OPPOSITION No B 3 067 389

Enea S.A., ul. Górecka 1, 60-201, Poznań, Poland (opponent), represented by Kancelaria Patentowa Patentbox Romuald Suszczewicz, ul. Piekary 6/17, 61-823, Poznań, Poland (professional representative)

a g a i n s t

DIPA, trgovina d.o.o., Pernetova 11, 1236 Trzin, Slovenia (applicant).

On 30/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 067 389 is upheld for all the contested services.

2. European Union trade mark application No 17 926 608 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 17 926 608 . The opposition is based on European Union trade mark registration No 14 333 471 . The opponent invoked Articles 8(1)(b) and 8(5) EUTMR.

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

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

a) The services

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

Class 35: Agency for concluding sales contracts for solid, liquid and gaseous fuels, electric and thermal energy, water; business investigations and business research; commercial agency for matching contracting parties for purchase and sale transactions of data transfer by wire and wireless; services of computerized file management; assistance in business management concerning customer service for electric energy, gas, heat and water consumers; consumers readouts and clearing; compilation of information into computer databases and its systematization; car sales agency; services for advertising and marketing agencies management; market research; services for administration and organization of exhibitions and shows for commercial or advertising purposes; services for investment project organization and for construction supervision in power engineering industry; bookkeeping services; electricity meters readouts; preparation and collation of available data concerning supplied electricity charges; services concerning selling such goods as: chemical agents for liquidation of pollution and contamination of natural environment, chemical products for industrial, scientific purposes, fuel for nuclear reactors, Washing and cleaning agents for machinery, devices and industrial floors, Solid, liquid and gaseous fuels, lubricants, peat, hard coal, brown coal, industrial oil, lubricating oil, motor oil; services concerning selling such goods as: Metal sections, metal non-electric cables, steel masts, electric driven tools, manually controlled workshop tools; services concerning selling such goods as: electric wires, electric cables, fittings for internal wiring systems, fittings for electric overhead and cable power lines, devices and systems for separation, distribution and measurement of solid, liquid and gaseous fuels, electric and thermal energy, electric switching stations, and switchgears, substations electronic publications, equipment for transmission and reception of electric signals; services concerning selling such goods as: accumulators and accumulator batteries, devices and accessories for telecommunications, telemechanics, power grids, automatics and control systems for municipal and industrial construction, electric lighting devices including lamps, floodlights, decorative lighting devices, clothing for protection against accidents, irradiation and fire, protective eye-wear, helmets, gloves for protection against accidents; services concerning selling such goods as: surge protectors, protective masks, electric cut-outs and releases, electric control switchboards and control instruments, electric relays and insulators including casings, electric condensers, lighting arresters, choking coils, current collectors; services concerning selling such goods as: exchangeable devices for electric transformers, sockets and bushing insulators, electric devices and relay protective systems, electric wire and insulation materials, cable switchboxes and joint boxes, electric fuses, current measuring instruments, cables and measuring boards; services concerning selling such goods as: lighting arresters and lighting protective materials, relay, switching devices and control stations and switching and auxiliary stations for transmission and distribution of electric energy, street lamps, light bulbs, fluorescent lamps, sodium lamps, halogen lamps, laser lamps, mercury lamps, light sources; services concerning selling such goods as: lighting devices, devices and installations for: heating, cooling, air-conditioning, electric and thermal insulation materials, flexible non-metal pipes, prefabricated concrete materials for power industry, pylons and poles for electrical engineering, non-metal pylons, working clothing and footwear, headgear; advisory services related to conducting business and management; management of phone support points for third parties; human resources management and services related to staff recruitment; procurement of goods and services for other companies; services concerning temporary distribution of employees; office works; xerography.

The contested services are the following:

Class 35: Administration of the business affairs of retail stores; Retail purposes (Presentation of goods on communication media, for -); Presentation of goods on communication media, for retail purposes; Presentation of financial products on communication media, for retail purposes; Advertising, marketing and promotional services; Business assistance, management and administrative services; Business analysis, research and information services; Administrative accounting; Processing (Administrative -) of purchase orders; Purchase orders (Administrative processing of -); Administrative processing of orders; Administrative processing of purchase orders; Administrative processing of warranty claims; Administrative processing of computerized purchase orders; Administrative services relating to customs clearance; Administrative services relating to warranty claims processing; Advertising; Book-keeping and accounting services; Business management; Business management consulting; Business management consulting services; Commercial information services; Marketing; Marketing consultancy; Organization of exhibitions for commercial or advertising purposes; Outsourcing services [business assistance]; Sales promotion for others.

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 business management; business management consulting; business management consulting services; business analysis, research and information services; commercial information services include, are included in, or overlap with the earlier market research. Since the Office cannot dissect ex officio the broad category of the contested services, they are considered identical to the earlier services.

The contested administrative accounting; book-keeping and accounting services include, are included in, or overlap with the earlier bookkeeping services. Therefore, they are identical.

The contested organization of exhibitions for commercial or advertising purposes are identically contained in both lists of services.

The contested retail purposes (Presentation of goods on communication media, for -); presentation of goods on communication media, for retail purposes; presentation of financial products on communication media, for retail purposes; marketing consultancy; advertising; marketing; sales promotion for others; advertising, marketing and promotional services are similar to the earlier services for administration and organization of exhibitions and shows for commercial or advertising purposes as they have the same purpose. They usually coincide in producer and relevant public.

The contested administration of the business affairs of retail stores; business assistance, management and administrative services; administrative services relating to customs clearance; outsourcing services [business assistance] are at least similar to the earlier advisory services related to conducting business and management because they have the same purpose. They usually coincide in producer and relevant public.

The contested processing (Administrative -) of purchase orders; purchase orders (Administrative processing of -); administrative processing of orders; administrative processing of purchase orders; administrative processing of warranty claims; administrative processing of computerized purchase orders; administrative services relating to warranty claims processing are similar to the earlier procurement of goods and services for other companies because they all belong to the broad category of commercial trading and consumer information services. Therefore, they have the same purpose. They usually coincide in producer and relevant public.

b) Relevant public — degree of attention

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

In the present case, the services found to be identical or similar are mainly directed at the professional public such as businesses seeking services in advertising, business management and administration.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the services purchased.

c) 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).

‘Enea’ in the earlier mark, as well as ‘enaA’ in the contested mark are meaningless and distinctive elements. The typeface and design elements (the blue and yellow colours, the earlier sign’s figurative device, the contested sign’s ‘A’ represented in bigger capital font and its verbal elements being placed in a circle and an oval frame) are decorative features. At the same time, it must be noted that the earlier mark and the distinctive verbal element of the contested sign are both represented in dark blue in a very similar typeface.

As regards the contested sign’s element ‘.com’, the dot is typically used to separate the second level domain from the top level domain (‘TLD’). Therefore, it is simply a technical and generic element, the use of which is required in the normal structure of the address of a commercial internet site. This element is thus devoid of distinctive character.

None of the signs have an element that would be more eye-catching than other elements.

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).

Visually, the signs coincide in ‘en*a’. They differ in their third letter ‘e’/’a’, although these letters also show many similarities due to their dark blue colour and their standard lower case font. The signs differ in the above mentioned design features, and in ‘.com’, although as mentioned above these have little or no impact on the overall impression.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘EN*A’ and differ in the sound of their third letter ‘E’/’A’, while these letters are both vowels pronounced in a similar way. The non-distinctive ‘.com’ will most likely be omitted in pronunciation.

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

Conceptually, neither of the signs has a meaning as a whole. Although ‘.com’ will evoke a concept, this difference has no impact because this element is non-distinctive and cannot indicate the commercial origin. The attention of the relevant public will be attracted by the additional fanciful verbal elements, which have no meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

d) Distinctiveness of the earlier mark

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

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

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

e) 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 services are identical or similar and they target a public with high or average degree of attentiveness. The marks coincide in all the letters of their distinctive elements, except for their third letter, and even this letter is phonetically and visually similar. The difference in the non-distinctive ‘.com’, the colours and typefaces are not sufficient to offset this similarity. Even a public with high degree of attention would be prone to assume that the identical or similar services come from the same or economically linked undertakings.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration. It follows that the contested trade mark must be rejected for all the contested services.

Since the opposition is successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(5) EUTMR.

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 (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), 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

Aldo BLASI

Marianna KONDAS

Sandra IBAÑEZ

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.