differing in elements that do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor. When examining the use of an earlier registration for the purposes of Article 47(2) and (3) EUTMR, Article 18 may be applied by analogy to assess whether or not the use of the sign constitutes genuine use of the earlier mark as far as its nature is concerned.

The fact that in some of the evidence submitted the mark at issue is represented in a slightly stylised font together with additional elements, namely , is not considered of a nature to alter the distinctiveness of the word mark ‘BRUNO’. In particular, the added expression ‘Torréfaction artisanale maison’ and the crown device, do not call into question the conclusion on use of the mark at issue. The expression ‘Torréfaction artisanale maison’ (as translated by the opponent: ‘homemade roasting’) is descriptive of the relevant goods for those who understand it. The crown image is of reduced distinctiveness as it may be indicative of the superior quality of the goods. In addition, all these elements have an ancillary position underneath the element ‘BRUNO’, prominently appearing in large letters. Moreover, the different colours used for depicting the element/s of the sign only have a minor effect as compared to the verbal element ‘BRUNO’. The figurative element above the letter ‘O’ of the verbal element ‘BRUNO’ is a commonly used depiction of the scent of coffee. Therefore, it is of reduced distinctiveness in relation to coffee. Even if not perceived this way, it is likely that a significant part of the public perceives it as a decorative element, thus having a quite minimal impact overall. In consequence, it is considered that the joint use of these elements does not undermine the function of the mark ‘BRUNO’ as a means of identifying the goods at issue. The verbal element ‘BRUNO’ is the prominent element of the analysed figurative signs, which the public would perceive as an origin identifier. Therefore, contrary to the applicant’s allegations, the appearance of these additional verbal and figurative elements do not call into question the conclusion on use of the word mark.

Consequently, the evidence shows that the mark has been used in accordance with its function and as registered.

Taking into account the evidence in its entirety, the evidence submitted by the opponent is sufficient to prove genuine use of the earlier trade mark during the relevant period in the relevant territory at least for coffee. Since finding use proved for coffee is enough for the purposes of the present opposition, the Opposition Division will not examine the proof of use for the remaining goods and services.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services. As seen from the above analysis, use is considered proven at least for coffee in Class 30.

The Opposition Division will only consider the abovementioned goods for which use was proved in its further examination of the opposition.

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

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

1. The goods and services

The goods on which the opposition is based and for which proof of use has been proven are the following:

Class 30: Coffee.

The contested services are the following:

Class 43: Services for providing food and drink.

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 contested services for providing food and drink cover services of a restaurant or similar services, such as catering, cafeterias and snack bars. These services are intended for serving food and drinks directly for consumption. These contested services are similar to a low degree to the opponent’s coffee, as they usually coincide in producer and distribution channels. Consumers may think that responsibility lies with the same undertaking as the market reality is that the manufacture of such goods is commonly offered by the same undertaking under the same trade mark. Furthermore, the contested services and the opponent’s coffee are complementary (17/03/2015, T‑611/11, Manea Spa, EU:T:2015:152, § 52; 15/02/2011, T‑213/09, Yorma’s, EU:T:2011:37, § 46). Goods or services are complementary if one is indispensable or important for the use of the other in such a way that consumers may think that responsibility for the production of those goods or the provision of those services lies with the same undertaking.

2. Relevant public — degree of attention

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

In the present case, the goods and services found to be similar to a low degree are directed at the public at large.

The degree of attention is considered average.

3. The signs

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

The verbal elements of the contested sign are meaningful in English. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as Ireland, Malta and the United Kingdom.

The element ‘BRUNO’, which the signs have in common, will be recognised as a male name, as confirmed by the decision of 01/10/2018, R 2499/2017‑5, BRUNO (fig.) / BRUNOX, § 24. The applicant claims that this word will be understood by the English-speaking public as referring to the colour brown, according to its meaning in Italian, and alleges that therefore it is weak. Notwithstanding the applicant’s claims and allegations, the word ‘BRUNO’ will not be perceived with the meaning claimed and, therefore, will not be perceived as descriptive by the English-speaking part of the relevant public. As explained above, for this part of the relevant public ‘BRUNO’ will be perceived as a male given name, having no connotations in relation to the goods and services at issue.

The applicant argued that the earlier trade mark has a low degree of distinctiveness given that many trade marks consist of or contain the verbal element ‘BRUNO’. In support of its argument, the applicant referred to some trade mark registrations, such as EUTMs, French and Romanian trade marks.

The Opposition Division notes that the applicant also submitted printouts, showing use of ‘BRUNO’ for coffee and food provision services. Although it seems that some of the shown uses are of the registered marks listed by the applicant, nonetheless a few instances of use related to the territories in focus does not suffice to prove widespread use. It follows that the evidence filed does not demonstrate that the English-speaking part of the public has been exposed to widespread use of, and has become accustomed to, trade marks that include the verbal element ‘BRUNO’. Under these circumstances, the applicant’s claims must be set aside.

The verbal elements ‘HELLENIC FLAVOURS’ of the contested sign will be understood as ‘taste perceived in food’ and drink characteristic of Greece (extracted from Collins Dictionary on 13/05/2020 at https://www.collinsdictionary.com/dictionary/english/hellenic and https://www.collinsdictionary.com/dictionary/english/flavour). There is no reason to consider that the verbal element ‘HELLENIC’ will not be understood by the relevant public, as argued by the applicant, given that it is another word for ‘Greek’ as defined in the cited Collins English Dictionary. Therefore, the expression ‘HELLENIC FLAVOURS’ has a reduced distinctiveness for the services covered by the mark.

The two concentric circles forming a round label in the contested sign will be perceived by the relevant public as being commonplace. Even if they are not negligible in terms of their size and the use of the yellow colour of the centre circle, this figurative element will be perceived by consumers essentially as a mere decorative element, and not as an element indicating the commercial origin of the services. Therefore, this element is considered of reduced distinctiveness.

The contested sign includes the figurative element in the form of a stylised human figure, wearing an Indian headdress and holding a cup of a drink. The overall figurative device has a normal degree of distinctiveness. 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).

The applicant claimed that the centre yellow circle with the reddish-brown, stylised, human figure in the contested sign is the dominant element of the sign. However, the Opposition Division considers that verbal element ‘BRUNO’, the concentric circles and the human figure of the contested sign, by virtue of their large size, and the bold typeface utilised for the verbal element ‘BRUNO’, placed in a prominent position above the figure of the man, are the co-dominant elements as they are the most eye-catching when compared to the remaining elements in the sign.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the distinctive verbal element ‘BRUNO’. The signs differ in the verbal elements ‘HELLENIC FLAVOURS’ of the contested sign, which have no counterparts in the earlier mark, but have reduced distinctiveness and are secondary because of their smaller size and their ancillary position in the arrangement of the sign. The signs also differ in the figurative elements of the contested sign, which, however, have less impact on the consumer’s perception since, as noted above, consumers tend to focus on the verbal elements of signs.

Although, as claimed by the applicant, the structure of the contested sign is different, the verbal element ‘BRUNO’ is clearly the dominant verbal element. This verbal element is the sole element in the earlier mark. Therefore, since the earlier mark is fully included in the contested sign as a first, distinctive and dominant verbal element, the signs are considered visually similar to a high degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘BRUNO’. The pronunciation differs in the sound of the letters ‘HELLENIC FLAVOURS’ in the contested sign. The signs have different lengths. However, consumers tend to abbreviate a mark comprising a number of words to make it easier to pronounce (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75). Taking into account the reduced distinctiveness of the expression ‘HELLENIC FLAVOURS’ and its secondary position in the contested sign, it is likely that those two words will not be pronounced by the relevant consumers (30/11/2006, T‑43/05, Brothers by Camper, EU:T:2006:370, § 75; 03/07/2013, T‑206/12, LIBERTE american blend, EU:T:2013:342, § 43-44; 03/07/2013, T‑243/12, Aloha 100% natural, EU:T:2013:344, § 34).

Therefore, the signs are aurally similar to a high degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the concept evoked by the verbal element ‘BRUNO’, which is distinctive in relation to the goods and services at issue. To that extent, the signs are conceptually similar to a high degree. That conclusion is not affected by the presence of the additional elements in the contested sign, for the reasons stated above.

As the signs have been found similar in the three aspects 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 has no meaning for the goods in question from the perspective of the relevant public. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

According to established case-law, the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22; 29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16; 22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

Furthermore, 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 contested services are similar to a low degree to the opponent’s goods. They target the public at large, whose degree of attention will be average. The earlier mark is considered to enjoy a normal degree of inherent distinctiveness. The signs are visually, aurally and conceptually similar to a high degree. Indeed, the contested sign reproduces the sole element of the earlier mark, ‘BRUNO’, which is distinctive from the perspective of the relevant public. Furthermore, it is the dominant verbal element and is placed at the beginning of the contested sign. The differences between the signs are limited to secondary verbal elements in the contested sign. As regards the figurative elements of the contested sign, although they are co-dominant, they will have a lesser impact than the verbal element ‘BRUNO’ since, as explained above in section c) of this decision, when signs consist of both verbal and figurative components, the verbal element usually has a stronger impact on the consumer than the figurative component.

Therefore, in an overall assessment, taking into account that the distinctive verbal element of the earlier mark is entirely contained in the contested sign as a distinctive and dominant verbal element, and in its beginning, it is reasonable to assume that when encountering the contested sign in relation to services which are similar to a low degree to the opponent’s goods, consumers are likely to confuse the marks and believe that these goods and services come from the same undertaking or, as the case may be, economically linked undertakings. Indeed, according to the principle of interdependence mentioned before, the important similarity between the signs compensate for the low similarity between the goods and services.

It is settled case-law that 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. Indeed, in the present case, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark configured in a different way according to the type of services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49).

Considering all the above, there is a likelihood of confusion on the part of the English-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 2 532 083. It follows that the contested trade mark must be rejected for all the contested services.

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

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

The Opposition Division

Teodora TSENOVA-PETROVA

Marzena MACIAK

Eva Inés PÉREZ SANTONJA

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.