OPPOSITION No B 3 075 868

O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom (opponent), represented by Stobbs, Building 1000, Cambridge Research Park, Cambridge CB25 9PD, United Kingdom (professional representative)

a g a i n s t

Shenzhen Topcod Packaging Materials Co., Ltd., 4/F Yinghaosheng Industry Park, Dayang Development Zone, Fuyong Street, Bao’an District, Shenzhen City, Guangdong Province, People’s Republic of China (applicant), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 27/01/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 075 868 is partially upheld, namely for all the contested goods in Class 16.

2. European Union trade mark application No 17 958 218 is rejected for all the above goods. It may proceed for the remaining goods in Class 1.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 958 218 for the figurative mark . The opposition is based on the following earlier marks:

1) EUTM registration No 9 279 456 ‘O2’ (word), in Classes 1, 2, 4, 6, 7, 8, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 39, 42, 43, 44 and 45 (reputation claimed for services in Classes 35 and 36);

2) EUTM registration No 9 053 497 (figurative), in Classes 3, 4, 6, 8, 9, 14, 16, 18, 21, 24, 25, 28, 29, 30, 32, 33, 34, 35, 36, 38, 39, 41, 42, 43, 44 and 45 reputation claimed for goods and services in Classes 9, 35, 36, 38, 41);

3) EUTM registration No 13 108 139 (figurative), in Classes 9, 35, 36, 38, 41 and 42 (reputation claimed for goods and services in Classes 9, 35, 36, 38, 41);

4) EUTM registration No 15 167 307 (figurative), in Classes 1, 2, 5, 7, 10, 11, 12, 13, 15, 17, 19, 20, 22, 23, 26, 27, 31, 37 and 40;

5) EUTM registration No 16 139 917 (figurative), in Classes 3, 4, 6, 8, 16, 21, 24, 28, 29, 30, 35, 39, 43, 44 and 45.

The opponent invoked Article 8(1)(b) EUTMR regarding all earlier marks and also Article 8(5) EUTMR in connection with earlier marks 1), 2) and 3).

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 earlier mark 1), EUTM No 9 279 456, earlier mark 4), EUTM No 15 167 307, and earlier mark 5) EUTM No 16 139 917, given that they have the widest scope of protection and cover the goods in Classes 1 and/or 16 that are most relevant.

a) The goods

The opposition is based, inter alia, on the following goods:

Earlier mark 1): EUTM No 9 279 456 ‘O2’ (word)

Class 1: Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry, none of the aforementioned goods being gases for industrial purposes; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; book binding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; books, calendars, cards, catalogues, programmes, writing paper, envelopes, pads, notebooks, diaries, greeting cards, magazines, pamphlets, pens, pencils, postcards, posters, decalcomanias, stickers, tickets, beer mats; coasters of paper and cardboard; napkins of paper; tissues and towels of paper; bags of paper and/or plastic material; Adhesive tapes for stationery or household purposes; architects models; architects’ models; babies’ diapers of paper and cellulose, disposable; babies’ napkins of paper and cellulose, disposable; bags (garbage-) of paper or of plastics; bags for microwave cooking; balls for ballpoint pens; chalk (marking-); chaplets; checkbooks [cheque books] (holders for-); clips (money-); composing frames [printing]; composing sticks; diaperpants (babies’-) of paper and cellulose, disposable; diapers (babies’-) of paper and cellulose, disposable; engraving plates; galley racks [printing]; garbage bags of paper or of plastics; graining combs; hand labelling appliances; holders (passport-); holders for checkbooks [cheque books]; house painters’ rollers; marking chalk; microwave cooking (bags for-); models (architects’-); money clips; mounting photographs (apparatus for-); napkin-pants (babies’-) of paper and cellulose, disposable; napkins of paper and cellulose (babies’-), disposable; packaging material made of starches; passport holders; photograph stands; photographs (apparatus for mounting-); printers’ blankets, not of textile; printers’ reglets; rollers (house painters’); rosaries; self-adhesive tapes for stationery or household purposes; sheets of reclaimed cellulose for wrapping; starches (packaging material made of-); steatite [tailor’s chalk]; tailors’ chalk; trays for sorting and counting money; babies’ napkin-pants [diaper-pants] of paper and cellulose.

Earlier mark 4): EUTM No 15 167 307 (figurative)

Class 1: Unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; alcohol; antifreeze; compost.

Earlier mark 5): EUTM No 16 139 917 (figurative)

Class 16: Paper and cardboard; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paintbrushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging; printers’ type; printing blocks; adhesive tapes for stationery or household purposes; architects models; architects’ models; bags (garbage -) of paper or of plastics; bags for microwave cooking; bags of paper for packaging; balls for ball-point pens; biological samples for use in microscopy; blackboards; bookends; boxes for pens; cabinets for stationery; chalk (marking -); bags for microwave cooking; bags of paper for packaging; balls for ball-point pens; biological samples for use in microscopy; blackboards; bookends; boxes for pens; drawer liners of paper (scented or not); engraving plates; face towels of paper; figurines [statuettes] of papier mache; flags of paper; galley racks [printing]; garbage bags of paper; garbage bags of paper or of plastics; graining combs; hand labelling appliances; handkerchiefs of paper; hat boxes of cardboard; holders (passport -); holders for checkbooks [cheque books]; holders for stamps; house painters’ rollers; humidity control sheets of paper or plastic for foodstuff; marking chalk; mats for beer glasses; microwave cooking (bags for -); models (architects’-); money clips; mounting photographs (apparatus for-); napkins (paper) for removing make-up; napkins of paper and cellulose; packaging material made of starches; paper clasps; paper knives; passport holders; perforated cards for jacquard looms; photograph stands; photographs (apparatus for mounting -); placards of paper or cardboard; postage stamps; printers’ blankets, not of textile; printers’ reglets; rollers (house painters’ -); self-adhesive tapes for stationery or household purposes; sheets of reclaimed cellulose for wrapping; signboards (of paper or cardboard); stands for pens; starches (packaging material made of -); stationery cabinets; steatite [tailor’s chalk]; table linen of paper; table napkins (of paper); tablecloths of paper; tablemats of paper; tailors’ chalk; terrestrial globes; tissues of paper for removing make-up; trays for sorting and counting money; tubes (of cardboard); parts and fittings for all the aforesaid goods.

The contested goods are the following:

Class 1: Chemical additives for food; lime chloride; kieselgur; magnesium chloride; silica gels; activated carbon; bentonite; carbon for filters; kaolin; silicone liquid elastomers; preservatives for metals [chemical]; test paper, chemical; chemical substances for preserving foodstuffs; glue for industrial purposes; antioxidants for use in the manufacture of pharmaceuticals; antioxidants for use in the manufacture of food supplements.

Class 16: Plastic wrap; packing paper; plastic film for wrapping; bags [envelopes, pouches] of paper or plastics, for packaging; plastic bubble packs for wrapping or packaging; garbage bags of paper or of plastics; bags for microwave cooking; plastic cling film, extensible, for palletization; adhesive bands for stationery or household purposes; absorbent sheets of paper or plastic for foodstuff packaging; humidity control sheets of paper or plastic for foodstuff packaging; packing [cushioning, stuffing] materials of paper or cardboard; padding materials of paper or cardboard; food wrappers; proofing paper.

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. These factors are known as the ‘Canon Criteria’ (see judgment of 29/09/1998, C‑39/97, Canon, EU:C:1998:442).

Contested goods in Class 1

The contested chemical substances for preserving foodstuffs are identically included in the list of goods of the opponent’s earlier mark 4).

Elastomer is ‘any material, such as natural or synthetic rubber, that is able to resume its original shape when a deforming force is removed’ (information extracted from Collins Dictionary on 13/01/2020 at www.collinsdictionary.com/dictionary/english/elastomer). According to Taxonomy, the contested silicone liquid elastomers are classified as unprocessed plastics and, as such, they are included in the opponent’s unprocessed plastics of earlier marks 1) and 4). They are identical.

The contested glue for industrial purposes is an adhesive for use in industry. It is included in the opponent’s adhesives used in industry of earlier marks 1) and 4). Therefore, these goods are identical.

As to the remaining contested goods, lime chloride is ‘a white powder comprised of calcium hydroxide and chloride and hypochlorite and used to bleach and/or disinfect’, while magnesium chloride is ‘a bitter deliquescent salt MgCl2 used especially as a source of magnesium metal’ (information extracted from Fine Dictionary and Merriam Webster on 13/01/2020 at www.finedictionary.com/chloride%20of%20lime.html and www.merriam-webster.com/dictionary/magnesium%20chloride); kieselgur, also known as kieselguhr, is ‘an unconsolidated form of diatomite’ which is ‘a soft very fine-grained whitish rock consisting of the siliceous remains of diatoms deposited in the ocean or in ponds or lakes. It is used as an absorbent, filtering medium, insulator, filler, etc’. The term silica gels refers to ‘an amorphous form of silica capable of absorbing large quantities of water: used in drying gases and oils, as a carrier for catalysts and an anticaking agent for cosmetics’. Carbon is ‘a chemical element that diamonds and coal are made up of’, while activated carbon, also known as activated charcoal or active carbon, is ‘a porous highly adsorptive form of carbon used to remove colour or impurities from liquids and gases, in the separation and extraction of chemical compounds, and in the recovery of solvents’ (information extracted from Collins Dictionary on 13/01/2020 at www.collinsdictionary.com/dictionary/english/kieselgur; www.collinsdictionary.com/dictionary/english/diatomite; www.collinsdictionary.com/dictionary/english/silica-gel; www.collinsdictionary.com/dictionary/english/carbon and www.collinsdictionary.com/dictionary/english/activated-carbon). Bentonite is ‘a valuable clay, formed by the decomposition of volcanic ash, that swells as it absorbs water: used as a filler in the building, paper, and pharmaceutical industries’, while kaolin is ‘a fine white clay used for the manufacture of hard-paste porcelain and bone china and in medicine as a poultice and gastrointestinal absorbent’ (information extracted from Collins Dictionary on 13/01/2020 at www.collinsdictionary.com/dictionary/english/bentonite and www.collinsdictionary.com/dictionary/english/kaolin).

As follows from the above explanations, the contested lime chloride; kieselgur; magnesium chloride; silica gels; activated carbon; bentonite; carbon for filters; kaolin, as well as the contested preservatives for metals [chemical], are various chemical substances, chemical materials and/or chemical preparations that may be used in industry. In addition, the contested test paper, chemical is ‘paper impregnated with an indicator for use in chemical tests’ (information extracted from Collins Dictionary on 13/01/2020 at www.collinsdictionary.com/dictionary/english/test-paper) which, according to Taxonomy, is a chemical composition/material for use in science. Finally, the contested antioxidants for use in the manufacture of pharmaceuticals; antioxidants for use in the manufacture of food supplements are substances which slow down the damage that can be caused to other substances by the effects of oxygen (information extracted from Collins Dictionary on 13/01/2020 at www.collinsdictionary.com/dictionary/english/antioxidant). They are, therefore, chemicals used in agriculture. The same use applies to at least some of the contested chemical additives for food.

Consequently, the remaining contested lime chloride; kieselgur; magnesium chloride; silica gels; activated carbon; bentonite; carbon for filters; kaolin; preservatives for metals [chemical]; test paper, chemical; antioxidants for use in the manufacture of pharmaceuticals; antioxidants for use in the manufacture of food supplements; chemical additives for food are either included in, or at least overlap with, the opponent’s chemicals used in industry, science, as well as in agriculture, none of the aforementioned goods being gases for industrial purposes. Therefore, they are identical.

Contested goods in Class 16

The contested adhesive bands for stationery or household purposes are synonymous with the opponents adhesive tapes for stationery or household purposes of earlier mark 1). Therefore, they are identical.

The contested garbage bags of paper or of plastics; bags for microwave cooking are identically included in the list of goods of the opponent’s earlier mark 5).

The contested plastic wrap; plastic film for wrapping; bags [envelopes, pouches] of plastics, for packaging; plastic bubble packs for wrapping or packaging; plastic cling film, extensible, for palletization; absorbent sheets of plastic for foodstuff packaging; humidity control sheets of plastic for foodstuff packaging; food wrappers are various materials for wrapping and packaging. They are either included in or overlap with (e.g. the contested food wrappers), the opponent’s plastic materials for packaging (not included in other classes) of earlier mark 1) and plastic materials for packaging of earlier mark 5). Therefore, they are identical.

The contested bags [envelopes, pouches] of paper, for packaging are included in the broader category of the opponent’s bags of paper for packaging of earlier mark 5). They are identical.

The contested proofing paper is included in the opponent’s paper of earlier mark 5). Therefore, they are identical.

The contested packing paper; absorbent sheets of paper for foodstuff packaging; humidity control sheets of paper for foodstuff packaging; packing [cushioning, stuffing] materials of paper or cardboard; padding materials of paper or cardboard are at least similar to the opponent’s plastic materials for packaging (not included in other classes) of earlier mark 1). These goods have the same purpose, namely packaging/protection of a product against external conditions. They can coincide in end users and distribution channels. Moreover, some of the contested goods (e.g. packing paper) are in competition, while some may be used together (e.g. packing [cushioning, stuffing] materials of paper or cardboard) with the opponent’s plastic materials for packaging (not included in other classes).

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 goods in Class 1 found to be identical are specialised goods directed at the professional public with specific professional knowledge or expertise in the field of chemicals used in industry, science and agriculture. The level of attention of that public is higher than average given that these goods are chemicals with properties that may have a direct effect on the environment and/or human health.

As regards the goods in Class 16 found to be identical and at least similar target the public at large displaying an average degree of attention.

c) The signs

Earlier mark 1) O2 Earlier mark 4) Earlier mark 5)
Earlier trade marks	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 earlier marks are a word mark ‘O2’ and two figurative marks with the sole element ‘O₂’ depicted in a fairly standard black typeface. They both refer to the concept of a chemical formula, namely, oxygen in its most stable form. This chemical formula is commonly known and, as such, the relevant public will be aware of this concept. The fact that in earlier word mark 1) ‘2’ is not depicted in subscript is irrelevant since this formula is frequently referred to in both ways. Moreover, in the case of word marks, it is the word as such that is protected and not its written form, therefore, the earlier word mark could be depicted as ‘O₂’.

The contested trade mark is a figurative mark composed of the single verbal element ‘O₂frepak’ in black, slightly stylised typeface which, as such, is meaningless.

Although average consumers normally perceive a mark as a whole and do not proceed to analyse its various details, the fact remains that, when perceiving a word sign, they will break it down into elements which, for them, suggest a specific meaning or which resemble words they know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57). It is, therefore, likely that the public will break the contested sign down into the meaningful element ‘O₂’, located at its beginning and separated by the number ‘2’ in subscript, and the meaningless ending ‘frepak’.

As for the coinciding element ‘O2’/’O₂’, the situation has to be differentiated between the goods in Class 1 and those in Class 16.

Regarding the goods in Class 1, it is noted that oxygen and references to chemical formulas are widely used in the chemical industry. For example, purification preparations may contain oxygen, as in ozone purification preparations and/or those used in ‘dissolved oxygen generation’; certain types of adhesives (anaerobic) cure in the absence of oxygen and in the presence of active metals; the contested antioxidants are widely used as food additives to help guard against food deterioration, and are frequently added to industrial products, such as fuels and lubricants, to prevent oxidation; silica gels are frequently used for drying of process air, (e.g. to dry the air in industrial compressed air systems). In relation to chemical substances and goods that contain chemical substances, the meaning of either ‘O2’ or ‘O₂’ will be obvious (03/07/2012, R 2304/2010‑2, O2 0% MDI emission (FIG. MARK) / O2 et al., § 29). Therefore, the use of ‘O₂’ for goods in Class 1 may suggest that they are somehow related with oxygen.

Earlier marks, whether EUTMs or national marks, enjoy a ‘presumption of validity’. In other words, when dealing with the distinctiveness of the earlier mark as a whole, the latter should always be considered to have at least a minimum degree of inherent distinctiveness. The Court made it clear that ‘in proceedings opposing the registration of a [European Union] trade mark, the validity of national trade marks may not be called into question’ (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314, § 40-41). The opponent did not expressly claim (nor prove, as seen below in the decision) an enhanced distinctiveness in relation to any goods in Class 1. Therefore, it is concluded that ‘O₂’ has at most a very low degree of inherent distinctive character for the opponent’s goods in this class included for the purpose of this comparison, namely chemicals used in industry, science, as well as in agriculture, none of the aforementioned goods being gases for industrial purposes; chemical substances for preserving foodstuffs and adhesives used in industry of earlier marks 1) and 4).

The Opposition Division noted that the opponent restricted the list of some goods of earlier mark 1) by specifying none of the aforementioned goods being gases for industrial purposes. However, this limitation cannot increase the degree of distinctiveness of ‘O₂’, because oxygen in chemicals may also appear in liquid or solid forms and, moreover, ‘O₂’ could indicate their other characteristics. Hence, the inherent distinctiveness must, nevertheless, be seen as at most very low.

The same findings apply to the contested goods in Class 1, all of which are identical to the respective goods of the opponent (07/05/2019, T‑152/18 & T‑155/18, SOLGAR Since 1947 MultiPlus WHOLEFOOD CONCENTRATE MULTIVITAMIN FORMULA (fig.) / MULTIPLUS, EU:T:2019:294, § 43-50).

In contrast, there is no obvious link between the chemical formula for oxygen and the relevant goods in Class 16. Although some of the relevant goods may be used for wrapping food in order to keep it fresh by limiting the access of oxygen, such a link between the goods and the ‘O2’/’O₂’ element is too remote to affect the distinctiveness of the latter. The contested plastic bubble packs for wrapping or packaging are plastic materials filled with regularly spaced, protruding hemispheres (bubbles) that provide cushioning for fragile items, however these bubbles are not filled with oxygen, but with air, and indeed they are often called air bubble packing. Therefore, ‘O₂’ does not describe any characteristics of these goods and the coinciding ‘O2’/’O₂’ element is inherently distinctive to an average degree for the relevant goods.

Ipso facto, the Opposition Division disagrees with the opponent that ‘O2’/’O₂’ is highly distinctive per se for any of the relevant goods. It should be recalled that a mark or, by analogy, its components will not have a higher degree of distinctive character just because there is no conceptual link to the relevant goods and services (16/05/2013, C‑379/12 P, H/Eich, EU:C:2013:317, § 71). Enhanced distinctiveness can only be attributed to a mark based on intensive use and recognition on the market. In fact, it is just the opposite with respect to the goods in Class 1, as for these goods ‘O2’/’O₂’ has a certain meaning, as explained above.

The contested sign’s ending ‘frepak’ is meaningless and, therefore, inherently distinctive for the contested goods in both Classes 1 and 16 to an average degree. The stylisation of the verbal element of earlier marks 4) and 5) and of the contested sign is largely decorative and distinctive to no more than a low degree.

The signs have no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Moreover, it should be noted that the earlier marks are very short and, according to case-law, the shorter a sign, the more easily the public is able to perceive all its single elements. Therefore, small differences may frequently lead in short words to a different overall impression (06/07/2004, T‑117/02, Chufafit, EU:T:2004:208, § 48; 20/04/2005, T‑273/02, Calpico, EU:T:2005:134, § 39).

Visually and aurally, the signs coincide in the element ‘O2/O₂’, thus the whole of earlier mark 1) and of the only verbal element of earlier marks 4) and 5) is entirely incorporated at the beginning of the contested sign’s verbal element, ‘O₂frepak’, namely in the part where consumers normally focus their attention. The coinciding characters ‘O’ and ‘2’ will be pronounced separately and identically, irrespective of the different pronunciation rules in different parts of the relevant territory, for example, o-two in English, o-zwei in German, o-dwa in Polish or o-dos in Spanish.

The contested sign differs in its remaining verbal element, ‘frepak’, which has no counterpart in the earlier marks and which will produce a different sound. Although it is considerably longer than the coinciding part, it is located in a more distant position and, therefore, its impact on consumers’ perception of the signs will be lower, at least for the goods in Class 16 for which the ‘O2’/’O₂’ formula has a normal degree of distinctiveness.

The stylisation of earlier marks 4) and 5) and the contested sign is only slightly different and, in any event, not particularly distinctive and has a very limited impact on the consumers perception of the signs, if any at all.

Overall, as regards the goods in Class 16 and from the perception of the public at large with an average degree of attention, the signs are visually similar to at least a low degree, and they are aurally similar to an average degree. However, as regards the professional public with a higher than average degree of attention and the goods in Class 1, for which ‘O2’/’O₂’ has at most a very low degree of distinctiveness, the signs are visually and aurally similar to, at best, a very low 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 of oxygen. Although the remaining element of the contested sign, ‘frepak’, does not evoke any concepts, the public will notice its presence. Therefore, and bearing in mind the distinctiveness issues referred to above, the signs are conceptually similar to an average degree for the goods in Class 16, and conceptually similar to, at best, a very low degree for the goods in Class 1.

d) Distinctiveness of the earlier marks

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 marks have been extensively used and enjoy an enhanced scope of protection. The opponent did not invoke Article 8(5) EUTMR specifically in relation to goods in Classes 1 and 16 of earlier marks 1), 4) and 5). The opponent did claim, in general, that its earlier marks are highly distinctive for high tech goods, transport, vehicles, vehicle parts and toys, however, it specifically mentioned in the notice of opposition only the goods and services in Classes 9, 35, 36, 38 and 41. The opponent did not explicitly claim (and in any event did not prove) enhanced distinctiveness or reputation for any goods in Classes 1 and 16.

Consequently, the assessment of the distinctiveness of the earlier marks will rest on their distinctiveness per se. Considering what has been stated in section c) of this decision, and in line with court judgment (24/05/2012, C‑196/11 P, F1-Live, EU:C:2012:314), the distinctiveness of earlier marks 1) and 4) in relation to the opponent’s chemicals used in industry, science, as well as in agriculture, none of the aforementioned goods being gases for industrial purposes; chemical substances for preserving foodstuffs and adhesives used in industry in Class 1 must be seen as (at most) very low. However, the distinctiveness of earlier marks 1) and 5) for the opponent’s goods in Class 16 included for the purpose of the comparison, is normal.

e) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association that can be made with the registered mark and the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods in Class 16 are partly identical and partly at least similar, and they target the public at large with an average degree of attention. 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).

As established in section c) of this decision, for these goods the coinciding element ‘O2’/’O₂’ is distinctive to an average degree and the fact that it is wholly incorporated at the contested sign’s beginning, where it can be separated and perceived as an independent and isolated element, results in at least a low degree of visual similarity, as well as an average degree of aural and conceptual similarity between the signs.

It is settled case-law that 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. Therefore, the similarity at the beginning of the signs is of a particular importance in global assessment.

The presence of the remaining elements is not sufficient to dispel a likelihood of confusion. The ending ‘frepak’, although distinctive, is located in a more distant part of the contested sign and, therefore, it will attract the public’s attention less. The stylisation of the marks is only slightly different and not particularly distinctive, if at all.

Although the public will certainly notice certain differences between the signs, likelihood of confusion includes the likelihood of association, which is especially relevant in the present case. It 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. In the present case, even if the marks were not directly confused with one another, for the purposes of Article 8(1)(b) EUTMR, there is a likelihood of confusion when the average consumer, although aware of the differences between the signs, nevertheless assumes, owing to the use of the identical and distinctive element ‘O2’/’O₂’, that they are derived from the same undertaking or, at the very least, from economically linked undertakings.

Therefore, the Opposition Division considers that the differences between the signs are not sufficient to counterbalance the degree of similarity between them as regards the identical and at least similar goods in Class 16. Therefore, a likelihood of confusion, in the form of a likelihood of association, exists in respect of these goods.

However, the same does not hold true for the goods in Class 1. A differentiation should be made according to the distinctive character of the coinciding element for these goods, and the degree of attention of the relevant public.

Although the goods in Class 1 are identical and the similarity between the signs occurs at their beginning, the coinciding element ‘O2’/’O₂’ is at most very weak for these goods. In addition, the relevant public for these goods is the professional public displaying a higher than average degree of attention and this public will immediately understand the informative content of ‘O2’/’O₂’. Therefore, the importance of this coinciding element in the analysis of a likelihood of confusion cannot be overestimated and it cannot give rise to more than a very low degree of visual, aural and conceptual similarity between the signs.

The attention of the relevant public will be attracted by the additional fanciful verbal element of the contested sign, ‘frepak’, which has no counterpart in the earlier marks and is the longest and, by far, the most distinctive element of that sign.

While a company is certainly free to choose a trade mark with a low or even non-distinctive character, including marks with descriptive and non-distinctive words, and use it on the market, it must accept, however, in so doing, that competitors are equally entitled to use trade marks with similar or identical descriptive components (23/05/2012, R 1790/2011‑5, 4REFUEL (FIG. MARK)/REFUEL, § 15). This implies that the scope of protection of that mark, as having a weak distinctive character, is weaker than that of a mark with normal distinctive character (11/10/2013, R 1252/2012‑2, FLOROVIT / FLORA FIT, § 35). Therefore, in such cases, even small differences may be sufficient to exclude a risk of confusion.

Based on the overall assessment of the earlier marks and the contested sign, the Opposition Division takes the view that the coincidence in (at most) a very weak element of the signs is not sufficient to trigger a likelihood of confusion, including a likelihood of association, in respect of the contested goods in Class 1. The professional public displaying a higher than average degree of attention will be able to safely distinguish the marks under comparison. Moreover, taking into account the differences between the signs, consumers are not likely to make assumptions regarding the commercial origin of the goods or, indeed, economic links between commercial undertakings, merely on the basis of the coincidence in, at most, an element of the signs that is distinctive to a low degree.

According to the principle of interdependence, a lesser degree of similarity between the signs may be offset by a greater degree of similarity between the goods and services, and vice versa. The Opposition Division took this principle into account when assessing the likelihood of confusion, and the fact that the goods in Class 1 are identical cannot, in this case, compensate for the differences between the signs.

For the sake of completeness, it is noted that the opponent argued that it had trained consumers to its uses of the mark ‘O₂’ either alone or with a number of different elements, such as O₂ SHOP, O₂ SIP TRUNKING, O₂ Health, O₂ Money, O₂ Music, etc. The opponent did not explicitly claim that these marks, all characterised by the presence of the same component ‘O₂’, constitute a ‘family of marks’ or ‘marks in a series’. Nevertheless, the Opposition Division will consider this possibility. In the opponent’s view, such a circumstance is liable to give rise to an objective likelihood of confusion insofar as the consumer, when confronted with the contested mark, which contains the same element as the earlier marks, will be led to believe that the goods identified by that mark may come from the opponent.

In fact, the concept of the family of marks was exhaustively analysed by the General Court in the ‘Bainbridge’ case (23/02/2006, T‑194/03, Bainbridge, EU:T:2006:65). When an opposition to a European Union trade mark is based on several earlier marks and those marks display characteristics that give grounds for regarding them as forming part of a single ‘series’ or ‘family’, a likelihood of confusion may be created by the possibility of association between the contested trade mark and the earlier marks forming part of the series. In the present case, the opponent did not base its opposition on the marks to which it refers as belonging to the same family. The marks that form the basis of this opposition consist exclusively of the elements ‘O2’ or ‘O₂’. In addition, the opponent did not argue that these marks constitute non-registered trade marks and did not indicate which specific goods or services they were used for, and in which markets of the relevant territory. Therefore, the family of marks cannot be established.

Considering all the above, the similarity between the marks is not sufficient to trigger a likelihood of confusion on any part of the public for the goods in Class 1. Therefore, the opposition based on Article 8(1)(b) EUMTR and directed against these goods must be rejected.

However, as noted above, the Opposition Division finds that there is a likelihood of confusion for the relevant public for the goods in Class 16 and, therefore, the opposition is partly well founded in this respect on the basis of the opponent’s earlier marks 1) and 5). It follows from the above that the contested trade mark must be rejected for all the goods in Class 16 found to be identical or at least similar to those of the earlier trade marks.

As earlier marks 1) and 5) lead to the success of the opposition and to the rejection of the contested trade mark for all the goods in Class 16, there is no need to examine the other earlier rights invoked by the opponent in this respect (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268). Likewise, since the opposition is fully successful for the contested goods in Class 16 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 in relation to these contested goods.

As regards the contested goods in Class 1, the opponent also based its opposition on the other goods and services of earlier marks 1), 4) and 5), and on the earlier marks 2) and 3), registered for the goods and services listed above. The Opposition Division will not fully transcribe these goods and services due to the lengthy lists. However, they can be found in the notice of opposition, which can be accessed through https://euipo.europa.eu. These signs are identical or nearly identical to the ones that have been compared above and for which the opposition failed under Article 8(1)(b) EUTMR (although the goods in Class 1 were found identical). Therefore, the outcome cannot be different on the basis of these marks, and goods and services that are identical, similar to varying degrees or dissimilar.

Therefore, no likelihood of confusion exists for the contested goods in Class 1 and any of the goods and services of earlier marks on which the opposition is based.

The examination of the opposition will continue under the grounds of Article 8(5) EUTMR with respect to the goods in Class 1.

REPUTATION — ARTICLE 8(5) EUTMR

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

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

 The signs must be either identical or similar.

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

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

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

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

a) Reputation of the earlier trade marks

According to the opponent:

 earlier mark 1) ‘O2’ (word) has a reputation in the European Union for all the services in Classes 35 and 36;

 earlier mark 2) (figurative) has a reputation in the European Union for all the goods and services in Classes 9, 35, 36, 38 and 41;

 earlier mark 3), (figurative), has a reputation in the European Union for all the goods and services in Classes 9, 35, 36, 38, 41.

For reasons of simplification, all references to the ‘O₂’ or ‘O2’ brand are references to these earlier marks (and their representations, where applicable) and all references to the goods and services in Classes 9, 35, 36, 38 and 41 are references to the respective goods and services of these earlier marks, for which reputation was claimed in the notice of opposition.

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

The contested trade mark has a filing date of 18/09/2018. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the relevant territories prior to that date. The evidence must also demonstrate that the reputation was acquired for the goods and services for which the opponent has claimed reputation, namely all the goods and services in Classes 9, 35, 36, 38 and 41 of earlier marks 1), 2) and 3). They include telecommunications-related apparatus, like mobile telecommunication apparatus; telecommunications network apparatus, and other more or less specialised goods, mainly for scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching purposes (Class 9), and services related mainly to advertising, business management, business administration, office functions, accounting, retail sale (Class 35), financial matters, real estate (Class 36), telecommunications (Class 38) and education, entertainment, sporting and cultural activities (Class 41). The Opposition Division will not fully transcribe these goods and services due to the lengthy lists. However, they can be found in the notice of opposition, which can be accessed through https://euipo.europa.eu.

On 27/06/2019, the opponent submitted evidence to support this claim. The evidence consists, inter alia, of the following documents:

- Witness statement by Peter Holmes, Director of Brand for Telefónica Europe plc, one of the subsidiary companies from the opponent’s group of companies. Mr Holmes states that he has been associated with this group since 2007.

   Mr Holmes briefly sets out the history of the company, which started in 2001 in the United Kingdom, by its demerger from British Telecom (Exhibit PH3). He also presents, year by year, the successes of the opponent’s brand, which was launched in the middle of 2002 (Exhibit PH4). A huge number of press releases, media coverage, awards, examples of marketing, advertising and sponsorship activities and market studies are referred to. The materials refer to, inter alia, a variety of services offered and mobile devices marketed by the opponent and the date the company commenced trading stock on the London Stock Exchange. Given the extensive nature of the material provided, Mr Holmes highlights several important events (and press releases) such as, in 2002, the implementation of the first wireless email solution; the huge growth of its client base in 2002; a sponsorship agreement with Arsenal FC whereby O2 became its exclusive mobile communications partner (in April 2002) and the opponent’s significant revenues (with the service revenue growing by 17,7% to GBP 3 672 million and the total revenue by 11,5% to GBP 4 276 million). Mention is made of the fact that O2 Germany topped 4 million customers; reference is made to agreements with high profile IT companies to market and distribute mobile data services and of the development of new messaging and interactive services with Arsenal FC, Bayer Leverkusen and Big Brother 3. The opponent was the UK market leader for SMS. Press releases mention high profile sponsorship of ‘Big Brother’, which resulted in raising the company’s profile thanks to the large viewing figures associated with this prime time reality programme.

 In evidence concerning 2003 reference is made to: the opponent as being the top text messaging provider, handling on average more than 30 million messages per day; provision of a range of interactive mobile services for ‘Pop Idol’ (popular reality show); the launch of ‘Tesco Mobile’, 50-50 joint venture, offering mobile services in Tesco stores across the UK, using the opponent’s technology and network; the launch of a new mobile video service in the UK, including exclusive Rugby World Cup content, enabling customers to download and stream video content; the launch of ‘O2 Music’, Europe's first mobile ‘over the air’ music download service enabling customers to select, download and store the latest chart hit and popular music via their mobile handset onto a specially designed ‘O2 Digital Music Player’ (in a partnership with world renown labels). Another press release refers to online subscription growing by 5% per month and the company’s online channel being the most popular in Europe, signing up a total of one million online customers. References to independently audited figures (25/11/2003) showing that the company has the best UK mobile call success rate ever, beating all figures previously published by Oftel (an independent regulator and competition authority for the UK communications industries, with responsibilities across television, radio, telecommunications and wireless media).

 2004 evidence includes information regarding the expanse of the opponent’s services and its further growth. Of particular interest and dated 26/05/2004, a press release announced the partnership of the company with the English National Opera (ENO) regarding the first ever live opera concert in Trafalgar Square. Further partnerships with sports bodies, including Arsenal FC and Premier Rugby, are mentioned as well as the opponent being selected by the National Lottery operator Camelot to provide the SMS messaging capability that will help users to play draw-based lottery games via text message.

 2005 includes evidence that mention further contracts and sponsorships (e.g. announcement of sponsorship of The O2 in London in a multi-year deal worth GBP 6 million per year). It refers to the launch of ‘Mobile TV’ and states that Tesco Mobile reached the one million customer milestone.

 2006 includes further press releases regarding a partnership with BMW, new platforms for further interactive services and a contract awarded by the UK government which concerns the provision of fire and rescue services with a new secure and highly resilient digital radio system and a contract with E.ON Bayern that comprises the use of energy completely from renewable sources. Press release dated 19/09/2016 announces sponsorship of another O2 Wireless Festival with The Who, Depeche Mode, David Gray and James Blunt and offering mobile ticketing for the first time.

 Evidence for 2007 includes details concerning the opponent’s intention to improve response times and enhance patient care for Welsh ambulance services, announcing that the Welsh Ambulance Service NHS trust has signed a contract worth GBP 32 million with the opponent for the provision of advanced, secure digital communications; information concerning a contract with the AA (Automobile Association in the UK) until 2011; further information regarding broadband improvements; the launch of 02 WALLET which paves the way for the mass market use of mobile phones to pay for purchases or travel around London. Reference is also made to the ‘best service’ accolade and the opponent being named the 5^th best place to work as well as the fact that the opponent will be the exclusive UK carrier for Apple's iPhone.

 For 2008 amongst the press releases are those that show that the opponent has joined forces with LP+ to bring mobile learning to UK schools, further references to improved services and partnerships and on 27/06/2008 a feature entitled ‘The O2 celebrates its first birthday’ discussing the success of the venue. Reference is made to the opponent’s plans to launch a GBP 6 million marketing campaign and 02 Germany’s plans to increase the number of shops across Germany to 1 100. According to the press release of 28/02/2008, O2 Ireland will be the exclusive Irish carrier for Apple's iPhone and, according to the press release of 11/06/2008, Telefónica will distribute the Apple’s iPhone in 12 Latin American countries and the Czech Republic.

 In 2009, of particular interest is a release regarding the O2’s expansion into personal finance with its ‘O2 Money’ and into the laptop market. Deutsche Post World Net, the No. 1 global express and logistics provider with its DHL brand, selected Telefónica to manage its communications services across 28 European countries over the next five years. Mention is made of the fact that O2 ranks highest in customer satisfaction among UK fixed and mobile broadband Internet Service Providers (according to the J. D. Power and Associates 2008 UK Broadband ISP Customer Satisfaction Study).

 Information for 2010 includes details regarding the opponent’s social action with GBP 5 million investment in young people; the O2 brand’s further expansion into new fields and markets, such as the launch of the first location-based mobile marketing, ‘O2 Health’ to deliver better self care for patients and smarter working practices for staff, and the launch of a market leading GBP 5 per month mobile broadband tariff.

 In 2011, the opponent’s media service, ‘O2 More’, reached two million customers since its launch in November 2009; the opponent was the first to switch on new superfast 3G 900Mhz network and it broke a new Guinness World Record for recycling thousands of mobile phones via O2 Recycle; the opponent announced ‘O2 Lease’, the first smartphone leasing programme in the UK for consumers. In addition, reference is made to ‘The O2’ shows and the ‘O2 Wake Up Call app, as part of its ‘Get Up for England’ campaign.

 Documents for 2012 give information about the signing of the 4 year partnership renewal with the Rugby Football Union; the release of the three year sustainability plan, a flexible working pilot in the opponent’s Slough headquarters and ‘Help at Hand’, the UK’s first telecare service built around mobile technology. The collaboration between the opponent and Nike to create a digital sports club, delivered via mobile app is mentioned.

 For 2013 there are a variety of press releases concerning O2 and its media services, including O2’s Exclusive Priority Partnership for Beyoncé’s tour; creation of first joint venture between banks (CaixaBank, Santander) and telecom (Telefónica) to develop new digital businesses; the launch of the 4G network in London, Leeds and Bradford, reaching five million people and the conclusion of the agreement to deliver communications services as part of the Smart Meter Implementation Plan of Great Britain worth GBP 1.5 billion.

 In 2014, of particular interest is information regarding the launch of ‘Wear the Rose', 360-degree virtual reality sports experience; the announcement that the opponent would be the exclusive distributor of the 1^st smartphone designed by Amazon (Fire) and that in fewer than 3 years from the launch of its first hot-spot, ‘O2 Wifi’ had signed-up 10 million customers, becoming the fastest growing Wifi network (measured by growth in registered users), with 500 000 new registrations per month.

 In 2015, the opponent partnered an advertising campaign ’#WearTheRose in 2015’; announced an exclusive partnership with Channel 4 around the broadcaster’s new digital TV service All 4; O2 Think Big started a new initiative to help unemployed young people gain work experience and get their foot on the career ladder through rugby and the O2 Academy opened three new venues in London, Manchester and Birmingham named O2 Institute Birmingham, O2 Forum Kentish Town and O2 Ritz Manchester. In addition, O2 retained the ‘Website of the Year’ trophy.

 In 2016, of particular interest is information regarding the opponent’s launch of the UK's first smartwatch with embedded SIM, the Samsung Gear S2 classic 3G and extension of the partnership between the opponent and England Rugby until September 2021. The opponent received the awards ‘Excellence in Managed Services’ and ‘Team of the Year’ for marketing.

 Information for 2017 includes details regarding the opponent’s partnership with AEG for The O2, which secured the opponent as The O2’s naming rights partner for a further ten years, and the opponent’s ‘10^th Birthday’ concert which was to host musicians such as, inter alia, Ed Sheeran and Celine Dion; the opponent’s GBP 80 million investment in the London network; launch of the new campaign in support of the England Women’s Rugby Team, defending their world title; and O2 Gurus delivering digital boot camps across South Wales.

 In 2018, the opponent promoted live music in its new ’#FollowTheRabbit’ campaign; it launched 5G test bed at the O2 and obtained over GBP 500 million worth investment in the new mobile airwave.

Preliminary comments on the evidence

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

The opponent stated that due to its large-scale advertising and promotion, combined with extensive sales, the O2 brand has achieved massive recognition in the marketplace and has come to be identified uniquely with the opponent in the minds of consumers. The opponent claims that its company is one of the most important players in the mobile telecommunications field. The opponent refers to an advertising awareness study conducted between 2002 and 2004 in which the opponent came second and another from 2013-2014 placing the opponent in first place.

The witness statement is fully backed up by press releases and copies from the relevant media. Several awards that have been won are mentioned and the exhibits show that in 2003-2004 the O2 brand was awarded the ‘Business Superbrand’ and the ‘Cool Brand Leader’ award. The publication ‘Business Superbrands’ lists the 60 strongest business-to-business brands on an annual basis, the opponent’s intensive launch marketing campaign has been described as follows: ‘at launch in May 2002, it began its high-profile brand building campaign, using the visually striking oxygen bubbles in blue water image that has become its trade mark symbol. By the end of the launch phase, which involved advertising across TV, print and poster media supported by direct marketing, O2 had become a well-known brand, achieving levels of recognition on a par with its rivals’. Throughout the following years, the opponent continued investing substantial amounts in advertising and marketing. As can be seen in the Advertising Exposure and Spend 2006-2009 document (Exhibit PH6), the overall advertising spend per year between these dates was very significant (the exact details are marked confidential). This document also summarises the most significant advertising campaigns and provides details of high-profile exclusive products, details of TV campaigns and TV/radio sponsorships. According to the witness statement, the advertising expenditure was also this high in 2010-2014.

According to the witness statement, by 2004, the O2 brand had already won the Institute of Practitioners in Advertising Award (IPA), an award supported by the Financial Times, inter alia, and mentioned as the ‘most prestigious advertising award a brand can win’. The publication mentions, with reference to an NOP survey, ‘One of O2’s most impressive achievements has been how rapidly it has established itself in the market …’ Further awards include the ‘Marketing Initiative of the Year Award’ in November 2003 at The Utility Industry Achievement Awards; the award for ‘Advertiser of the Year’ awarded by the National Business Awards, also in November 2003; ‘Best Network of the Decade’ in October 2004 for showing the most innovation in encouraging the uptake of mobile data over the last ten years; and again in November 2004, at the IPA Advertising Effectiveness Awards, the Blue Ribband Grand Prix plus an additional Gold Award, acknowledging the company as having run the UK’s most successful advertising campaigns for the preceding two years. A number of other awards are mentioned in 2006 and 2007 for very similar feats. In 2008, ‘The O2’ (arena) won the ‘Venue of the Year’ at the Music Week Awards 2008. Together with AEG Europe it won the ‘Music and Brand Partnership of the Year’ category.

In 2010, the opponent won the Gold IPA Effectiveness award for its O2 campaign and IPA Gold for its Priority campaign as well as IPA Best Use of Media for its O2 and Priority campaigns. In 2012, the brand ranked 8th in ‘Brands most admired by Marketers in the UK’. In 2013, it won a Brand of the Year title by IPM Awards, while O2 Academies won Gold in the Sponsorship Marketing Category and Silver in the Long-Term Marketing Category, by Marketing Agencies Associations Worldwide Awards. In 2014, the brand won, inter alia, the Shorty Award for Best Use of Social Media for Telco (for the ‘Be More Dog’ campaign) and the Cannes Lion for Innovative Use of Technology (for ‘Wear the Rose’). In 2015, O2 won Marketing Society Brand of the Year and Website of the Year (for www.o2.co.uk as the ‘Overall winner’ of the ranking, out of 227 websites nominated in 19 categories), as well as several other awards for sponsorship. Furthermore, Telefonica UK was chosen as Britain’s Most Admired Company 2015 in the category ‘Telecoms’ by MT Management Today.

Also mentioned in the statement and attached in the exhibits is Millward Brown Optimor’s BrandZ Top 100, a ranking which identifies the world’s most valuable brands measured by their dollar value. The opponent’s company occupies the 77th spot on the 2009 list with a value of USD 8 601 000 000 and is considered the 4th most valuable brand in the UK (after Vodafone, Tesco and HSBC). By 2010, O2 occupied the 70th spot with a 23% increase in Brand Value and also ranked 14th in the Top 20 Risers Section. According to the statement, in 2011, it occupied the 74th spot with an estimated brand value of USD 11 694 000 000, an increase of 10%. In 2012, there was an estimated brand value of USD 8 600 000 and in 2013, an estimated brand value of USD 6 000 000, ranking 9th in the UK. In 2014, the estimated brand value fell 5% to USD 5 656 000 following a decline in financial metrics.

Also referred to, and supported by exhibits, is the sponsorship of music festivals and events such as the ‘O2 Wireless Music Festival’ in Hyde Park, London (more than 30 000 visitors per day). By 2008, the festival had already gathered more than 100 000 participants over a single weekend. Numerous other such events are referred to as well as ‘The Brits’ which is the most prestigious music awards ceremony in the UK. In this regard the venue ‘The O2’ is referred to as having a 23 000-capacity arena, live music club, theatre, flexible exhibition space, deluxe multi-screen cinema, restaurants, cafés, bars and a proposed London regional casino. The musical and entertainment content is then brought exclusively to ‘O2’ phones and devices, and customers enjoy certain privileges such as the first chance to book tickets.

Reference is also made to ‘The David Beckham Academy’, which is one of the first parts of a development project managed by its partner AEG and aims to transform the area into an entire entertainment and sporting destination. There are also eleven music venues across the UK (several places in London, Birmingham, Bristol, Glasgow, Liverpool, Newcastle, Oxford, Sheffield and Leeds) that until 2013 (at least) had been re-branded as an ‘O2 Academy’ to promote music. Also included are adverts from O2’s wireless festival, information concerning the O2 arena where a range of concerts is held and where the finals of the Olympic gymnastics and basketball finals are to be held. Extremely successful groups and artists (AHA, Depeche Mode, Michael Jackson) are mentioned as having performed there. In 2011, the O2 arena in London was voted Best International Arena of the Year at the Pollstar Concert Industry Awards in Los Angeles for the fourth time in a row since its opening in 2007. During this period, the venue had sold over 11 million tickets.

Mention is also made of heavy sponsorship of the England Rugby Team since 2003 and the fact that this sponsorship was extended until September 2021, making it one of the longest-standing sports sponsorships globally. In the years directly preceding the date of the contested application, the opponent won several sponsorship awards, e.g. in 2016 Sponsorship of the Year for England Rugby, Best Rugby World Cup Sponsor and Best Sports Sponsorship for England Rugby and in 2017 Best Live Music Sponsorship for O2 Academies and Best Sports Sponsorship for England Rugby.

Conclusion on reputation

The evidence is extensive and it is clear that the ‘O2’ brand has been subject to a long-standing and intensive use and is generally known in the relevant market (at the very least in the United Kingdom), where it enjoys a consolidated position among the leading brands. This has been attested by diverse independent sources as annexed in the statement. The sales figures, marketing expenditure, outcomes from opinion polls and the number of awards going back to at least 2004, clearly show the success of the marks, their continual growth and market presence as well as an innovative character that is constantly expanding and developing.

However, it does not apply to all the earlier marks and all the goods and services for which reputation has been claimed. It is plain from the evidence that the opponent has successfully proved that it has gained a strong reputation for all the services in Class 38. The reputation of the opposing brand also extends to the opponent’s education; entertainment; sporting and cultural activities in Class 41 of earlier marks 2) and 3), as the opponent has been involved for a long time in a number of activities relating to these fields, either through organisation of events (e.g. O2 arena or O2 Think Big initiatives) or their heavy sponsorship (e.g. of the England Rugby Team).

The opponent has submitted voluminous documentation in this regard concerning not only its telecommunication services in Class 38, but also regarding its expansion into the education, entertainment, sporting and cultural industry as well as the development of its technical expertise in this area. What started as partnerships or sponsorships with industry players has quickly grown into the opponent’s brand becoming known and reputed as one of the actual players. This is due to the opponent’s investments and efforts made in this direction, as can be inferred from the evidence, the awards won (including for the sponsorships) and arguments presented by the opponent. As to the goods in Class 9 of earlier marks 2) and 3), the evidence clearly relates to telecommunications apparatus.

Summing up, the evidence shows that earlier trade marks 2) and 3) enjoy a high reputation for all their core services in Class 38 and an average reputation for, at least, education, entertainment, sporting and cultural services in Class 41 (earlier mark 2) and some goods in Class 9, namely those related to telecommunications apparatus. The reputation is confirmed at the very least for the United Kingdom, which is sufficient for concluding that these earlier trade marks have a reputation in the European Union. The Court indicated that an EU trade mark must be known in a substantial part of the EU by a significant part of the public concerned for the goods or services covered by that trade mark. In view of the facts of that particular case, the territory of the Member State in question (Austria) was considered to constitute a substantial part of the territory of the EU (06/10/2009, C‑301/07, Pago, EU:C:2009:611, § 29-30).

However, the evidence does not succeed in establishing that the earlier trade marks have a reputation for the remaining goods and services, in particular the goods of earlier marks 2) and 3) in Class 9 that are not related to telecommunications apparatus and the services in Class 41 that are not related to education; entertainment; sporting and cultural activities and any of the services in Classes 35 and 36. There was very little or no evidence regarding these goods and services. The opponent claimed that it has a presence in a number of sectors apart from its core telecommunications such as the health, financial services and insurance sectors and retail of fast-moving consumer goods. Indeed, the evidence demonstrates some use of the earlier mark in some of these fields, but it is not conclusive and does not allow the Opposition Division to draw unambiguous conclusions regarding any degree of the earlier marks’ reputation for any of these remaining goods and services.

The opponent did not claim reputation for any goods in Class 1 or any related goods and services, and, indeed, the evidence is insufficient to establish the earlier mark’s reputation (or enhanced distinctiveness) in relation to any of them.

b) The signs

The opponent did not prove reputation for any of the services of earlier mark 1) for which reputation was claimed and the examination will continue without this mark.

As regards the earlier marks 2) and 3), they are essentially identical to the earlier marks 4) and 5), which have already been compared with the contested sign above under the grounds of Article 8(1)(b) EUTMR. Reference is made to those findings, which are equally valid for Article 8(5) EUTMR, as the very minor variations in the shape, size and/or colour of these marks does not alter the findings.

c) The ‘link’ between the signs

In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria. The establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

As seen above, the earlier marks enjoy a high degree of reputation for services in Class 38 and an average degree of reputation for certain goods and services in Classes 9 and 41. The signs are similar. The inherent distinctiveness of the earlier marks for the goods and services in Classes 9, 38 and 41 for which reputation has been proved is normal, as ‘O₂’ is not descriptive, allusive or otherwise weak in relation to these goods and services.

The opposition remains directed against chemical additives for food; lime chloride; kieselgur; magnesium chloride; silica gels; activated carbon; bentonite; carbon for filters; kaolin; silicone liquid elastomers; preservatives for metals [chemical]; test paper, chemical; chemical substances for preserving foodstuffs; glue for industrial purposes; antioxidants for use in the manufacture of pharmaceuticals; antioxidants for use in the manufacture of food supplements in Class 1, namely various chemicals used in industry, science, agriculture; chemical substances for preserving foodstuffs and silicone liquid elastomers. These contested goods clearly diverge in their relevant nature, purpose, methods of use, distribution channels and outlets when compared with the goods and services for which reputation has been found. In addition, they normally have different providers and are neither complementary nor in competition. Indeed, on the whole, the contested goods are very far removed from the goods and services for which the earlier marks have a reputation and, very clearly, there can be no risk of confusion between them.

While the relevant sections of the public of the conflicting marks may overlap to some extent, the goods and services at issue are so different that the contested sign is unlikely to bring the earlier marks to the mind of the relevant public.

Despite the innovative character of the earlier marks and the opponent’s expansion into various sectors, which, however, mainly concern service-based industries, the sectors to which the contested goods pertain are very different. The chemical sector is a very specific field in which professional, academic and technical knowledge is paramount, and this is clearly very different from the opponent’s area of expertise. The relevant public will clearly not expect the earlier marks to be linked with these fields. The huge difference in usage between the goods and services makes it very unlikely that the public will make a link between the signs in dispute, which is essential for the application of Article 8(5) EUTMR. It is even less likely that, when purchasing the contested goods, the public will link these to a mark that is in fact reputed for goods and services that have nothing relevant in common whatsoever.

Even though the signs share ‘O₂’, this does not mean that the relevant public is likely to establish a link between them. Given that the contested goods may have a direct impact on consumers’ health or on the environment, the marks are likely to be closely inspected visually before the purchase. The public’s degree of attention is higher than average and the differences between the signs will be perceived by the public. It is recalled again that the length of the signs may influence the effect of the differences between them. The shorter a sign, the more easily the public is able to perceive all of its single elements. The earlier marks are very short, while the contested sign is much longer, and the differing part has a normal degree of distinctiveness.

Finally, as explained in the case mentioned above (03/07/2012, R 2304/2010‑2, O2 0% MDI emission (FIG. MARK) / O2 et al., § 54), it is clear that even a mark which may be highly distinctive inherently and, moreover so, by extensive use, cannot be entitled to protection against a mark in a completely different area in which the same element is descriptive (or weak). Thus, the distinctive character and even widespread reputation cannot be used against the same mark being used in a completely different area in which the same designation is purely descriptive (or weak).

In the present case, the similarities stem from (at most) a very weak element of the contested sign. Therefore, despite the earlier marks’ reputation in Classes 9, 38 and 41, the contested sign in relation to goods in Class 1 is unlikely to bring the earlier trade marks to the mind of the average consumer.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say, establish a ‘link’ between them.

As no ‘link’ will be established between these marks and the contested sign in relation to the contested goods in Class 1, the opposition must also be rejected insofar as it is based on 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. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

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

The Opposition Division

Liliya YORDANOVA

Jakub MROZOWSKI

Reiner SARAPOGLU

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.