OPPOSITION No B 3 086 625

CKL Holdings N.V., Klosterstr. 28-30, 4700 Eupen, Belgium (opponent), represented by Newpatent, Puerto, 34, 21001 Huelva, Spain (professional representative)

a g a i n s t

Stromio GmbH, Girmes-Kreuz-Straße 55, 41564 Kaarst, Germany (applicant), represented by Siebeke - Lange – Wilbert, Cecilienallee 42, 40474 Düsseldorf, Germany (professional representative).

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

DECISION:

1. Opposition No B 3 086 625 is rejected in its entirety.

2. The opponent bears the costs, fixed at EUR 300.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 025 311 , namely against all the services in Class 35. The opposition is based on Benelux trade mark registration No 1 000 193 ‘Astromo’ (word mark) and Spanish trade mark registration No 3 651 276 ‘ASTROMO’ (word mark). 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.

a) The services

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

Benelux trade mark registration No 1 000 193 ‘Astromo’

Class 35: Provision of information and advice to consumers regarding the selection of products and items to be purchased; exhibitions for commercial or advertising purposes; arranging of exhibitions for commercial purposes; demonstration of goods for promotional purposes; publicity and sales promotion relating to goods and services, offered and ordered by telecommunication or the electronic way; provision of business and commercial information; business consultancy services; assistance and advice regarding business organization and management; advertising; advertising particularly services for the promotion of goods; arranging of contracts for the purchase and sale of goods and services, for others; market research and marketing studies; compilation of computer databases; office functions; risk management consultancy [business]; employment agency services; personnel recruitment services; temporary personnel employment services; placement of permanent personnel.

Spanish trade mark registration No 3 651 276 ‘ASTROMO’

Class 35. Information and advice to consumers on the selection of products and items for sale; Organization of exhibitions for commercial or advertising purposes; Organization of exhibitions for business purposes; Demonstration of products with an advertising purpose; demonstration of products with an advertising purpose; Advertising and promotion of sales related to goods and services, offered and orders through computer networks and communications; Provision of business or commercial information; Business consulting; Advice related to the organization and management of businesses; Advertising; Advertising, in particular services for the promotion of products; Preparation of contracts for the purchase and sale of products and services for third parties; Market research and marketing studies; Compilation of computer databases; Office work; Consultations on risk management [business]; Services of employment offices; Staff pick; Temporary work services; Fixed personnel placement.

The contested services are the following:

Class 35: Professional business consultancy with regard to the buying and selling of energy; Professional business consultancy with regard to supplying energy, heat and water; Procurement of contracts for others, in particular energy supply contracts.

Some of the contested services are identical or similar to services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark which, for the opponent, is the best light in which the opposition can be examined.

b) Relevant public — degree of attention

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

In the present case, the services assumed to be identical are directed at business customers with specific professional knowledge or expertise. The public’s degree of attentiveness is likely to be high in relation to the services in question.

c) The signs

1.Astromo 2.ASTROMO
Earlier trade marks	Contested sign

The relevant territory is the Benelux and Spain.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier marks are word marks, ‘Astromo’ and ‘ASTROMO’. In the case of word marks, it is the word as such that is protected, and not its written form. Therefore, the use of upper or lower case is irrelevant in the present case.

It should be noted that although a mark is composed of one verbal element, 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 earlier marks, ‘ASTROMO’, have no meaning for the relevant public and are, therefore, distinctive. However, as examples, the major part of the German-speaking public will recall for example the word ‘Astronomie’, the French-speaking the word ‘astronomie’ and the Spanish-speaking the word ‘astronomía’, since these words all begin with the same verbal element, ‘Astro-‘, being the transliteration in the Latin alphabet of the Greek word «AΣΤΡO», meaning star, which might be familiar to at least a part of the public. In any case, this element is also distinctive, as it has no direct meaning in relation to the relevant services.

The contested sign is a figurative sign, consisting of the verbal element ‘stromio’ in slightly stylised lower case dark purple letters, but for the letter ‘o’ in the centre of the mark, which is stylised as a yellow and grey light bulb with yellow light rays above. A part of the public, such as for example the German-speaking public, may recall the word ‘strom’ in the mark (especially in connection with the light bulb), meaning, inter alia, electricity, current (information extracted from Collins English dictionary on 14/10/2020 at https://www.collinsdictionary.com/dictionary/german-english/strom). Bearing in mind that the relevant services are business consultancy in the energy sector, this element is a bit weak for this part of the public and all the services. For another part of the relevant public, the verbal element ‘stromio’ has no meaning, and is, therefore, distinctive.

The figurative light bulb in the contested sign will be associated with electricity, energy, and therefore it is slightly weak for the relevant services as descriptive of the target of at least some of the relevant services.

The verbal element ‘stromio’ in the contested sign is the dominant element as it is the most eye-catching.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37).

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.

Visually, the signs coincide in the letters ‘*strom*o’. However, they differ in the initial letter ‘A’ of the earlier marks and in an additional letter ‘I’ in penultimate position in the contested sign. The initial letter ‘A’ of the earlier marks is visually very different from the initial letter ‘s’ of the contested sign. Moreover, the signs differ in the stylisation of the contested mark including the figurative element of a light bulb, which is slightly weak, and the colours.

Therefore, the signs are visually similar to a low degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‘*strom*o’, present identically in both signs. The pronunciation differs in the sound of the letter ‘A’ in the beginning of the earlier signs and in the penultimate letter ‘I’ of the contested sign, which give the signs a different rhythm and intonation for a major part of the public, such as the German and French-speaking, ‘AS-TRO-MO’ versus ‘STRO-MI-O. The Spanish public, however, are likely to pronounce the contested mark as (E)S-TRO-MIO, which is a bit closer. Still, the marks differ significantly in their beginnings and endings and the element ‘ASTRO’ in the beginning of the earlier marks will be easily perceived also for this part of the public.

Therefore, the signs are aurally similar to a lower than average degree.

Conceptually, for a part of the public, the verbal elements will not be associated with any meaning and only the light bulb in the contested sign will be perceived with a meaning, as explained above. Since the earlier signs will not be associated with any meaning, the signs are not conceptually similar for this part of the public.

For another part of the public, namely the part that perceives a meaning/association in both marks, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with a dissimilar meaning for this part of the public, the signs are conceptually dissimilar.

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 services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

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 services are assumed to be identical. They are directed at business consumers with a high degree of attentiveness.

The signs are visually similar to only a low degree and aurally similar to a degree below average. The distinctiveness of the earlier mark is normal.

The verbal elements in the marks differ in their initial letters and this will not go unnoticed by the relevant consumers, especially since the degree of attentiveness in high, as described above. The first part of a sign is generally the part that primarily catches the consumer’s attention and, therefore, will be remembered more clearly than the rest of the sign. This means that in general the beginning of a sign has a significant influence on the general impression made by the mark (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 40; 25/03/2009, T-109/07, Spa Therapy, EU:T:2009:81, § 30). Moreover, the marks have a totally different conceptual association for a major part of the public, as described above.

Therefore, the differences between the verbal elements and the stylisation of the contested sign create a sufficient distance between the overall impressions of the signs. The consumers will be able to safely distinguish between the signs at issue and will not assume that the services offered come from the same or economically linked undertakings.

Considering all the above, and even assuming that the services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.

According to Article 109(7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and Rule 94(7)(d)(ii) EUTMIR, in force before 01/10/2017), the costs to be paid to the applicant are the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Anna BAKALARZ

Lena FRANKENBERG GLANTZ

Christian STEUDTNER

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.