OPPOSITION No B 3 091 505

Praktiker Hellas Emporiki Anonimi Etairia, 176 Pireos Str., 177 78 Tavros, Greece (opponent), represented by Potamitis Vekris Law Partnership, 11 Omirou Str., 10672 Athens, Greece (professional representative)

a g a i n s t

IT-Budget GmbH, Nassaustraße 12, 65719 Hofheim, Germany (applicant).

On 09/09/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 091 505 is upheld for all the contested goods and services, namely:

Class 6: Building and construction materials and elements of metal; structures and transportable buildings of metal; containers, and transportation and packaging articles, of metal; small items of metal hardware; unprocessed and semi-processed materials of metal, not specified for use.

Class 9: Scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity.

Class 20: Furniture and furnishings.

Class 35: Advertising, marketing and promotional services.

2. European Union trade mark application No 18 027 919 is rejected for all the contested goods and services. It may proceed for the remaining services.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against some of the goods and services of European Union trade mark application No 18 027 919 for the word mark ‘IT-BUDGET’, namely against all the goods and services in Classes 6, 9, 20 and 35. The opposition is based on, inter alia, international trade mark registration No 933 920 for the figurative mark , designating the European Union. The opponent invoked Article 8(1)(b) EUTMR.

PRELIMINARY REMARK

The opposition was filed after the contested mark was partly rejected for some of the goods and services on absolute grounds for refusal. However, the limitation of the goods and services was not properly listed in the English version of the goods and services. After the Office corrected the list of the goods and services of the contested mark, the opponent maintained the opposition against all goods and services in Classes 6, 9, 20 and 35.

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 international trade mark registration No 933 920 designating the European Union.

a) The goods and services

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

Class 6: Common metals and their alloys; metal building materials; metal building materials for prefabricated houses; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; goods of common metal (included in this class); ores; ironmongery and small items of metal hardware; screws, nails, rivets, nuts, hooks, ends, handles, all of the above-mentioned goods being of metal; metal pipes; safes; metal tent pegs; metal fireplace cowls; metal chimneys (prefabricated); metal chimney tops; metal chimney hoods; metal chimney pipes; metal architectural hardware; metal furniture fittings; metal locks; metal strips; metal borders for cornices; metal door casings; metal doors; metal front doors; metal interior doors; metal side doors; metal door frames; metal awning constructions; metal blinds; rolling shutters made of steel; small fittings of metal hardware; metal cable pipes; door fittings of metal and iron; metal sheets; metal profiles and wood joinery; metal furniture knobs (handles); goods of metal (included in this class) in the form of individual elements for building shelves; metal chains; wire cables; safes; letter boxes of metal; metal locks for vehicles, bolts for locks, locks (other than electric); spring locks; padlocks; metal strips; metal panels; metal floor pavings, building panels of metal; covering and sheeting plates of metal; metal shims; windows of metal; fittings of metal and ironwork for windows; window frames of metal; window sills of metal; window shutters of metal; window bolts; window pulleys; window accessories of metal (included in this class); conductor pipes of metal for ventilation and air-conditioning; metal tool boxes; metal tool chests, empty and not fitted to the objects they are to accommodate; breakdown kits (boxes) made of metal for motor vehicles; metal pegs; metal wall plugs; metal brackets for cables and pipes; metal binding screws for cables, metal cable joints (non-electric), metal rope and cable thimbles; swimming pools (prefabricated metal constructions); transportable metal buildings, in the form of garden huts, conservatories, garden pavilions, hothouses and tool sheds; collapsible metal-frame garden pavilions; metal rainwater tanks; goods made of metal (included in this class) for horticultural and landscaping purposes; metal compost containers; woven wire fencing and lattices; fencing, posts, containers, all of metal for compressed gas or liquid air; tin petrol canisters, also with holders; figures (statuettes) made of common metals.

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, signalling, monitoring, life-saving and teaching apparatus and instruments; measuring apparatus and instruments; calliper rules; measuring tapes; water level indicators; folding rules and feeler gauges; scales; mechanical and electric/digital weighing instruments, bathroom scales; tachometers; oil pressure and temperature gauges; timers, not for clocks; ampere and volt meters; odometers; battery testers; frost testers; testers for the acid content of automobile batteries, electric cables, wires, conductors and coupling fittings for them, as well as switches (electric) and switchboards or distribution cabinets; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission and reproduction of sound and images; stereo systems; CD players; cassette recorders and players; electric, electronic and optical devices for the recording, processing, broadcasting, transmission, placement, storage and issue of news, images, text, voice and data; data processing devices and computers and computer systems composed mainly of such devices; electric systems consisting of a combination of the aforementioned apparatus and devices; parts of all of the aforementioned apparatus and devices; computer software; computer programmes; computer programmes (including operating systems) stored on data carriers and computer systems mainly consisting of such programmes as well as databases and programme libraries; portable radios; home radios; radio-phono-cassette compact systems; clock radios; tuners; loudspeakers; radiotelephones; monitors; camera apparatus; magnetic sound recorders; microphones; mixing consoles; phonographs; television sets; magnetic recording carriers, phonograph records; machine-readable data carriers of all types containing programmes; blank and recorded magnetic data carriers; magnetic tapes; magnetic discs; optical recording carriers; speech machines; needles for record players; automatic vending machines and mechanisms for coin-operated apparatus; coin-operated dispensing machines operated by the insertion of coins or chips; cash registers, calculating machines, fire-extinguishing apparatus; electric installation materials (included in this class); personal safety working clothes and footwear (industrial safety, radiation and fire protection); diving masks; diving suits; snorkels; electric control devices for heating units of saunas, steam baths, whirlpools and swimming pools, and for sun protection devices such as awnings, blinds, rolling shutters and shade sails; electric devices for washing windows; hourglasses; hygrometers; hydrometers; thermometers (not for medical purposes); thermostats, connection cables (electric); electric systems for motor vehicles and their parts (included in this class); batteries; battery chargers and batteries for motor vehicles; electric cables and wires, fuses, wire wrap connections, cover plates; electric welding devices and their accessories (included in this class); soldering devices and their accessories (included in this class); electric irons; electric locks; electric cables and wires; electric switches and switch systems; electric accumulators, also for vehicles; pressure loss indicators (automatic) for vehicle tyres; tachographs discs for vehicles; speed control devices for vehicles; navigation devices for vehicles (on-board computers); car radios and their parts; installation sets for car radio systems, mainly consisting of a metal assembly frame, panels, loudspeaker connectors; loudspeakers; antennas; vehicle steering and controlling simulators; voltage regulators for vehicles; fire extinguishers for motor vehicles; ignition batteries; hazard light lamps; alarm devices; alarm systems, also for vehicles; electric cable ducts; identification threads for electric wires, identification sheaths for electric wires, wire connectors (electricity), sheaths for electric wires, material for electric wiring (wires, cables); electric outlets, outlet covers; audio, video and satellite receiver accessories (included in this class); outdoor motion detectors; flashlights (photography); advance warning triangles for vehicles, safety vests, starter cables for engines, the aforementioned goods also as contents of breakdown kits for motor vehicles.

Class 20: Furniture, furniture parts, furniture knobs, mirrors, picture frames; shelves and parts of shelves and elements (not of metal) (included in this class) for building shelf systems; goods (included in this class) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for these materials or of plastics, in particular, for equipping workshops in the form of individual elements for building shelves and for use as decorations and Christmas decorations; garden furniture made of wood, plastics, metal, reed, cane, wicker; folding tables and benches (furniture); sleeping bags for camping; stands and holders for putting up/fastening of parasols (included in this class); cushions (included in this class); air mattresses (included in this class); summerhouses; tent pegs (not of metal); camping furniture; fire screens for household purposes; makeup and shaving mirrors; mirror medicine cabinets made of plastic, wood or metal; workbenches, joiner’s benches; sawhorses; letter boxes (not of metal or of masonry); brads (dowels, pegs), not of metal; screw anchors (wall-plugs), not of metal; screws (not of metal); firearm lockers (furniture); locks (except electric locks) (not of metal); locks for vehicles (not of metal); countertops, tabletops, panels as parts of furniture (not of precious metal); panels made of cork as parts of furniture; pasting tables; plastic ties for cables and pipes, cable clamps (not of metal); sauna accessories made of wood (included in this class), in particular, headrests, sauna stools, relaxing loungers, sauna benches and bases for sauna benches, protective casings for sauna heaters; furniture panels, doors for furniture, also slatted; carved, decorative and picture mouldings; garden benches; kitchen furniture; curtain hooks, curtain holders (not of textile material); curtain rings, curtain rollers, curtain rods, curtain tie-backs, drape rings, drape rollers made of plastic, curtain rails, drape rods; picture frames; wooden strips for frames (framing), frames, framing strips, frameless picture holders; wicker furniture; rattan furniture; office furniture; fire screens for household purposes; serving trolleys (furniture); tool handles (not of metal); handles (not of metal); rainwater tanks (not of metal or masonry); flower-pot pedestals; art objects, figurines (statuettes) of wood, wax, plaster or plastic; plastic petrol canisters, also with holders; devices (including mobile devices) for storing irrigation system hoses, namely, hose drums made of plastic (included in this class); toolboxes and tool chests (not of metal), empty and not fitted to the objects they are to accommodate; inflatable chairs; sleeping mats for camping; adhesive hooks, bathroom racks, protective covering for garden furniture (all not of metal and included in this class); vice benches, cushions for chairs and lounge chairs, especially for garden and outdoor use (included in this class); cushions.

Class 35: Retail services in the above Classes 1 to 12, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 28 and 31, in particular, products for the building industry and for tradesman, automobile accessories, camping, horticultural, barbecue, lighting, sanitary and bath products, leisure products, kitchen products and consumer goods for the do-it-yourself market; advertising, business management; business administration; office work.

The contested goods and services, after the limitation, are the following:

Class 6: Building and construction materials and elements of metal; structures and transportable buildings of metal; containers, and transportation and packaging articles, of metal; small items of metal hardware; unprocessed and semi-processed materials of metal, not specified for use.

Class 9: Scientific research and laboratory apparatus, educational apparatus and simulators; apparatus, instruments and cables for electricity.

Class 20: Furniture and furnishings.

Class 35: Advertising, marketing and promotional services.

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 Class 6

Small items of metal hardware are identically contained in both lists of goods.

The contested building and construction materials and elements of metal; structures and transportable buildings of metal are identical to the opponent’s metal building materials, because the opponent’s goods include, or are included in, or overlap with, the contested goods.

The contested containers of metal includes, as a broader category, the opponent’s metal compost containers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested unprocessed materials of metal, not specified for use are raw materials and they overlap with the broad category of the opponent’s common metals. Therefore, they are identical.

The contested semi-processed materials of metal, not specified for use are semi-finished products directed at industries that will process them further. They can coincide with the opponent’s metal building materials in nature, producer, relevant public and distribution channels. Therefore, these goods are at least similar.

The contested transportation and packaging articles, of metal are similar to the opponent’s transportable buildings of metal as they can coincide in producer, relevant public and distribution channels.

Contested goods in Class 9

The contested scientific research and laboratory apparatus is included in the broad category of the opponent’s scientific apparatus and instruments. Therefore, they are identical.

The contested educational apparatus and simulators are included in the broad category of the opponent’s teaching apparatus and instruments. Therefore, they are identical.

The contested apparatus, instruments for electricity includes, as a broader category, or overlaps with, the opponent’s apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested cables for electricity are included in the broad category of the opponent’s apparatus and instruments for conducting electricity. Therefore, they are identical.

Contested goods in Class 20

Furniture is identically included in both lists of goods.

The contested furnishings are defined as ‘furniture and accessories, including carpets and curtains, with which a room, house, etc, is furnished’. Consequently, the contested furnishings includes, as a broader category, the opponent’s furniture. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

Contested services in Class 35

Advertising is identically contained in both lists of services.

The contested marketing and promotional services overlap with the opponent’s advertising. Therefore, they are identical.

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 are directed at the public at large and business customers with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, depending on the price, specialised nature, or terms and conditions of the goods and services purchased.

c) The signs

	IT-BUDGET
Earlier trade mark	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). This applies by analogy to international registrations designating the European Union. 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 element ‘BUDGET’ is meaningful in certain territories, for example in those countries where German is understood. It means ‘estimates of public revenue and expenditure; funds available to someone for certain expenses’ (information extracted from Duden on 09/09/2020 at https://www.duden.de/rechtschreibung/Budget). This meaning cannot be regarded as directly describing any characteristics of the relevant goods and services. Therefore, the common element ‘BUDGET’ has a normal degree of distinctiveness. Since a coincidence in a distinctive element tends to increase the degree of similarity between the signs, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public, such as the consumers in Germany and Austria.

The earlier mark contains figurative elements: a square and a rectangular frame, which are basic geometrical shapes and are, therefore, non-distinctive.

The earlier mark has no elements that could be considered clearly more dominant than other elements.

The verbal element ‘IT’ of the contested mark means ‘information technology’ (information extracted from Duden on 09/09/2020 at https://www.duden.de/rechtschreibung/IT). Since the relevant goods and services have nothing obvious in common with IT goods and services, this element has a normal degree of distinctiveness.

Visually and aurally, the signs coincide in the distinctive element ‘BUDGET’, which is the sole verbal element in the earlier mark and the second element of the contested sign. However, the signs differ in the element ‘IT-’, positioned at the beginning of the contested sign. While, generally the beginning of signs has a greater impact on the consumer, this does not make the signs as a whole dissimilar and does not counteract the clearly perceivable similarities. Notwithstanding the difference in the initial parts of the signs, which consists of two letters and a hyphen, ‘IT-’, their endings, which consist of six letters, do coincide; moreover, the sole verbal element of the earlier mark is entirely incorporated in the contested sign as an independent element.

Furthermore, the signs differ visually in the earlier mark’s slightly stylised font and non-distinctive figurative elements. 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).

Therefore, 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 coincide in the concept of their common distinctive element ‘BUDGET’, and taking into account the additional element ‘IT-’ of the contested sign and the earlier mark’s non-distinctive figurative elements, 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.

According to the opponent, the earlier mark enjoys a high degree of distinctiveness since it is not descriptive and has a strong semantic content. In addition, the earlier mark was registered in 2006 and has been used ever since.

When an earlier mark is not descriptive, it is Office practice to consider it as having no more than a normal degree of inherent distinctiveness. Any higher degree of distinctiveness acquired by the earlier mark has to be proved by its proprietor by submitting appropriate evidence.

The opponent did not file any evidence in order to prove a higher degree of distinctiveness of the earlier mark. Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some non-distinctive elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

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.

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 goods and services at issue found to be identical or similar target the general and professional public, whose degree of attention may vary from average to high. The distinctiveness of the earlier mark is normal.

The signs are visually, aurally and conceptually similar to an average degree, as they share the distinctive element ‘BUDGET’, which is the sole verbal element of the earlier mark and is included in its entirety in the contested sign. Moreover, this element plays an independent and distinctive role within the contested sign. In an overall assessment of the marks, the contested sign’s differing element, although positioned at the beginning of the sign, does not have sufficient impact to counteract the similarities and to enable the relevant public to safely distinguish between the marks in question.

Therefore, it is highly conceivable that the relevant public, who, even if highly attentive, has to rely on its imperfect recollection of the signs, could confuse the signs or believe that the identical or similar goods and services originate from the same or economically linked undertakings.

Given the above, owing to the inclusion of the sole verbal element of the earlier mark in the contested sign, the relevant consumers might 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 and services that it designates.

Considering all the above, there is a likelihood of confusion on the part of the German-speaking part of the public. 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.

Therefore, the opposition is well founded on the basis of the international trade mark registration No 933 920 designating the European Union. It follows that the contested trade mark must be rejected for all the contested goods and services.

As the abovementioned earlier right leads to the success of the opposition and to the rejection of the contested trade mark for all the goods and services against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

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 applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Beatrix STELTER

Lidiya NIKOLOVA

Karin KLÜPFEL

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.