OPPOSITION No B 3 084 568

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

a g a i n s t

Cactus Digital Signage, S.L., Calle Juan de la Cierva, 27, oficina 212, 46980 Paterna, Spain (applicant), represented by María José Ordóñez Vázquez, Calle Aribau, 168-170, 6º-3ª, 08036 Barcelona, Spain (professional representative).

On 23/10/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 084 568 is partially upheld, namely for all the contested goods and services, except for the following:

Class 9: Magnets, magnetizers and demagnetizers.

Class 35: The bringing together, for the benefit of others, of a variety of insurance services, enabling consumers to conveniently compare and purchase those services; retail services in relation to sanitation equipment; auctioneering services.

Class 41: Translation and interpretation.

Class 42: Testing, authentication and quality control.

2. European Union trade mark application No 18 020 801 is rejected for all the contested goods and services except for the above mentioned, in relation to which it may proceed to registration.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods and services of European Union trade mark application No 18 020 801 (figurative). The opposition is based on European Union trade mark registrations No 963 777 (figurative), No 18 014 996 ‘CACTUS’ (word) and No 963 595 (figurative). The opponent invoked Article 8(1)(b) EUTMR.

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

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

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registrations No 18 014 996 ‘CACTUS’ (word) and No 963 777 (figurative) since these earlier rights cover the widest range of goods and services.

a) The goods and services

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

EUTM No 18 014 996 ‘CACTUS’ (earlier mark 1)

Class 9: Software; computer databases; computer software for database management; computer software platforms, recorded or downloadable; downloadable electronic brochures; business technology software; interactive computer software enabling exchange of information; electronic magazines; electronic publications, downloadable; electronic publications (downloadable) provided online from databases or the internet; electronic publications in the form of magazines.

Class 35: Publication of publicity materials on-line; publication of publicity materials; publication of publicity texts; publication of publicity materials and texts.

Class 38: Telecommunication services; providing access to databases; providing access to electronic communications networks and electronic databases; transmission of electronic mail; providing access to e-commerce platforms on the internet; telecommunication services provided via platforms and portals on the internet and other media.

Class 41: Micropublishing; providing on-line electronic publications, not downloadable; publication of newspapers, periodicals, catalogs and brochures; publication of magazines; issue of publications; publishing services; publishing of magazines in electronic form on the internet; publication of electronic books and journals on-line; electronic publishing; editing of books and electronic publications; publication of multimedia material online; publication of periodicals, catalogues and prospectuses; online publication of electronic newspapers; online publication of electronic and periodicals; multimedia publication of printed matter; publishing of electronic publications; publication of brochures; publication of flyers; publication services relating to electronic magazines; multimedia publication of books, magazines, specialist magazines, music and electronic publications; publication of magazines in electronic form; publication of texts, other than publicity texts; online electronic publishing of books and periodicals; publication of electronic books and journals on-line; publication of brochures; publication of catalogues; publication of partwork publications; publication of magazines; publication of leaflets; publishing of electronic publications.

EUTM No 963 777  (earlier mark 2)

Class 9: Household articles not included in other classes; weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; electric, photographic, cinematographic, optical apparatus; apparatus for recording, transmission or reproduction of sound and/or images, in particular cassette, tapes; magnetic data carriers; calculating machines, data processing equipment and computers; recreational apparatus adapted for use with television receivers; fire-extinguishing apparatus.

Class 35: Advertising; business management, among other management of shops, management of do-it-yourself or gardening shops, management of supermarkets or hypermarkets; business administration; office functions, among other advertising, radio and/or television advertising, dissemination of advertising matter, publication of publicity texts, direct mail advertising; market research; outdoor advertising; business management assistance; demonstration of goods, distribution of samples; opinion polling; personnel recruitment; cost price analysis; public relations.

Class 41: Education, providing of training; entertainment, sporting and cultural activities, among other organisation of competitions, film production, publication of books; providing recreation and entertainment facilities, organisation of sports competitions.

Class 42: Providing of food and drink, cafés, cafeterias, restaurants; catering services.

The contested goods and services are the following:

Class 9: Navigation, guidance, tracking, targeting and map making devices; scientific research and laboratory apparatus, educational apparatus and simulators; optical devices, enhancers and correctors; apparatus, instruments and cables for electricity; scientific and laboratory devices for treatment using electricity; safety, security, protection and signalling devices; diving equipment; information technology and audio-visual, multimedia and photographic devices; recorded content; magnets, magnetizers and demagnetizers; measuring, detecting and monitoring instruments, indicators and controllers.

Class 35: Advertising, marketing and promotional services; business analysis, research and information services; subscriptions to telecommunications database services; administration of newspaper subscription [for others]; sales administration; procurement of contracts concerning energy supply; procuring of contracts for the purchase and sale of goods; procurement of goods on behalf of other businesses; import-export agencies in the field of energy; advice relating to barter trade; advisory services relating to commercial transactions; purchasing of goods and services for other businesses; consultancy relating to costing of sales orders; consulting in sales techniques and sales programmes; brokerage of name and address based lists; bidding quotation; goods or services price quotations; price comparison rating of accommodations; providing consumer product advice relating to software; provision of online financial services comparisons; administrative processing of purchase orders within the framework of services provided by mail-order companies; commercial administration of the licensing of the goods and services of others; management on behalf of industrial and commercial enterprises in terms of supplying them with office requisites; information about sales methods; commercial information and advice for consumers [consumer advice shop]; commercial information and advice for consumers in the choice of products and services; foreign trade information and consultation; mediation of contracts for purchase and sale of products; mediation of trade business for third parties; mediation of agreements regarding the sale and purchase of goods; mediation and conclusion of commercial transactions for others; negotiation of contracts with health care payors; negotiation of contracts relating to the purchase and sale of goods; negotiation of commercial transactions for third parties; negotiation and conclusion of commercial transactions for third parties via telecommunication systems; negotiation and conclusion of commercial transactions for third parties; procurement of contracts [for others]; procurement of contracts for the purchase and sale of goods and services; procurement of contracts for others relating to the sale of goods; subscriptions (arranging -) to a telematics, telephone or computer service [internet]; arranging of collective buying; arranging of commercial and business contacts; arranging of buying and selling contracts for third parties; arranging the buying of goods for others; arranging of presentations for business purposes; arranging business introductions relating to the buying and selling of products; arranging of contractual [trade]services with third parties; subscriptions (arranging of) to books, reviews, newspapers or comic books; arranging subscriptions of the online publications of others; arranging of subscriptions for the publications of others; arranging subscriptions to electronic journals; arranging subscriptions to information media; arranging subscriptions to information packages; arranging subscriptions to media packages; arranging subscriptions to internet services; arranging subscriptions to telephone services; arranging and conducting sales events for cattle; arranging and conducting sales events for livestock; arranging and conducting of flea markets; arranging and conducting sales events for others of livestock and registered and commercial cattle; arranging of contracts for the purchase and sale of goods and services, for others; arranging of contracts, for others, for the providing of services; arranging of contracts for others for the buying and selling of goods; arranging commercial transactions, for others, via online shops; arranging of trading transactions and commercial contracts; provision of online price comparison services; administrative processing of computerized purchase orders; administrative processing of purchase orders placed by telephone or computer; electronic order processing; production of teleshopping programmes; advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; computerised stock ordering; the bringing together, for the benefit of others, of a variety of insurance services, enabling consumers to conveniently compare and purchase those services; the bringing together, for the benefit of others, of a variety of telecommunications services, enabling consumers to conveniently compare and purchase those services; arranging subscriptions to a television channel; chamber of commerce services for the promotion of commerce; chamber of commerce services for the promotion of businesses; comparison shopping services; energy price comparison services; price comparison services; advisory and consultancy services relating to the procurement of goods for others; advisory services relating to the ordering of stationery; advisory services relating to the purchase of goods on behalf of others; price analysis services; import-export agency services; import agency services; export agency services; coupon procurement services for others; alcoholic beverage procurement services for others [purchasing goods for other businesses]; business administration services for processing sales made on the internet; procurement services for others relating to office requisites; procurement services for others [purchasing goods and services for other businesses]; advisory services relating to the purchase of goods on behalf of business; administrative services relating to employee stock plans; administrative services relating to warranty claims processing; administrative services relating to the referral of patients; administrative services relating to the referral of clients to lawyers; clerical services for the taking of sales orders; administrative services relating to dental health insurance; automatic re-ordering service for business; consultancy services relating to the procurement of goods and services; purchasing services; on-line ordering services in the field of restaurant take-out and delivery; sales management services; import and export services; commercial information and advice services for consumers in the field of cosmetic products; commercial information and advice services for consumers in the field of beauty products; commercial information and advice services for consumers in the field of make-up products; tariff information and advisory services; intermediary services relating to advertising; business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; business intermediary and advisory services in the field of selling products and rendering services; ordering services for third parties; online ordering services; wholesale ordering services; export promotion services; telephone order-taking services for others; purchasing agency services; outsourcing services in the nature of arranging procurement of goods for others; arranging newspaper subscriptions; arranging newspaper subscriptions for others; telemarketing services; computerized on-line ordering services; providing information via the internet relating to the sale of automobiles; providing consumer product advice relating to cosmetics; administrative processing and organising of mail order services; administrative processing of warranty claims; administrative processing of purchase orders; administrative order processing; subscription to a television channel; subscription to an information media package; arranging subscriptions to telecommunication services for others; subscriptions to electronic journals; newspaper subscriptions; provision of information concerning commercial sales; providing consumer product information relating to software; providing consumer product information relating to laptops; providing consumer product information relating to food or drink products; providing consumer product information; providing consumer product information relating to cosmetics; providing consumer information relating to goods and services; provision of an on-line marketplace for buyers and sellers of goods and services; providing consumer product advice; providing consumer product advice relating to laptops; rental of sales stands; retail services in relation to sanitation equipment; business assistance, management and administrative services; wholesale services in relation to information technology equipment; retail services in relation to information technology equipment; retail services in relation to audio-visual equipment; retail services in relation to computer software; retail services in relation to smartphones; retail services in relation to smartwatches; retail services in relation to downloadable electronic publications; retail services in relation to wearable computers; retail services in relation to downloadable music files; wholesale services in relation to computer hardware; retail services in relation to mobile phones; retail services in relation to domestic electronic equipment; retail services in relation to computer hardware; retail services relating to audiovisual equipment; wholesale services in relation to computer software; auctioneering services.

Class 38: Telecommunication services; provision and rental of telecommunications facilities and equipment.

Class 41: Education, entertainment and sport services; publishing and reporting; translation and interpretation; education, entertainment and sports.

Class 42: Testing, authentication and quality control; science and technology services; design services; IT services.

An interpretation of the wording of the opponent’s lists of goods and services is required to determine the scope of protection of these goods and services.

In principle, the term ‘in particular’, used in Class 9 of the opponent’s earlier mark 2, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107). Similarly, the opponent’s wording ‘among other’ used in Class 35 of the earlier mark 2 is used to give notion of examples rather than to present a definitive list of the services contained (see a reference to the English present use of the term at: https://www.collinsdictionary.com/dictionary/english/among-other-s).

Furthermore, with respect to the opponent’s list of goods and services, account is taken of the fact that while the opponent’s Class 9 of the earlier mark 2 in its English version reads: household articles not included in other classes weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments electric, photographic, cinematographic, optical apparatus, these two broad categories are in fact divided by a semicolon (as shown in the listing of the goods) in the original version of the specification of goods and services. In that respect, interpretation of the scope of protection will be provided according to the original French version, namely as containing a semicolon after the broad category of ‘household articles not included in other classes’.

Finally, 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.

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

Contested goods in Cass 9

The contested navigation, guidance, tracking, targeting and map making devices overlap with the opponent’s data processing equipment of earlier mark 2. This is because the broad category of the applicant, as well as the broad category of data processing equipment covered by the opponent’s earlier mark both include, for example, navigation apparatus for vehicles [on-board computers]. Since there is an overlap between these goods, they are deemed identical.

The contested scientific research and laboratory apparatus, educational apparatus and simulators overlap with the opponent’s teaching apparatus and instruments of earlier mark 2, in particular because many apparatus and instruments are used both in science, including in laboratories, and for teaching purposes, e.g. microscopes. Likewise, the contested scientific and laboratory devices for treatment using electricity also overlap with the opponent’s teaching apparatus to the extent that they may be using electricity. Moreover, simulators are devices used in many contexts, such as simulation of technology for performance, testing, training and also education. Consequently, all these goods are identical.

The contested optical devices, enhancers and correctors overlap with the opponent’s optical apparatus of earlier mark 2, to the extent that they contain devices, e.g. lens, that are included in both categories. Therefore, they are identical.

The contested safety, security, protection and signalling devices overlap with the opponent’s life-saving and/or signaling apparatus of earlier mark 2. Therefore, they are identical.

The contested diving equipment overlaps with the opponent’s life-saving or checking (supervision) apparatus of earlier mark 2, to the extent that the latter covers some marine lifesaving or checking equipment used for diving purposes (e.g. diving regulator, equipment for breathing). Therefore, they are identical.

The contested information technology and audio-visual, multimedia and photographic devices are either identically contained or overlap with the opponent’s apparatus for recording, transmission or reproduction of sound and images; photographic apparatus of earlier mark 2. Therefore, they are identical.

The contested recorded content overlaps with the opponent’s software of earlier mark 1, to the extent that software programs can take the form of recorded content. Therefore, they are identical.

The contested measuring, detecting and monitoring instruments and indicators overlap with the opponent’s measuring apparatus of earlier mark 2. Therefore, they are identical.

The contested controllers are highly similar to the opponent’s measuring apparatus of earlier mark 2 since they may have the same nature and purpose of keeping records of important data. Moreover, this data may be used for the purposes of controlling certain indicators (e.g. heat, humidity, pressure), and they will also target the same public, share the same distribution channels and originate from the same manufacturers.

The contested apparatus, instruments and cables for electricity are similar to the opponent’s recreational apparatus adapted for use with television receivers of earlier mark 2, to the extent that they may coincide in their target public, distribution channels and producers. Similarity is found in this particular context of visual and sound reproduction from the said recreational apparatus, since the quality of cables is one of the parameters which determines the quality of the recording of sound and/or images.

However, the contested magnets, magnetizers and demagnetizers are dissimilar to any of the goods and services covered by the opponent’s marks due to their highly specific character. Magnets are bodies that can attract certain substances, such as iron or steel, as a result of a magnetic field. Magnetizers and demagnetizers are devices that are used to render magnetic properties to steel or iron (or other material) or to reduce or remove magnetism in objects, respectively. These goods have very particular nature, purpose and area of application that differ from the ones of the earlier marks’ goods and services. Moreover, they will be available through different distribution channels and produced by different undertakings.

Contested services in Class 35

Bearing in mind the extent of the contested services in this class, the present comparison will distinguish two areas of activities identified therein, as follows:

(i) Professional support to businesses

Most of the contested services in Class 35 are aimed at supporting or helping other businesses to do or improve business. They are, therefore, in principle, directed at the professional public. In order to give a more clear idea of what the essence of these services is and how they relate to the opponent’s goods or services, the Opposition Division finds it necessary to give some general explanations on the nature, purpose and usual providers of some of these services.

Advertising services consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. In order to fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services, and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, the internet, etc.

The contested advertising, marketing and promotional services; production of teleshopping programmes; advertising of the services of other vendors, enabling customers to conveniently view and compare the services of those vendors; telemarketing services are included in, include or, at least, overlap with the opponent’s advertising of earlier mark 2. Therefore, they are identical.

Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. They involve activities associated with running a company, such as controlling, leading, monitoring, organising, and planning. They are usually rendered by companies specialised in this specific field such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or to provide businesses with the necessary support to acquire, develop and expand their market share. These services are usually provided by specialised business consultants.

The contested business analysis, research and information services; price analysis services are included in, or at least overlap with, the opponent’s market research, cost price analysis and business management assistance of earlier mark 2. Therefore, they are identical.

The contested business assistance, management and administrative services overlap with the opponent’s business administration and business management assistance of earlier mark 2. Therefore, they are identical.

The contested consultancy relating to costing of sales orders; sales management services; foreign trade information and consultation; consultancy services relating to the procurement of goods and services; advisory and consultancy services relating to the procurement of goods for others; advisory services relating to the ordering of stationery; advisory services relating to the purchase of goods on behalf of others; advisory services relating to the purchase of goods on behalf of business; tariff information and advisory services; provision of information concerning commercial sales; advisory services relating to commercial transactions; advice relating to barter trade; consulting in sales techniques and sales programmes; information about sales methods; arranging of presentations for business purposes; providing information via the Internet relating to the sale of automobiles, that are all various advisory, consultancy and information services provided to businesses regarding business methods and strategies, are included in, or at least overlap with, the broad categories of the opponent’s business management assistance or business management, among other management of shops, management of do-it-yourself or gardening shops, management of supermarkets or hypermarkets of earlier mark 2. Therefore, they are identical.

Business administration services are intended to help companies with the performance of business operations and, therefore, the interpretation and implementation of the policy set by an organisation’s board of directors. These services consist of organising people and resources efficiently so as to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

The contested sales administration; business administration services for processing sales made on the internet; administrative services relating to employee stock plans; administrative services relating to warranty claims processing; administrative services relating to the referral of patients; administrative services relating to the referral of clients to lawyers; administrative services relating to dental health insurance; arranging of commercial and business contacts are included in the broad category of the opponent’s business administration of earlier mark 2. Therefore, they are identical.

Office functions are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information in computer databases, invoicing, and administrative processing of purchase orders, as well as support services, such as the rental of office machines and equipment.

The contested administrative processing and organising of mail order services; administrative processing of warranty claims; administrative processing of purchase orders; administrative order processing; administrative processing of purchase orders within the framework of services provided by mail-order companies; administrative processing of computerized purchase orders; administrative processing of purchase orders placed by telephone or computer; electronic order processing; computerised stock ordering; clerical services for the taking of sales orders; automatic re-ordering service for business; on-line ordering services in the field of restaurant take-out and delivery; online ordering services; wholesale ordering services; computerized on-line ordering services; telephone order-taking services for others; ordering services for third parties are included in, or at least overlap with, the broad category of the opponent’s office functions, among other advertising, radio and/or television advertising, dissemination of advertising matter, publication of publicity texts, direct mail advertising of earlier mark 2. Therefore, they are identical.

The contested arranging and conducting sales events for cattle; arranging and conducting sales events for livestock; arranging and conducting of flea markets; arranging and conducting sales events for others of livestock and registered and commercial cattle are services related to the organization of events for promotional or commercial purposes. These services are normally provided by specialised companies in their specific field. As such, the services in question are to be considered similar to the opponent’s advertising of earlier mark 2, since these could be offered to third parties in the form of the organisation, arranging and conducting of an exhibition or trade fair on their behalf (01/12/2014, R 557/2014-2, TRITON WATER (fig.) / TRITON COATINGS TRITON (fig.) et al., § 31).

The contested chamber of commerce services for the promotion of commerce; chamber of commerce services for the promotion of businesses are at least similar to the opponent’s advertising and public relations of earlier mark 2 insofar as they have the same purpose of publicizing product, organization or venture so as to increase sales or public awareness. Moreover, they will target the same consumers (e.g. small or medium businesses) and be in competition with advertising agencies specialized in the offering of these particular services.

The contested import-export agencies in the field of energy; import-export agency services; import agency services; export agency services; import and export services; export promotion services are similar to the opponent’s business management assistance since they target the same public, share their distribution channels and originate from the same undertakings.

The contested negotiation of contracts with health care payors; negotiation of contracts relating to the purchase and sale of goods; negotiation of commercial transactions for third parties; negotiation and conclusion of commercial transactions for third parties via telecommunication systems; negotiation and conclusion of commercial transactions for third parties; commercial administration of the licensing of the goods and services of others; management on behalf of industrial and commercial enterprises in terms of supplying them with office requisites; arranging of collective buying; arranging of buying and selling contracts for third parties; arranging the buying of goods for others; arranging business introductions relating to the buying and selling of products; arranging of contractual [trade]services with third parties; arranging of contracts for the purchase and sale of goods and services, for others; arranging of contracts, for others, for the providing of services; arranging of contracts for others for the buying and selling of goods; arranging commercial transactions, for others, via online shops; arranging of trading transactions and commercial contracts; intermediary services relating to advertising; provision of an on-line marketplace for buyers and sellers of goods and services; coupon procurement services for others; alcoholic beverage procurement services for others [purchasing goods for other businesses]; purchasing agency services; procurement of contracts concerning energy supply; procuring of contracts for the purchase and sale of goods; procurement of goods on behalf of other businesses; purchasing of goods and services for other businesses; brokerage of name and address based lists; mediation of contracts for purchase and sale of products; mediation of trade business for third parties; mediation of agreements regarding the sale and purchase of goods; mediation and conclusion of commercial transactions for others; procurement of contracts [for others]; procurement of contracts for the purchase and sale of goods and services; procurement of contracts for others relating to the sale of goods; procurement services for others relating to office requisites; procurement services for others [purchasing goods and services for other businesses]; business intermediary services relating to the matching of potential private investors with entrepreneurs needing funding; outsourcing services in the nature of arranging procurement of goods for others; business intermediary and advisory services in the field of selling products and rendering services; purchasing services are various types of services that are of intermediary character (self-explanatory or by definition) related to negotiation, mediation, procurement, brokerage, matching sellers and buyers or other types of assisting businesses to lead and conclude deals or transactions, or/and on behalf of others.

By way of example, business mediation are services rendered by specialists with the purpose of helping businesses to resolve their business-related problems, be it in the area of purchase or in the context of wholesaling and retailing. It also includes services when a third party puts sellers and buyers of something in contact, negotiates between them and gets commission for such services. Business mediation and business management are closely related. Companies providing business management services, which includes all aspects of overseeing and supervising business operations, may also provide mediation services aiming to resolve or prevent business-related problems. Negotiation and settlement of contracts is more of a business intermediary service: a third party puts sellers and buyers of something in contact, negotiates between them and gets commission for such service. These services also usually aimed at supporting or helping other businesses to do business or to improve their businesses. To that extent such services may have the same purpose. Companies providing business management service may also provide such services as negotiations of business contracts for third parties. Finally, both services target the same professional public. Procurement is the process of finding and agreeing to terms, and acquiring goods, services, or works from an external source, often via a tendering or competitive bidding process. Procurement generally involves making buying decisions under conditions of scarcity. Brokerage companies exist to help their clients match the other side of a trade, bringing together buyers and sellers at the best price possible for each, and extracting a commission for their services. In the financial markets, several different types of brokerage firms offer a wide range of products and services.

The contested goods or services price quotations are services consisting of offering goods and services to buyers at a stated price subject to terms and conditions specified therein. The contested bidding quotation is a standard business process, whose purpose is to invite suppliers into a bidding process to bid on specific goods or services.

Consequently, following these brief explanations, all the above services may have the same global purpose of assisting in the smooth running of a business, as the opponent’s business management assistance of earlier mark 2. Furthermore, they target the same public, namely businesses looking for intermediaries in performing various deals, and may coincide in their providers, specialized agencies and companies engaged with all types of business deals executed on behalf of other businesses and third parties. Consequently, they are considered at least similar to a low degree to the opponent’s services.

The contested providing consumer product advice relating to cosmetics; providing consumer product information relating to software; providing consumer product advice relating to software; providing consumer product information relating to laptops; providing consumer product information relating to food or drink products; providing consumer product information; providing consumer product information relating to cosmetics; providing consumer information relating to goods and services; providing consumer product advice; providing consumer product advice relating to laptops; commercial information and advice for consumers [consumer advice shop]; commercial information and advice for consumers in the choice of products and services; commercial information and advice services for consumers in the field of cosmetic products; commercial information and advice services for consumers in the field of beauty products; commercial information and advice services for consumers in the field of make-up products are services related to consumer product information and advisory or information services about trade subjects that are considered similar to a low degree to the opponent’s advertising of earlier mark 2. These services may have similar purpose of promoting sales or encouraging consumers to undertake a purchase and they target the same public.

Likewise, the contested price comparison rating of accommodations; provision of online price comparison services; energy price comparison services; price comparison services; provision of online financial services comparisons; comparison shopping services are consumer information services related to the obtaining of price information and comparison regarding various types of products for the purposes of better purchasing experience. For the same purposes as above, these services are considered similar to a low degree to the opponent’s advertising of earlier mark 2.

The contested rental of sales stands is similar to a low degree to the opponent’s outdoor advertising to the extent that they have the same global purpose of promoting goods and services of a business and may coincide in their distribution channels and target public.

The contested subscriptions to telecommunications database services; subscriptions (arranging -) to a telematics, telephone or computer service [internet]; arranging subscriptions to Internet services; arranging subscriptions to telephone services; arranging subscriptions to a television channel; subscription to a television channel; arranging subscriptions to telecommunication services for others are similar to a low degree to the opponent’s telecommunication services of the earlier mark 1 to the extent that these services will be offered to the same public and by the same telecommunications companies. Moreover, they are in a complementary relationship with each other as the provision of telecommunications may be highly dependent on the subscription to the respective means of communications.

The contested administration of newspaper subscription [for others]; subscriptions (arranging of) to books, reviews, newspapers or comic books; arranging subscriptions of the online publications of others; arranging of subscriptions for the publications of others; arranging subscriptions to electronic journals; arranging newspaper subscriptions; arranging newspaper subscriptions for others; subscriptions to electronic journals; newspaper subscriptions; arranging subscriptions to information media; arranging subscriptions to information packages; arranging subscriptions to media packages; subscription to an information media package are considered at least similar to a low degree to the opponent’s publication of newspapers, periodicals, catalogs and brochures of the earlier mark 1, to the extent that these services are in a complementary relationship with each other, in particular, the subscription to a printed matter will be impossible in the absence of any publication. They will coincide in their distribution channels and will coincide in their providers.

(ii) Retail services and auctioneering

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). Moreover, retail does not simply involve the act of selling the goods, but in the services rendered around the actual sale of the goods, that is to say, ‘the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods’ (as may be seen in the explanatory note to Class 35 of the Nice Classification).

In that sense, the contested the bringing together, for the benefit of others, of a variety of telecommunications services, enabling consumers to conveniently compare and purchase those services are considered similar to the opponent’s telecommunications of earlier mark 1. These services will share the same origin and distribution channels, as well as the same target public. Moreover, they have the same purpose of providing telecommunication services.

It is noted that retail services concerning the sale of specific goods are similar to an average degree to these specific goods. Although the nature, purpose and method of use of these goods and services are not the same, they are similar because they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Following the above explanations, the contested retail services in relation to computer software; retail services in relation to downloadable electronic publications; retail services in relation to computer hardware are similar to the opponent’s software; еlectronic publications, downloadable of earlier mark 1, and to the data processing equipment of earlier mark 2, to the extent that it overlaps with hardware.

Moreover, there is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

The contested retail services in relation to downloadable music files are similar to a low degree to the opponent’s electronic publications, downloadable of earlier mark 1.

A low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers.

The contested retail services in relation to information technology equipment; retail services in relation to audio-visual equipment; retail services in relation to wearable computers; retail services relating to audiovisual equipment; retail services in relation to smartphones; retail services in relation to smartwatches; retail services in relation to mobile phones are at least similar to a low degree to the opponent’s data processing equipment and computers of earlier mark 2, especially due to the fact that computers and audiovisual apparatus overlap. Indeed, these retail services concern goods that are commonly retailed together in the same place and, in the case of the retail service, target the same public.

Likewise, the contested retail services in relation to domestic electronic equipment are similar to a low degree to the opponent’s recreational apparatus adapted for use with television receivers of earlier mark 2, to the extent that the subject of sales may be found at the same sales spots and target the same public.

In general, wholesale and retail services target a different public: retail targets the public at large; wholesale targets professionals who are engaged in the activity of re-selling goods in large quantities. However, these categories of services still have the same nature and purpose, since both are aimed at bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods. Consequently, as far as these services concern goods that are closely connected in the market, the public could take the view that a wholesaler also offers retail services relating to, not only the same, but also similar categories of goods, and vice versa.

Consequently, the contested wholesale services in relation to information technology equipment; wholesale services in relation to computer hardware; wholesale services in relation to computer software are considered similar to a low degree to the opponent’s software of earlier mark 1 and processing equipment and computers of earlier mark 2.

By contrast, the remaining retail services, namely retail services in relation to sanitation equipment; the bringing together, for the benefit of others, of a variety of insurance services, enabling consumers to conveniently compare and purchase those services are dissimilar to the opponent’s goods and services, as the goods involved in these retail services are not commonly sold together and they are of interest to generally different parts of the public, in particular consumers interested in insurances or sanitation equipment.

Finally, the contested auctioneering services are public sales where the goods and services are sold to the person who offers the highest price. These services and the opponent’s goods and services have different natures, purposes and methods of use. Moreover, they are neither complementary nor in competition. Furthermore, they are usually sold or made available through different distribution channels and produced or provided by different undertakings. Although they may target the same end users, that circumstance is not sufficient for finding a degree of similarity. Therefore, these services are dissimilar to the opponent’s goods and services of both marks.

Contested services in Class 38

The contested telecommunication services are identically included in earlier mark 1, despite the slightly different wording.

The contested provision and rental of telecommunications facilities and equipment are included in the broad category of the respective telecommunication services of earlier mark 1. Therefore, they are identical.

Contested services in Class 41

Education, entertainment and sports services; education, entertainment and sports are identically contained in both lists of services (including synonyms).

The contested publishing and reporting overlap with the opponent’s publication of multimedia material online of earlier mark 1. Therefore, they are identical.

The contested translation and interpretation are, however, dissimilar to any of the goods and services covered by the earlier marks. Translation is the communication of the meaning of a source-language text by means of an equivalent target-language text and interpretation covers the facilitation of dialogue between parties using different languages. When compared to the opponent’s goods and services, the contested translation and interpretation do not have the same purpose, consumers, distribution channels or usual origin.

First, it is noted that, while translation and interpretation services may be necessary for the provision of certain services in the advertising, entertainment, publishing and tourism industries, to name a few examples, they are nevertheless specific services that are usually provided either by professional individuals or undertakings specialised in the provision of such services. In addition, translation and interpretation services are normally covered by separate contracts. Second, the services are not complementary to any of the opponent’s goods or services. According to case-law, goods or/and services are complementary if there is a close connection between them, in the sense that one is indispensable (essential) or important (significant) for the use of the other in such a way that consumers may think that responsibility for the production of those goods or provision of those services lies with the same undertaking (11/05/2011, T-74/10, Flaco, EU:T:2011:207, § 40; 21/11/2012, T-558/11, Artis, EU:T:2012:615, § 25; 04/02/2013, T-504/11, Dignitude, EU:T:2013:57, § 44). However, in the present case, the nature of those goods and services is very different and the skills that an undertaking requires in order to provide one or other of those categories of goods and services are very different (06/02/2020, T-135/19, LaTV3D / TV3, EU:T:f2020:36, § 23-26).

Contested services in Class 42

The contested IT services are similar to the opponent’s software of earlier mark 1, to the extent that IT services in Class 42 include design and development of computer software. These goods and services are complementary to each other, target the same public and originate from the same undertakings.

The contested design services are similar to the opponent’s software since the they can coincide in their origin and their consumers, especially because design services also comprise software design. Moreover, they can have the same distribution centers, namely undertakings specialized in the development of design for software and offering the respective software on the market.

The contested science and technology services may have the same purpose as the opponent’s education in earlier mark 2 namely providing research and investigation in fundamental scientific areas such as chemistry, biology, physics, etc. It is a well-known fact that universities may carry out research not only as an academic training but as a stand-alone part of their activities. Universities bid on tenders to be able to provide such research services, and as such this is a service that can be provided to third parties. Consequently, these services will often be provided by the same parties and through the same distribution channels, in particular universities and other educational or teaching institutions. They also coincide in general purpose of acquiring and/or imparting or disseminating knowledge or skills. They are therefore considered similar.

As to the remaining contested services, testing, authentication and quality control, they are considered dissimilar to the opponent’s goods and services that may be summarised as various apparatus for specific purposes, as well as computing goods in Class 9, business services in Class 35, telecommunications in Class 38, publishing, education, entertainment, sport and cultural activities in Class 41 and provision of food and drink in Class 42. Testing is a process used to identify characteristics or potential problems. Authentication is the action of establishing something as genuine or valid. Quality control is a procedure or set of procedures intended to ensure that a manufactured product or performed service adheres to a defined set of quality criteria or meets the requirements of the client or customer. These services are highly specialised as they are aimed to control and confirm the fulfilment of standards and quality requirements and are usually provided by certification or accreditation companies. They will, in that sense, differ in their usual origin, distribution channel and target public. Moreover, no complementarity relationship can be established between them either.

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 and services found to be identical or similar to varying degrees are directed at the public at large (e.g. telecommunications in Class 38, education in Class 41, software in Class 9, consumer information in Class 35), as well as at business customers with specific professional knowledge or expertise (e.g. professional business services in Class 35, some specialised apparatus in Class 9).

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the goods and services purchased. While some of the goods/services may be of a rather common character, others were considered highly specialised and with very specific application (apparatus in Class 9) or involve business success of companies (consultancy and advisory in Class 35).

c) The signs

1. CACTUS 2.
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 unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common elements ‘cactus’, as well as the second verbal element of the contested sign ‘signage’ are meaningful in certain territories, for example in those countries where English is understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the public, such as Ireland and Malta.

The element ‘cactus’ present in the contested sign and constituting earlier mark 1 will be understood as a thick fleshy plant that grows in many hot, dry parts of the world. Cacti have no leaves and many of them are covered in prickles. Earlier mark 2 is a rather standard and plain representation of a cactus device comprising its most characteristic features. It will be immediately grasped as such by a significant part of the public. Since both, the figurative representation of a cactus and the word thereof, have no relationship to the goods and services in question, they are considered of a normal distinctivenes as a whole.

The element ‘signage’ of the contested sign will be associated with ‘any printed material in a store that guides or informs customers, such as posters’ (see a reference at Collins Dictionary Online at https://www.collinsdictionary.com/dictionary/english/signage, available on 21/09/2020). Bearing in mind that part of the relevant goods and services are signalling apparatus (Class 9), advertising services (Class 35), education, publishing and reporting (Class 41), science services (Class 42), this element is at most of a weak character for these goods and services. For the remaining goods and services, this element will display a normal degree of distinctivenes.

Moreover, the contested sign is further composed of less distinctive figurative elements of a purely decorative nature, namely a black square background and a white speech bubble, against which the remaining elements are depicted. As far as the speech bubble is concerned, it is seen as a banal element with no particular elaboration and alluding to a number of connotations in the communication field and any sort of interaction. This element is then of low distinctiveness.

In principle, when signs consist of both verbal and figurative components, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. However, it is also important to note that the cactus device of the contested sign will be merely perceived as a representation reinforcing the concept produced by the word ‘Cactus’. Moreover, due to its primary position (at the top of the sign) and the larger space it occupies within the mark, it cannot go unnoticed and must be considered as important as the verbal element/s of the sign (03/06/2015, T- 559/13, Giovanni Galli, EU:T:2015:353, § 63-64).

Comparison with earlier mark 1

Visually and aurally, the signs coincide in the verbal element ‘CACTUS’, as well as in the sounds thereof. The signs differ in the remaining figurative and verbal elements of the contested sign, as commented above.

It is noted 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. Consequently, the word ‘cactus’ of the contested sign, also due to its bold stylisation, will most likely attract much more attention than the verbal element ‘signage’.

Therefore, considering the distinctiveness of the elements, as discussed above, the signs are visually and aurally similar to an 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 produced by the equally present concept of the word ‘cactus’ – the signs are conceptually highly similar in the event that the second word ‘signage’ is of lesser distinctiveness, and conceptually similar to an average degree in the event that it enjoys a normal degree of distinctiveness, depending of the goods and services in question, as explained above.

Comparison with earlier mark 2

The Opposition Division notes that whenever the signs are not completely abstract, consumers will tend to intuitively associate the devices of which the signs consist with elements reminiscent of objects of their environment and based on their previous knowledge and social background. This is used for an easier reference to the mark and better recollection in a later moment.

As set out above, a substantial part of the relevant public will perceive the earlier mark as a standard representation of a cactus. This is possible especially because instead of encountering any abstract components or such of an imaginary character, consumers will be able to immediately recall a representation of a cactus. The Opposition Division finds it appropriate to proceed with the assessment under this presumption and in relation to these consumers who will immediately identify the common features of a cactus in earlier mark 2.

Visually, both signs contain graphical representations of a cactus device repeating more or less the same features, black silhouette of a cactus plant, albeit in a reversed form. The signs differ in the other verbal and figurative elements contained in the contested sign, however, some of them were found of a weaker distinctiveness, at least for a part of the goods and services, or interchangeably serving to reinforce the concept of ‘cactus’ present in the sign.

It is true that, visually, when a brand is composed of word and figurative elements, the former should, in principle, be considered more distinctive than the latter, since the average consumer will more easily refer to the product in question by citing the name of the brand that describing its figurative element (11/12/2014, T-480/12, MASTER, EU: T: 2014: 1062, § 49; 14/07/2005, T-312/03, Selenium-Ace, EU: T: 2005: 289, § 37). However, it is necessary to remember that this principle suffers exceptions depending on the circumstances. If the figurative element is shown in a prominent position, in a larger size, and, furthermore, is conceptually independent of the verbal element so that it can be seen autonomously by the relevant consumer, there is no reason for the consumer to focus exclusively on the verbal element (11/16/2018, R 461 / 2018-2, DEVICE OF TWO OBLIQUE STRIPES IN RED AND BLUE INCLINED TO THE LEFT (fig.) / daniel hechter (fig.) et al, § 31; 06/09 / 2018, R 2402 / 2017-1, Nalón Tech (fig.) / DEVICE OF A BLACK CIRCLE CONTAINING 3 WHITE STRIPES ON EACH SIDE (fig.) Et al., § 32; 05/03/2017, T-681 / 15, REPRÉSENTATION D'UNE TÊTE DE LOUP (fig.) / WOLF Jardin (fig.) Et al., EU: T: 2017: 296, § 46 and the case law cited there).

Consequently, regarding the cactus devices with a normal degree of distinctiveness in both signs, overall, and despite the additional elements in the contested sign, as referred to above, the signs are seen as visually similar to an average degree.

Aurally, the signs remain neutral. Indeed, purely figurative signs are not subject to a phonetic assessment and, as the earlier mark is purely figurative, it is not possible to compare the signs aurally.

Notwithstanding the latter, the Opposition Division further takes note of the fact that, if the earlier device mark is referred to, the relevant consumer is likely to describe what he/she sees or perceives in the sign, which is likely to vary from person to person (08/10/2014, T-342/12, Star within a circle, EU:T:2014:858, § 46-48). However, in the present case, the semantic content of the purely figurative mark is likely to be immediately associated with a specific, concrete word by the consumers (30/01/2020, T-559/19, Representation of a tree, EU:T:2020:19, § 34), namely, due to its plain and easy-to-grasp representation, it will immediately call into consumers’ mind the concept of a cactus; hence, it may use the aural reference to a cactus as well.

Conceptually, reference is again made to the findings from above. Both signs contain the concept of ‘a cactus’, whereas in the contested sign it is straightened by employing the word thereof. A conceptual similarity can indeed arise from the fact that two marks use images with analogous semantic content (21/10/2010, T-361/08, Thai Silk, EU:T:2010:152, § 63).

Consequently, considering the additional word ‘signage’ that brings an additional concept, albeit at most weak for some of the goods and services, the signs are conceptually similar at least 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 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.

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

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

e) Global assessment, other arguments and conclusion

In assessing the similarity of the goods in question, all the relevant factors relating to the link between those services should be taken into account. Those factors include, among other things, their nature, their intended purpose, their method of use and whether they are in competition with each other or are complementary (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 23). Other relevant factors can be the distribution channels, the usual origin and the consumer of the goods.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

In the present case, the goods and services were found partly identical, partly similar to varying degrees and partly dissimilar. The degree of attention of the relevant public, both the public at large and professionals, was considered to vary between average and high depending on the goods/services concerned. The earlier marks enjoy a normal degree of distinctivenes.

As established in the ‘Comparison of the signs’ section, the contested sign and earlier mark 1 are visually and aurally similar and conceptually at least similar (depending on the degree of distinctivenes of the additional element ‘signage’). Consequently, it is very likely that consumers having a very similar overall impression of the signs in this case and relying on the distinctive word ‘Cactus’ may be led to believe that the signs in conflict originate from the same economical undertaking, thus, despite not directly confusing them, consumers may link the two signs. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods or services that it designates (23/10/2002, T‑104/01, Fifties, EU:T:2002:262, § 49). Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

Moreover, similar conclusions may be drawn in respect of the contested sign and earlier mark 2, where the reference point is again whether the relevant public will perceive the goods/services concerned as having a common commercial origin (04/11/2003, T-85/02, Castillo, EU:T:2003:288, § 38) and whether consumers consider it normal that the goods/services are marketed under the same trade mark, which normally implies that a large number of producers are the same (11/07/2007, T-150/04, Tosca Blu, EU:T:2007:214, § 37).

Following the above comparison, these conflicting signs that were found visually similar to an average degree, conceptually similar at least to an average degree and aurally neutral. As noted above, the images of the cactus devices above display some slight differences. However, when comparing the images, their peculiarities will obviously require a detailed examination, which is not the approach that consumers usually adopt when confronted with such signs (30/09/2015, T-364/13, KAJMAN / Device of a crocodile et al., EU:T:2015:738, § 38 and the case-law therein cited; 26/04/2016, T-21/15, Dino / Device of a dinosaur, EU:T:2016:241, § 67 and 69; 20/10/2011, T-238/10, Horse couture, EU:T:2011:613, §31 and 17/04/2008, T-389/03, Pelican, EU:T:2008:114, § 80).

By contrast, the fact that part of the public is more attentive in relation to certain goods/services does not mean that they will examine the signs in great detail and does not mean that they must trust the imperfect image that they keep of the signs in their memory (07/16/2014, T-324 / 13, Femivia, EU: T: 2014: 672, § 48). Consequently, relying on their imperfect recollection, consumers may easily rely again on the distinctive concept produced as a whole – namely the notion of a cactus, that is immediately brought to attention in both signs.

In addition, there is not present claim or evidence by the applicant that the image of a cactus is a common feature of symbols, logos and trade marks and relates to banal characteristics on market in question or that that the combination of features would somehow possess less distinctive character (12/09/2007, T-363/04, La Espanola, EU:T:2007:264, § 85). Consequently, to the knowledge of the Opposition Division, the concept of a cactus remains distinctive in the operational area of the goods and services in question and is not known to be well exploited by offering any of them, even in relation to professional services in Class 35, for which the attention of consumers is thought to be higher. Therefore, considering the above, likelihood of association is very likely also with the earlier mark 2 in the present case.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the English-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations No 18 014 996 and No 963 777. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to those of the earlier trade marks. Given the principle of interdependence and the strong concept conveyed by the cactus image, the similarities between the signs are considered sufficient to outweigh the slight differences between some of the goods/services found to be only similar to a low degree.

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

The opponent has also based its opposition on the earlier European Union trade mark registration No 963 595 for the figurative mark . Since this mark covers a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. 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 and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Marta GARCÍA COLLADO

Manuela RUSEVA

Lucinda CARNEY

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.