OPPOSITION No B 3 072 699

Messe München GmbH, Am Messesee 2, 81829 München, Germany (opponent), represented by Mitscherlich, Patent- und Rechtsanwälte, PartmbB, Sonnenstraße 33, 80331 München, Germany (professional representative)

a g a i n s t

GTT a.s., Horňátecká 1772/19, 18000 Praha 8, Czech Republic (applicant), represented by Daněk & Partners, Vinohradská 17, 120 00 Prague 2, Czech Republic (professional representative).

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

DECISION:

1. Opposition No B 3 072 699 is partially upheld, namely for the following contested services:

Class 35: Business management; Commercial or industrial management assistance; Business management and organization consultancy; Business information; Commercial information agencies; Business investigation; Economic forecasting; Relocation services for businesses; Marketing studies; Cost price analysis; Marketing studies; Opinion polling; Statistical information; Public relations; Cost price analysis; Advertising agency services and promotion, including arranging online advertising on an internet computer network; Radio advertising; Television advertising; Rental of advertising time on communication media; Organisation of exhibitions and trade fairs for commercial or advertising purposes; Updating and rental of advertising material and advertising space; Advertising by mail order; Demonstration of goods; Modelling for advertising or sales promotion; Direct mail advertising; Bill-posting; Publication of publicity texts; Bill-posting; Shop window dressing; Business management of artists' agencies; Business management of hotels.

Class 41: News reporters services; Photographic reporting; Photography; Rental of stage and other scenery, including lighting; Publication of books; Electronic desktop publishing; Providing on-line electronic publications, not downloadable; Publication of electronic books and journals on-line; Information and brokerage regarding recreation, amusements and entertainment, arranging theatrical performances; Providing cinema facilities; Music-halls; Running of museums; Lending libraries; Discotheque services; Providing casino services; Night clubs; Providing karaoke services; Club services (entertainment or education); Health clubs; Circuses; Animal training; Zoological garden services; Shows; Organization of balls; Party planning (entertainment); Organisation of competitions (education or entertainment), organisation of sports competitions, arranging of beauty contests; Organization of exhibitions for cultural or educational purposes; Presentation of live shows and performances; Booking of seats for shows; Arranging and conducting of colloquiums, conferences, congresses, seminars, simposiuns; Education information; Tuition; Practical training demonstrations; Instruction services; Examination; Educational examinations; Correspondence courses; Correspondence courses; Boarding schools; Nursery schools; Holiday camps; Religious education; Vocational guidance (education and career guidance); Arranging and conducting of workshops; Physical education; Rental and providing of sports facilities, namely golf courses, stadium facilities, tennis courts and swimming pools; Gymnastic instruction; Rental of sports equipment, except vehicles.

2. European Union trade mark application No 17 941 014 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 17 941 014 (fig.) namely against all the services in Classes 35, 36, 37, 38, 41 and 42. The opposition is based on, inter alia, German trade mark registration No 302 015 105 509  (fig.). The opponent invoked Article 8(1)(a) and (b) EUTMR and Article 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.

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 German trade mark registration No 302 015 105 509.

1. The goods and services

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

Class 16: Printed matter; magazines.

Class 35: Organisation of exhibitions and trade fairs for commercial and advertising purposes; publication and issuance of advertising texts.

Class 41: Arranging of exhibitions for cultural and teaching purposes; organisation and arranging of congresses and meetings; publication and issuance of printed matter (except for advertising purposes).

The contested services are the following:

Class 35: Business management; Commercial or industrial management assistance; Business management and organization consultancy; Business information; Commercial information agencies; Business investigation; Economic forecasting; Relocation services for businesses; Marketing studies; Cost price analysis; Marketing studies; Opinion polling; Statistical information; Public relations; Accounting; Auditing; Cost price analysis; Business appraisal; Drawing up statements of account; Auctioneering; Personnel consultancy; Efficiency experts; Personnel recruitment; Psychological testing for the selection of personnel; Tax preparation; Payroll preparation; Employment agencies; Advertising agency services and promotion, including arranging online advertising on an internet computer network; Radio advertising; Television advertising; Rental of advertising time on communication media; Organisation of exhibitions and trade fairs for commercial or advertising purposes; Updating and rental of advertising material and advertising space; Advertising by mail order; Demonstration of goods; Modelling for advertising or sales promotion; Direct mail advertising; Bill-posting; Publication of publicity texts; Bill-posting; Shop window dressing; Business management of artists' agencies; Business management of hotels; Import-export agencies secretarial services; Telephone answering for unavailable subscribers; Shorthand; Shorthand; Transcription; Typing, word processing; Compilation and systematic ordering of information into computer databases; Computerised file management; Data searching in computer files; Document reproduction; Photocopying services; Arranging newspaper subscriptions for others; Rental of photocopying machines and office machines and equipment; Rental of vending machines; Procurement services for others; Purchasing goods and services for other businesses; Purchasing goods and services for other businesses.

Class 36: Financial affairs analysis, transactions, operations, financial information; advice and Fiduciary; Fiscal assessments; Financial evaluations and assessments in the field of insurance, banking and real estate; Stocks and bonds brokerage; Stock exchange quotation and listing services; Financial sponsorship; Financing (hire purchase -); Provision of mortgage loans; Rent financial and Hire-purchase financing; Guarantees; sureties; Surety services; Banking; Credit bureaux services; Financial clearing; Electronic funds transfer; Clearing (settlement of mutual claims and liabilities); Electronic funds transfer; Fund investments; Home banking; Issuance of tokens of value; Issuance of travelers' checks; Issue of tokens of value; Issuing of credit cards and credit card services; Currency services and operations; Exchanging money; Insurance brokerage and consultancy; Long-term care insurance; Retirement payment services; Mutual funds; Actuarial services; Real estate agency- Real estate trading; Brokering the rental and buying of real estate; Apartment house management; Real estate administration; Rent collection; residential agency services; Antique, jewellery, numismatic, stamp and art appraisal; Debt collection agencies (factoring); Business liquidation services; Customs brokerage; Charitable fundraising and other safe deposit services; Safe deposit storage; Deposit of valuables; Pawnbrokerage.

Class 37: Operating vehicle repair garages and service stations (maintenance and repair of motor vehicles); Anti-rust treatment for vehicles; Cleaning, polishing and washing of motor vehicles and other means of transport; Reconditioning machines and motors and engines that are worn out or partially destroyed; Vulcanization and retreading of tyres; Rental and hire of construction, transport and other machinery, being dredgers, excavators, bulldozers, cranes, road sweepers, cleaning machines; Pump repair; Construction and building; Damp-proofing of buildings; Thermal and acoustic insulation of buildings; Demolition of buildings; Plumbing; Chimney sweeping; Painting, interior and exterior; Plastering; Plastering wallpapering; Scaffolding; Roofing services; Masonry; Locksmithery; Building construction supervision; Repair information; Electric appliance installation and repair; Office machines and equipment installation, maintenance and repair; Installation and repair of air-conditioning apparatus; Installation of kitchen equipment; Installation and repair of burglar alarms and security systems; Fire alarm installation and repair; Installation, maintenance and repair of computer equipment; Heating equipment installation and repair; Elevator installation and repair; Telephone installation and repair; Cleaning of buildings (facades, exterior surfaces and areas and interiors); Chimney sweeping; Window cleaning; Street cleaning; Rat exterminating; Disinfecting; Pest control; Asphalting; Road paving; Mining extraction; Extraction; Quarrying services; Drilling of wells; Laundry and pressing services, being cleaning; Laundering; Ironing and pressing of clothing; Dry cleaning; maintainance; Cleaning and repair of fur, leather and clothing made therefrom; Repair of clothing and footwear; Furniture restoration; Cabinet making [repair]; Upholstering and Upholstery repair; Varnishing; Glazing; Sanding; Photographic apparatus repair; Clock and watch repair; Strong-room maintenance and repair; Knife sharpening; Umbrella repair.

Class 38: Telecommunictions; Communication via terminals or computers; Computer transmission of mail or images; Communications and transactions on networks; Wire service; Remote transmission of images and video images; Operation of data networks; Operating public mobile radio-telephone networks; Telecommunications engineering consultancy; Brokerage in the field of telecommunications; Exchange, acquisition and dissemination of information and messages via telecommunications networks or data networks or computer, information or communication networks or electronic technology or via satellite or cable; Dissemination of printed matter and books via computer, data, electronic, telecommunications or information networks; Information and telecommunications on the internet included in this class, including operating electronic bulletin boards, discussion groups and forums and providing access to online information and databases; Voice-mail services; Telecommunication services, Including direct interconnection of local client fixed networks with mobile telephone networks; Short message services; Teletext and related services; Providing information (information agencies); Communications consisting of exchanging, disseminating, acquiring and providing information and messages via telecommunications networks; Operating information and communications networks; Operation of internet search engines; Rental of telecommunication equipment and apparatus, including telephones; Message sending services; Transmission of data and of information; Access and connection to data and information networks and the internet; Communications via the internet, external and internal networks and other electronic means; Telecommunications technologies (voice over IP, wireless technologies

Class 41: Production of cinematographic films; Movie studios; Dubbing; Digital imaging services; Recording studios; Production of television and radio programs; News reporters services; Photographic reporting; Photography; Rental of stage and other scenery, including lighting; Rental of radio and television sets; Rental of video cameras; Publication of books; Electronic desktop publishing; Providing on-line electronic publications, not downloadable; Publication of electronic books and journals on-line; Information and brokerage regarding recreation, amusements and entertainment, arranging theatrical performances; Providing cinema facilities; Music-halls; Running of museums; Lending libraries; Discotheque services; Providing casino services; Game services provided on-line from a computer network; Night clubs; Providing karaoke services; Club services (entertainment or education); Health clubs; Circuses; Animal training; Zoological garden services; Rental of motion pictures; Modelling for artists; Shows; Operating of lotteries; Organization of balls; Party planning (entertainment); Organisation of competitions (education or entertainment), organisation of sports competitions, arranging of beauty contests; Organization of exhibitions for cultural or educational purposes; Presentation of live shows and performances; Booking of seats for shows; Sign language interpretation; Translation and interpretation; Arranging and conducting of colloquiums, conferences, congresses, seminars, simposiuns; Education information; Tuition; Practical training demonstrations; Instruction services; Examination; Educational examinations; Correspondence courses; Correspondence courses; Boarding schools; Nursery schools; Holiday camps; Religious education; Vocational guidance (education and career guidance); Arranging and conducting of workshops; Physical education; Rental and providing of sports facilities, namely golf courses, stadium facilities, tennis courts and swimming pools; Gymnastic instruction; Rental of sports equipment, except vehicles.

Class 42: Consultancy, assistance, analysis, design, evaluation and programming relating to computer software, firmware, hardware and information technology; Consultancy relating to assessing, selecting and implementing computer software, firmware, hardware, and information technologies and data processing systems, legal affairs, information technologies and intellectual property, including via telecommunications networks, supplied online, via the internet and World Wide Web,; Hosting web sites; Web design; Research services; Encoding and decoding of security systems (computer software design); Consultancy in the field of the application of computing equipment, in the field of information technology; Creation of virtual/computer 3D animations and models, and information technology; Design and implementation of automated management systems; Programming; Computer network design; Software licensing and rental of software; Installation, repair, maintenance and servicing of software; Creation of interactive applications enabling the transmission and creation of graphic images via an internet network; Computer programming; Software, namely design, data conversion of computer programs and data (not physical conversion); Conversion of data or documents from physical to electronic media; Creation and maintenance of websites for others; Hosting websites; Installation of computer software; Computer system design; Programming of Internet database systems and Internet applications; Creating web presentations and Web server solutions; Updating and maintenance of computer software; Rental of access time to computer databases; Duplication of computer programs; Technical studies in the field of computers and computer programs; Research, development and design of systems for electronic commerce, including software and hardware therefor; Expertise in the field of electronic commerce and information technology; Programming of multimedia applications; Creation of interactive and graphic programs; Computer animation and visualisation; Graphic design; Implementation, updating, designing, structuring and programming or otherwise creating databases, other data systems and applications for the processing thereof, including providing access thereto and the installation, implementation, updating and maintenance thereof; Design, structuring and programming or other creation of internet or intranet pages and bulletin boards (webpages and websites) and internet or intranet applications; Hosting (providing space for) internet or intranet information, Pages and bulletin boards (webpages and websites); Hosting (providing space for) Internet and intranet applications; Data conversion of computer programmes, data or other information in electronic format from various formats to other formats; Conversion of documents, data or other information from physical to electronic media; Backing up data and information by electronic and computer means and via electronic mail; Consultancy in the field of computer equipment and information technology; Consultancy in the field of computer equipment and information technology.

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

Contested services in Classes 36, 37, 38 and 42

All the contested services in these Classes have no points in common with any of the opponent’s goods and services in Classes 16, 35 and 41 as they belong to completely different market sectors. They have different natures and purposes. They are distributed through different channels. Their commercial origins are also distinct. They are dissimilar to all the opponent’s goods and services.

The opponent argues that there is a link between the contested financial services in Class 36 and printed matter in Class 16 covered by the earlier mark and it refers to BoA decision of 25/04/2001, R-518/200-1, § 17. However according to the judgment of the General Court dated 18/09/2014 T-359/16, § 31-37 even if financial institutions provide customers with information sheets regarding their products, the printed matter is not an independent product that could be bought but merely supporting the services offered. These goods and services are not complementary to each other. The printed matter is neither drafted nor printed by lawyers, banks, etc. The same reasoning applies to the contested real estate agencies. In the BoA decision of 03/02/2011, R 1467/2009-2 § 22, it was stated: ‘It is not usual for financial and real estate institutions or construction companies to act as publishers of magazines. The fact that such institutions may produce magazine-like material to be used in promotional activities for their own services, or that the magazines may cover topics in the specific sector, is not sufficient to establish a direct link between the goods and services. Seeing the situation otherwise would mean that the owner of a trade mark covering magazines would have an unmerited right to block similar marks in a massive range of commercial activities, where in reality there would be little likelihood of consumers confusing or associating the marks’.

The opponent argues also that there is similarity between the services in Classes 38 and 41. Even if some complementarity between the contested telecommunication services in Class 38 (e.g. dissemination of printed matter and books via computer, data, electronic, telecommunications or information networks) and some of the opponent’s services in Class 41 namely publication and issuance of printed matter (except for advertising purposes) can be observed, this is not per se sufficient to find similarity. Telecommunication service providers release the content (e.g. recordings, videos, music) but these services have a different nature and purpose (i.e. to communicate versus to inform or entertain). They have different commercial origins and distribution channels.

Furthermore, the opponent argues that the IT services in Class 42 are complementary to the opponent’s goods and services in Classes 16 and 41. However, the mere fact that the opponent’s services in Class 41 (e.g. meetings, congresses) are often performed by means of IT services, does not render them similar. These goods and services have different natures and purposes. They target different publics through different distribution channels. They are also usually offered by different undertakings.

Contested services in Class 35

Organisation of exhibitions and trade fairs for commercial or advertising purposes is identically contained in both lists of goods and services.

The contested marketing studies; marketing studies; opinion polling; public relations; advertising agency services and promotion, including arranging online advertising on an internet computer network; radio advertising; television advertising; rental of advertising time on communication media; updating and rental of advertising material and advertising space; advertising by mail order; demonstration of goods; modelling for advertising or sales promotion; direct mail advertising; bill-posting; publication of publicity texts; bill-posting; shop window dressing belong to the advertising sector. As such they are at least similar to the opponent’s organisation of exhibitions and trade fairs for commercial and advertising purposes. These services coincide at least in the same distribution channels, relevant public and providers.

When comparing business management with advertising, advertising is an essential tool in business management because it makes the business itself known in the market. As stated above, the purpose of advertising services is to ‘reinforce a client’s position in the market’ and the purpose of business management services is to help a business ‘acquire, develop and expand market share’. There is no clear-cut difference between the two. A professional who offers advice on how to run a business efficiently may reasonably include advertising strategies in his or her advice because there is little doubt that advertising plays an essential role in business management. Furthermore, business consultants may offer advertising (and marketing) consultancy as part of their services and the relevant public may thus believe that these two services have the same professional origin. Therefore, the contested business management; commercial or industrial management assistance; commercial information agencies; economic forecasting; cost price analysis; statistical information; cost price analysis; business management and organization consultancy; business information; business investigation; relocation services for businesses; business management of artists' agencies; business management of hotels and the opponent’s publication and issuance of advertising texts are similar to a low degree.

The remaining contested services in this Class, namely: business appraisal; accounting; auditing; drawing up statements of account; auctioneering; personnel consultancy; efficiency experts; personnel recruitment; psychological testing for the selection of personnel; tax preparation; payroll preparation; employment agencies; import-export agencies secretarial services; telephone answering for unavailable subscribers; shorthand; shorthand; transcription; typing, word processing; compilation and systematic ordering of information into computer databases; computerised file management; data searching in computer files; document reproduction; photocopying services; arranging newspaper subscriptions for others; rental of photocopying machines and office machines and equipment; rental of vending machines; procurement services for others; purchasing goods and services for other businesses; purchasing goods and services for other businesses are considered dissimilar to all the opponent’s goods and services in Classes 16, 35 and 41 as they differ in nature, purpose and method of use. They have distinct distribution channels. They are neither complementary nor in competition. They are also not likely to come from the same kind of undertakings.

Contested services in Class 41

Organization of exhibitions for cultural or educational purposes are identically contained in both lists of services (including synonyms).

The contested publication of books; electronic desktop publishing; providing on-line electronic publications, not downloadable; publication of electronic books and journals on-line are if not identical then at least similar to the opponent’s publication and issuance of printed matter (except for advertising purposes) as these services belong to the same market sector. They target the same public though the same distribution channels and their commercial origin usually overlaps.

The contested news reporters services; photographic reporting; photography are considered similar to the opponent’s publication and issuance of printed matter (except for advertising purposes) in Class 41. The earlier services are offered in the field of publishing, which are commonly used to publish the news and photographs, provided by the contested services. Therefore, these services are complementary to each other, since the earlier services are necessary for the publication of the news and photography reporting provided by the contested services. These services can have the same commercial origin.

The contested rental of stage and other scenery, including lighting are similar to the opponent’s arranging of exhibitions for cultural and teaching purposes, because it is not uncommon that they are provided as a complementary and/or accessory service to the organization of events services. They are therefore likely to be offered by the same provider to the same consumers through the same distribution channels.

The contested information and brokerage regarding recreation, amusements and entertainment, arranging theatrical performances; providing cinema facilities; music-halls; running of museums; lending libraries; discotheque services; providing casino services; night clubs; providing karaoke services; club services (entertainment or education); animal training; zoological garden services; circuses; shows; organization of balls; party planning (entertainment); organisation of competitions (education or entertainment), organisation of sports competitions, arranging of beauty contests; presentation of live shows and performances; booking of seats for shows; arranging and conducting of colloquiums, conferences, congresses, seminars, simposiuns; education information; tuition; practical training demonstrations; instruction services; examination; educational examinations; correspondence courses; correspondence courses; boarding schools; nursery schools; religious education; vocational guidance (education and career guidance); arranging and conducting of workshops are similar to the opponent’s arranging of exhibitions for cultural and teaching purposes. These services share the same purposes (education or cultural entertainment) and as such they usually origin from the same or economically linked undertakings, target the same public and are distributed through the same channels.

The contested health clubs; physical education; gymnastic instruction; rental and providing of sports facilities, namely golf courses, stadium facilities, tennis courts and swimming pools; rental of sports equipment, except vehicles; holiday camps are similar to the opponent’s organisation and arranging of congresses and meetings as they can all relate to sport. Therefore, they can share the same distribution channels, relevant public and providers.

The remaining services in this Class, namely production of cinematographic films; movie studios; dubbing; digital imaging services; recording studios; production of television and radio programs; rental of radio and television sets; rental of video cameras; game services provided on-line from a computer network; rental of motion pictures; modelling for artists; operating of lotteries; sign language interpretation; translation and interpretation have no direct links with any of the opponent’s goods and services. They are neither in competition nor complementary. Their purposes and methods of use differ. They are usually distributed by different channels and their providers are distinct. They are considered dissimilar.

2. Relevant public — degree of attention

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

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

The degree of attention will vary from average to high depending on the price and specialised nature of the services in question.

3. The signs

Earlier trade mark	Contested sign

The relevant territory is Germany.

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 element ‘CTT’ of the earlier mark has no meaning for the relevant public and is, therefore, distinctive.

The verbal element of the contested sign, due to the way the first letter is presented, can be perceived as ‘G’ or ‘C’. In any event, it is meaningless and distinctive for the relevant German public. The applicant claims that the abbreviation ‘GTT’ will be perceived as an acronym of ‘Global Trade and Telecommunications’. However, as it is not an official or commonly used abbreviation in Germany it cannot be assumed to be known by the relevant public.

The black oval surrounding the verbal element of the earlier sign as well as the blue lines of the contested sign will be perceived as purely decorative elements and the attention of the public will be directed at the distinctive verbal elements of the signs.

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

Visually, the signs coincide in the letters ‘TT’ and also exhibit similarities in the first letter ‘C’/’G’ which in the contested sign is depicted in a similar way. However, they differ in the graphic depiction of the signs and their figurative elements. As regards stylistic elements like color of letters, font etc, account must be taken that 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 analyze 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; decisions of 19/12/2011, R 233/2011-4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011-5, Jumbo(fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Consequently, the verbal element of the contested sign has a greater impact than the figurative element in the form of blue lines.

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

Aurally, the pronunciation of the signs coincides in the sound of the letters ‛CTT’ or ‘TT’ depending on the perception of the contested sign. The pronunciation differs in the sound of the letter ‛C’ versus ‘G’ at least for part of the public.

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

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

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

4. Distinctiveness of the earlier 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 claimed that the earlier trade mark enjoys enhanced distinctiveness but did not file any evidence in order to prove such a claim.

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 goods and 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, despite the presence of a non‑distinctive element in the mark, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

The goods and services are partly identical, partly similar and partly dissimilar. They target the public at large and professionals. The level of attention may vary from average to high.

The signs are visually similar to an average degree, aurally similar to at least an average degree and a conceptual comparison is not possible. The marks coincide in the sequence of letters/sounds ‘TT’ and although, for part of the public they possibly differ in the first letter/sound ‘C’ and ‘G’, these letters are visually very similar.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Both signs consist of three letters and they are considered to be short signs. While it is true that, as claimed by the applicant in principle, the shorter the signs, the more easily the public is able to perceive all of their single elements than in longer signs, the differences between the signs in the present case are not sufficient to overcome their visual and aural similarities such as to exclude any likelihood of confusion between them. Moreover, the assumption that in short signs, the beginning is no less important than the middle or the ending should be acknowledged given that, in principle, none of the individual elements as such of a short sign is to be attributed more weight than the other individual elements. It is the overall impression that has to be taken into account.

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

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

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

While the Office has a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

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

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these services cannot be successful.

The opponent has also based its opposition on international trade mark registration No 1 271 230 for the figurative mark designating the European Union.

Since this mark is identical to the one which has been compared and covers a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

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

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.

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office will be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2)(f) EUTMDR, when the opposition is based on a mark with reputation within the meaning of Article 8(5) EUTMR, the opposing party must provide evidence showing, inter alia, that the mark has a reputation, as well as evidence or arguments showing that 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.

In the present case, the notice of opposition was not accompanied by any evidence of the alleged reputation of the earlier trade mark.

On 22/01/2019 the opponent was given two months, commencing after the end of the cooling-off period, to submit the abovementioned material. This time limit expired on 01/06/2019.

The opponent did not submit any evidence concerning the reputation of the trade mark on which the opposition is based.

Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Anna ZIÓŁKOWSKA

Katarzyna ZANIECKA

Kieran HENEGHAN

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.