OPPOSITION No B 3 090 368

Ramona Cătălina Fîlfan, Aleea Magnoliei nr. 4, bl. L13, sc. B, et. 1, ap. 60, Constanta, Romania (opponent), represented by Eugen Ardeleanu, Aleea Fetesti Nr. 11, bl. F1 ap. 26, Sector 3, 032562 Bucuresti, Romania (professional representative)

a g a i n s t

AMS Sourcing B.V., WTC Schiphol Airport D-5, Schiphol Blvd 245, 1118 BH Schiphol Airport, the Netherlands, and Coopernic SCRL, Avenue de la Toison d'Or 56, 1060 Brüssel (applicants), represented by Dr. Kunz-Hallstein Rechtsanwälte, Galeriestr. 6A, 80539 München, Germany (professional representative).

On 17/11/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 090 368 is partially upheld, namely for the following contested services:

Class 35: Retail and wholesale services relating to high consumption goods and fast-moving consumer goods (FMCG), namely nutritional supplements, over-the-counter medications; grouping for third parties of fast-moving consumer goods (FMCG) and high consumption goods, namely nutritional supplements, over-the-counter medications, enabling consumers and traders to examine and buy them at their convenience; information services relating to the above mentioned services; advisory and consultancy relating to the above mentioned services.

2. European Union trade mark application No 18 019 408 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against some of the services of European Union trade mark application No 18 019 408 for the figurative sign , namely against some of the services in Class 35. The opposition is based on Romanian trade mark registration No 120 219 for the figurative mark . The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

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

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

The applicants requested that the opponent submit proof of use of the trade mark on which the opposition is, namely Romanian trade mark No 120 219 for the figurative mark .

The date of filing of the contested application is 06/02/2019. The opponent was therefore required to prove that the trade mark on which the opposition is based was put to genuine use in Romania from 06/02/2014 to 05/02/2019 inclusive.

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

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

Class 5: Pharmaceutical and veterinary products (alimentary supplement).

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

On 16/12/2019, in accordance with Article 10(2) EUTMDR, the Office gave the opponent until 21/02/2020 to submit evidence of use of the earlier trade mark. On 28/01/2020, within the time limit, the opponent submitted evidence of use.

The evidence to be taken into account is the following:

Annex 1

- several invoices concerning pharmaceutical products (i.e. food supplement – prebiotic) and sales management documents (and also several invoices concerning advertising materials). They are partly in Romanian and partly in English, and dated from 13/02/2014 to 04/02/2019. On the invoices concerning pharmaceutical products (i.e. food supplement – prebiotic) appear the name of the licensor, that is, ‘INNER CHI NATURE SRL’, and the mark ‘SINERGIN’. The invoices concerning pharmaceutical products (i.e. food supplement – prebiotic) are either issued by ‘INNER CHI NATURE SRL’ for various clients in Romania or issued by the manufacturer of the goods bearing the mark ‘Sinergin’, namely ‘KENDY LTD’ for ‘INNER CHI NATURE SRL’. The prices are given respectively in the Romanian currency, namely LEI, and in EURO. The sales management documents show the number of goods sold under the mark ‘SINERGIN’ and relate to the period from 01/03/2014 to 31/01/2019.

Annexes 2-5

- several pictures of exhibition stands, copies of exhibition leaflets, pictures of some packages and advertising materials. They are partly undated and partly dated within the relevant period. They are in Romanian (partly translated into English) and partly in English. On most of these materials the mark ‘Sinergin’ appears, for example

, , , and

and/or the name of the licensee, such as

and .

The goods bearing the mark ‘Synergin’ are described as ‘insulin enriched with oligofructose’, ‘food supplement’ and ‘inner balance for quality life’. According to a leaflet ‘Mechanism of action. Insulin from chicory contributes to the normal functioning of the intestine by increasing the frequency of the stools. … Sinergin can be taken, at the recommendation of your doctor’. Furthermore, the ‘Sinergin’ is described as ‘the only prebiotic patented ... unique formula in Romania: - the modern treatment of chronic constipation; - adjuvent in the treatment of latent of manifest hepatic encephalopathy; - adjuvant in the treatment of ulcerative colitis and Crohn’s dicease’. The opponent highlights in its letter that ‘Sinergin is the only probiotic with the unique Beneo – Synergy1 patented formula’ and ‘probiotic administration reduces the risk of colorectal cancer’.

Furthermore, the opponent submitted a copy of the agreement of 01/02/2012 signed between the opponent, as a licensor, and ‘INNER CHI NATURE SRL’, as a licensee. According to this agreement ‘the licensor grants to the licensee exclusive rights on the territory of Romania, for using the trademark SINERGIN, registered under 120 219, for all the classes, as a results from the registration certificate attached to the present agreement’.

Assessment of evidence

The Court of Justice has held that there is ‘genuine use’ of a mark where it is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark. Furthermore, the condition of genuine use of the mark requires that the mark, as protected in the relevant territory, be used publicly and outwardly (11/03/2003, C‑40/01, Minimax, EU:C:2003:145; 12/03/2003, T‑174/01, Silk Cocoon, EU:T:2003:68).

The evidence submitted as proof of use can include documents such as invoices, price lists, affidavits, catalogues, surveys, turnover and sales figures, press cuttings, samples of products/packaging, advertisements, offers made to potential clients and other documents confirming that the mark has been genuinely used on the market. The opponent submitted some of the aforesaid documents, namely several invoices, some sales management documents, several pictures of exhibition stands, some copies of exhibition leaflets, some pictures of packages and some advertising materials. It should be emphasised that the final outcome depends on the overall assessment of the evidence in the particular case.

Some part of the evidence is in a language other than the language of the proceedings. First, it should be explained that the opponent attached at least partial translations of the documents into English (as some of the documents are in Romanian). Second, the opponent is not under any obligation to translate the proof of use, unless it is specifically requested to do so by the Office (Article 10(6) EUTMDR). Taking into account the nature of the documents that have not been translated and are considered relevant for the present proceedings, for instance the invoices, and their self-explanatory character, the Opposition Division considers that there is no need to request a translation.

Place of use

The evidence, namely the invoices (Annex 1) as well as several pictures of exhibition stands, copies of exhibition leaflets, pictures of some packages and advertising materials (Annexes 2-5), confirms that the place of use is Romania. This can be inferred from the addresses indicated in the invoices, and the fact that the documents are in Romanian and the prices are given in LEI. Therefore, the evidence relates to the relevant territory.

Time of use

Most of the evidence is dated within the relevant time period (e.g. all the invoices). Even though some of the evidence is undated or dated outside the relevant period, it can still be taken into consideration in conjunction with the other evidence that is dated within the relevant period, such as the invoices, as the undated evidence provides useful indications regarding the nature of use. In the present case, the undated evidence consists of pictures with samples of products and promotional materials, which demonstrate how the earlier mark was used. Therefore, the evidence refers to the relevant time.

Extent of use

As regards the extent of use, all the relevant facts and circumstances must be taken into account, including the nature of the relevant goods and the characteristics of the market concerned, the territorial extent of use, its commercial volume, duration and frequency.

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

In this respect it should be noted that the applicant argues that ‘the amount of pieces sold is very low. Bearing also in mind that the invoices are issued in Leu and there is an exchange rate of 0,21 Eur, the turnover generated is negligible’.

The Opposition Division is of the opinion that a sufficient duration of use is clearly indicated by the fact that the opponent submitted invoices, at least some for each year of the relevant period. With regard to the frequency of use, the invoices leave no doubt that sales transactions under the ‘Synergin’ trade mark were carried out regularly throughout the relevant period. The Opposition Division admits that the volume of the goods sold under the mark ‘Synergin’ and shown in the invoices was not significant. However, it should be noted that these invoices could be a sample of the total sales, and in any case the assessment in this respect entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa (08/07/2004, T-203/02, Vitafruit, EU:T:2004:225, § 42). Furthermore, the sale of the goods bearing the mark ‘Sinergin’ is confirmed in the sales management documents submitted by the opponent.

Therefore, the aforesaid argument of the opponent is unfounded and must be set aside.

Furthermore, the applicant puts forwards that ‘several invoices are issued by a Bulgarian company, a Kendy Ltd. There is no information on the relationship between the owner and this company’.

From the evidence it is clear that ‘Kendy Ltd’, a Bulgarian company, is an exporter of a product bearing the mark ‘Sinergin’ which is sold to ‘INNER CHI NATURE SRL’. The latter is a Romanian entity which further sells this product to various clients in Romania. As it was mentioned above, ‘INNER CHI NATURE SRL’ is the licensor and the opponent is the licensee of the mark in question.

A typical case of use by third parties is use made by licensees. Use by companies economically related to the trade mark proprietor, such as members of the same group of companies (affiliates, subsidiaries, etc.) is similarly to be considered as authorised use (30/01/2015, T-278/13, now, EU:T:2015:57, § 38).

Therefore, the aforesaid argument of the applicant is unfounded and must be also set aside.

In the context of the global assessment of whether the earlier mark has been genuinely used, these circumstances indicate that the extent of use of the mark was sufficient. However, this applies only in relation to some of the registered goods in Class 5, as it will be shown herein below in the following section ‘Nature of use – use in relation to the registered goods’.

As to use of a trade mark and use of the mark as registered, the evidence, in particular the invoices and leaflets, show that the earlier sign was used in such a way as to establish a clear link between the goods and the company responsible for their marketing. Therefore, the evidence demonstrates that the opponent’s mark was used to identify the commercial origin of part of the goods in question (as it will be shown herein below in the following section ‘Nature of use – use in relation to the registered goods’).

The ‘Sinergin’ mark is registered as a figurative mark, namely , and is used by the opponent in a standard font (e.g. in the invoices). It does not however constitute use of a variant but use of the mark itself. Furthermore, with regard to some of the documents, the earlier mark is used in a slightly different form from the mark as registered, for instance by exchanging the font and background colours (e.g. ). Likewise, It does not however constitute use of a variant but use of the mark itself. In the present case the trade mark ‘Sinergin’ is clearly perceptible. Therefore, it is considered that the opponent’s trade mark ‘Sinergin’ was used as registered.

Nature of use - use in relation to the registered goods

Taking into account the evidence in its entirety, although the evidence submitted by the opponent is not particularly exhaustive, it does reach at least the minimum level necessary to establish genuine use of the earlier trade mark during the relevant period in the relevant territory.

It should be noted that the goods indicated in the evidence are well described in the evidence such as ‘insulin enriched with oligofructose’, ‘prebiotic’ and ‘food supplement’ which is used to treat specific diseases.

Bearing in mind the above, the evidence filed by the opponent does not show genuine use of the trade mark for all the goods covered by the earlier trade mark.

According to Article 47(2) EUTMR, if the earlier trade mark has been used in relation to only some of the goods or services for which it is registered it will, for the purposes of the examination of the opposition, be deemed to be registered in respect only of those goods or services.

According to case-law, when applying the abovementioned provision, the following should be considered:

…if a trade mark has been registered for a category of goods or services which is sufficiently broad for it to be possible to identify within it a number of sub‑categories capable of being viewed independently, proof that the mark has been put to genuine use in relation to a part of those goods or services affords protection, in opposition proceedings, only for the sub‑category or sub‑categories to which the goods or services for which the trade mark has actually been used belong. However, if a trade mark has been registered for goods or services defined so precisely and narrowly that it is not possible to make any significant sub-divisions within the category concerned, then the proof of genuine use of the mark for the goods or services necessarily covers the entire category for the purposes of the opposition.

Although the principle of partial use operates to ensure that trade marks which have not been used for a given category of goods are not rendered unavailable, it must not, however, result in the proprietor of the earlier trade mark being stripped of all protection for goods which, although not strictly identical to those in respect of which he has succeeded in proving genuine use, are not in essence different from them and belong to a single group which cannot be divided other than in an arbitrary manner. The Court observes in that regard that in practice it is impossible for the proprietor of a trade mark to prove that the mark has been used for all conceivable variations of the goods concerned by the registration. Consequently, the concept of ‘part of the goods or services’ cannot be taken to mean all the commercial variations of similar goods or services but merely goods or services which are sufficiently distinct to constitute coherent categories or sub‑categories.

(14/07/2005, T‑126/03, Aladin, EU:T:2005:288, § 45‑46.)

In the present case, the evidence proves use only for alimentary supplements - prebiotic. These goods can be considered to form an objective subcategory of pharmaceutical and veterinary products (alimentary supplement), namely alimentary supplements - prebiotic. Therefore, the Opposition Division considers that the evidence shows genuine use of the trade mark only for alimentary supplements - prebiotic. The opponent did not submit any evidence concerning other goods invoked.

Conclusion

Therefore, the Opposition Division considers that the evidence shows genuine use of

the trade mark only for alimentary supplements - prebiotic.

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

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

a) The goods and services

The goods on which the opposition, after examining the evidence on proof of use, is based are the following:

Class 5: Alimentary supplements – prebiotic.

The contested services are the following:

Class 35: Procurement of goods for others; procurement services for others [purchasing goods and services for other businesses]; sourcing services featuring high consumption goods and Fast-Moving Consumer Goods (FMCG), purchasing services; retail and wholesale services relating to high consumption goods and Fast-Moving Consumer Goods (FMCG), namely nutritional supplements, over-the-counter medications, plasters, materials for dressings; grouping for third parties of Fast-Moving Consumer Goods (FMCG) and high consumption goods, namely nutritional supplements, over-the-counter medications, plasters, materials for dressings, enabling consumers and traders to examine and buy them at their convenience; arranging of displays for commercial purposes; sales demonstration [for others]; price comparison services; sales promotion for others; information services relating to the above mentioned services; advisory and consultancy relating to the above mentioned services.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

An interpretation of the wording of the list of services is required to determine the scope of protection of these services.

The term ‘namely’, used in the applicant’s list of services to show the relationship of individual goods and services to a broader category, is exclusive and restricts the scope of protection only to the services specifically listed.

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.

It should be explained that retail is commonly defined as the action or business of selling goods or commodities in relatively small quantities for use or consumption rather than for resale (as opposed to wholesale, which is the sale of commodities in quantity, usually for resale).

In specific circumstances there exists similarity between goods and retail/wholesale services. Retail services concerning the sale of specific goods are similar to an average degree to these specific goods (20/03/2018, T-390/16, DONTORO dog friendship (fig.)/TORO et al., EU:T:2018:156, § 33; 07/10/2015, T-365/14, TRECOLORE / FRECCE TRICOLORI et al., EU:T:2015:763, § 34). Although the nature, purpose and method of use of these goods and services are not the same, it should be noted that they display similarities, having regard to the fact that they are complementary and that the services are generally offered in the same places as those where the goods are offered for sale. Furthermore, they are directed at the same public.

It should be also explained that grouping for third parties of Fast-Moving Consumer Goods (FMCG) and high consumption goods, namely nutritional supplements, over-the-counter medications, enabling consumers and traders to examine and buy them at their convenience is a synonym of retail services.

Furthermore, the goods appearing in Class 35, namely nutritional supplements, over-the-counter medications, are identical to the opponent’s alimentary supplements – prebiotic as there is an overlap between them.

Therefore, the contested retail and wholesale services relating to high consumption goods and Fast-Moving Consumer Goods (FMCG), namely nutritional supplements, over-the-counter medications; grouping for third parties of Fast-Moving Consumer Goods (FMCG) and high consumption goods, namely nutritional supplements, over-the-counter medications, enabling consumers and traders to examine and buy them at their convenience; information services relating to the above mentioned services; advisory and consultancy relating to the above mentioned services are similar to the opponent’s alimentary supplements – prebiotic. It should be also explained that information services relating to the above mentioned services; advisory and consultancy relating to the above mentioned services have some points in common with sale services as it was confirmed in the case law (e.g. 06/07/2020, R 2384/2019-1, PetsHome / Pets at home, § 72-74).

When goods sold at retail are dissimilar to the actual goods themselves, no similarity

can be found between them. In this respect it should be explained that plasters, materials for dressings that appear in Class 35 are dissimilar to the opponent’s alimentary supplements – prebiotic. They differ in their nature and purpose, producers and method of use. They do not have necessarily the same distribution channels. Furthermore, they are neither in competition with each other nor complementary to each other. Consequently, the contested retail and wholesale services relating to high consumption goods and Fast-Moving Consumer Goods (FMCG), namely plasters, materials for dressings; grouping for third parties of Fast-Moving Consumer Goods (FMCG) and high consumption goods, namely plasters, materials for dressings, enabling consumers and traders to examine and buy them at their convenience; information services relating to the above mentioned services; advisory and consultancy relating to the above mentioned services are dissimilar to the opponent’s alimentary supplements – prebiotic.

The remaining contested services, namely procurement of goods for others; procurement services for others [purchasing goods and services for other businesses]; sourcing services featuring high consumption goods and Fast-Moving Consumer Goods (FMCG), purchasing services; arranging of displays for commercial purposes; sales demonstration [for others]; price comparison services; sales promotion for others; information services relating to the above mentioned services; advisory and consultancy relating to the above mentioned services have no points of contact with the opponent’s alimentary supplements – prebiotic. They differ in their nature and purpose, distribution channels, producers and method of use. Furthermore, they are neither in competition with each other nor complementary to each other. Therefore, they are dissimilar.

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 contested services found to be similar to the opponent’s goods are directed at the public at large and at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the specialised nature and kind of treatment of the goods. It is apparent from the case-law that, insofar as pharmaceutical preparations, whether or not issued on prescription, are concerned, the relevant public’s degree of attention is relatively high (15/12/2010, T-331/09, Tolposan, EU:T:2010:520, § 26; 15/03/2012, T-288/08, Zydus, EU:T:2012:124, § 36). In particular, medical professionals have a high degree of attentiveness when prescribing medicines. Non-professionals also have a higher degree of attention, regardless of whether the pharmaceuticals are sold without prescription, as these goods affect their state of health. This would equally apply to alimentary supplements – prebiotic and the said sale services concerning nutritional supplements.

Given that the general public is more prone to confusion, the examination will proceed on this basis. It should be noted that a likelihood of confusion for only part of the relevant public is sufficient to reject the contested application.

c) The signs

Earlier trade mark	Contested sign

The relevant territory is Romania.

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 mark is a figurative mark composed of the word ‘Sinergin’, depicted in a rather standard font, whereas the contested sign is also a figurative sign consisting of the words ‘Synergyplus amsCOOPERNIC creating synergy’, written in rather standard black, blue and grey characters, and a depiction of a small star.

As regards the last two words of the contested sign, that is, ‘creating synergy’, taking into account that they are depicted in very tiny characters, and therefore barely legible and perceptible in comparison with other parts of the sign, the Opposition Division considers that they are negligible. A negligible element refers to an element that due to its size and/or position is not noticeable at first sight or is part of a complex sign, with numerous other elements. As these are likely to be disregarded by the relevant public, they will not be taken into consideration in the following comparison.

The word ‘Sinergin’ of the earlier mark does not exist as such in Romanian. However, it is very likely it will be associated by the relevant public with the Romanian noun ‘sinergie’ which means ‘the working together of several organs or agents for producing the same function’ (extracted from Dexonline Dictionary at https://dexonline.ro/definitie/sinergie on 12/11/2020), and/or with the Romanian adjective ‘sinergic’ which means ‘regarding synergy’ (extracted from Dexonline Dictionary at https://dexonline.ro/definitie/sinergic on 12/11/2020). As it has no direct meaning for the goods in question, it is distinctive.

The verbal element ‘Synergyplus’ of the contested sign does not exist as such in Romanian, neither. However, bearing in mind the above explanations concerning the Romanian words ‘sinergie’ and ‘sinergic’ and the meaning of the word ‘plus’ (explanations below), it is very likely that the relevant public will dissect the verbal element ‘Synergyplus’ into ‘Synergy’ and ‘plus’. It is strengthened by the fact that these elements are depicted in different font. It should be explained that the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T‑256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58).

The above explanations concerning the word ‘Sinergin’, especially its meaning and distinctiveness, shall apply accordingly with regard to the word ‘Synergy’ of the contested sign.

The verbal element ‘plus’ of the contested sign, that is, a word existing in Romanian (extracted from Dexonline Dictionary at https://dexonline.ro/definitie/plus on 12/11/2020), will be understood as an indication of higher quality products or services, namely as a purely laudatory, promotional message denoting a particular positive or appealing quality or function and, thus, not being distinctive in any way (15/11/2007, T-38/04, Sunplus, EU:T:2007:341, § 39, 42; 03/03/2010, T-321/07, A+, EU:T:2010:64, § 41, 42; 16/12/2010, T-497/09, Kompressor Plus, EU:T:2010:540, § 14, 21; 14/01/2016, T-535/14, VITA+VERDE / VITAVIT, EU:T:2016:2, § 43).

The letters ‘ams’ of the contested sign do not convey any immediate and clear meaning for the relevant public. As this verbal element has no meaning for the relevant public, it is, therefore, distinctive.

The verbal element ‘COOPERNIC’ of the contested sign would be most likely understood by the relevant public as a reference to the Polish astronomer – in Romanian ‘Copernic’ (extracted from Dexonline Dictionary at https://dexonline.ro/definitie/Copernic on 12/11/2020). As this verbal element has no meaning in relation to the services concerned, it is, therefore, distinctive.

The stylisation of the verbal elements in the contested sign is rather commonplace and plays a marginal role in the comparison. Likewise, the figurative device being a star is almost negligible and also plays a marginal role in the comparison.

Consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from top/left to bottom/right, which makes the part placed at the top/left of the sign (the initial part) the one that first catches the attention of the reader. Furthermore, the element ‘Synergyplus’ in the contested sign is the dominant element as it is the most eye-catching. Therefore, and bearing in mind the above explanations, the other elements will be either non-distinctive (i.e. ‘plus’), secondary (i.e. ‘amsCOOPERNIC’) or marginal (i.e. the stylisation of the letters and the colors used in the signs), and the relevant public will focus its attention on the elements ‘Sinergin’ and ‘Synergy’ in the signs in conflict.

Visually, the signs coincide in ‘S*nerg**’ of the earlier mark and ‘S*nerg******’ of the first and dominant verbal element in the contested sign. However, they differ in the second, seventh and eight letters of the verbal element ‘Sinergin’ of the earlier mark and the second letter as well as the last six letters of the first and dominant verbal element in the contested sign, namely ‘Synergyplus’ (where ‘plus’ is non-distinctive). Furthermore, the signs differ in some secondary (i.e. ‘amsCOOPERNIC’) or marginal (e.g. the stylisation of the letters and the colours used in the signs) aspects.

Therefore, the signs are visually similar to a below average degree.

Aurally, the pronunciation of the signs coincides in the sound of the letters ‘S*nerg**’ of the earlier mark and ‘S*nerg******’ of the first and dominant verbal element in the contested sign. The pronunciation differs in the sound of the second, seventh and eight letters of the verbal element ‘Sinergin’ of the earlier mark and the second letter as well as the last six letters of the first and dominant verbal element in the contested sign, namely ‘Synergyplus’ (where ‘plus’ is non-distinctive). It should be also noted that the letters ‘y’ and ‘i’ are pronounced similarly in Romanian.

As regards the second verbal element of the contested sign, namely ‘amsCOOPERNIC’, consumers tend not to pronounce all elements of signs, simply to economise on words and time, especially when they are easily separable from the dominant element of the mark (18/09/2012, T‑460/11, Bürger, EU:T:2012:432, § 48). Given that this second verbal element is clearly secondary within the contested sign, it is plausible that it will not be pronounced at all by the relevant public.

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

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a similar meaning (as they both have in common the verbal elements ‘Sinergin’ and ‘Synergy’), the signs are conceptually similar to an average degree.

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

d) Distinctiveness of the earlier mark

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

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

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

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The contested services are partly similar and partly dissimilar to the opponent’s goods. They target, inter alia, the general public who have a higher degree of attention. The signs are visually similar to a below average degree, aurally similar to an above average degree and conceptually similar to an average degree. Furthermore, the earlier mark has a normal degree of distinctiveness.

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).

The earlier mark is almost identically contained in the first and dominant element of the contested one (as its first part, namely ‘Synergy’). The differences between the signs lie in elements or aspects of lesser impact contained in the contested sign, such as the additional non-distinctive verbal element ‘PLUS’ and the secondary verbal element ‘amsCOOPERNIC’ as well as some marginal aspects, for example the stylisation of the letters or colours used in the signs. The differences also concern some negligible elements of the contested sign. Therefore, the differences between the signs cannot outweigh their visual, aural and conceptual similarities.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public of the general public and therefore the opposition is partly well founded on the basis of the opponent’s Romanian trade mark registration No 120 219 for the figurative mark . As stated above in section b) of this decision, a likelihood of confusion for only part of the relevant public (i.e. the general public) is sufficient to reject the contested application.

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

The rest of the contested services are dissimilar to the opponent’s goods. 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.

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

Carlos MATEO PÉREZ

Michal KRUK

María del Carmen SUCH SÁNCHEZ

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.