OPPOSITION No B 3 086 221

Guangzhou Renren Management Consulting Co. Ltd., Guangzhou, People’s Republic of China (opponent), represented by Urquhart-Dykes & Lord LLP, Arena Point Merrion Way, Leeds, LS2 8PA, United Kingdom (professional representative)

a g a i n s t

Exemplopuzzle, Unipessoal Lda, Quinta do Lourido, 4835-381 Guimarães, Portugal (applicant), represented by Alexandra Oliveira Barbosa, Av. da Boavista n.º 1837, 12º, 4100-133 Porto, Portugal (professional representative).

On 21/05/2020, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 086 221 is upheld for all the contested services.

2. European Union trade mark application No 18 038 516 is rejected in its entirety.

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

REASONS

The opponent filed an opposition against all the services of European Union trade mark application No 18 038 516 for the word mark ‘NOMO’. The opposition is based on German trade mark registration No 302 017 113 466 for the figurative mark and Polish trade mark application No 480 501 for the word mark ‘NOME’. The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION

According to Article 95(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments submitted by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Article 7(1) EUTMDR, the Office will give the opposing party the opportunity to submit the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Article 7(2) EUTMDR, within the period referred to above, the opposing party must also file evidence of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a trade mark that is not yet registered, the opposing party must submit a copy of the relevant filing certificate or an equivalent document emanating from the administration with which the trade mark application was filed (except in the case of a European Union trade mark application) — Article 7(2)(a)(i) EUTMDR. Where the evidence concerning the filing of the trade mark application is accessible online from a source recognised by the Office, the opposing party may provide such evidence by making reference to that source — Article 7(3) EUTMDR.

The opponent indicated in the notice of opposition that the earlier Polish trade mark No 480 501 was an application and not a registration. It is clear from the database TMview that this mark is still not registered. Therefore, the opposition must be rejected as unfounded, as far as it is based on earlier Polish trade mark No 480 501 and it will proceed based on earlier German trade mark No 302 017 113 466.

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.

1. The services

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

Class 35: Rental of vending machines; consultancy in human resources matters; marketing; business management consultancy; rental of stalls; search for sponsors; providing an online marketplace for buyers and sellers of goods and services; procurement services for others [purchasing goods and services for other businesses]; sales promotion for others; services of an import and export agency; arranging and concluding commercial transactions for others; commercial management of the licensing of goods and services for others; business management consultancy; rental of advertising space.

The contested services are the following:

Class 35: Mail order retail services connected with clothing accessories; mail order retail services for clothing; online retail store services relating to clothing; retail services connected with the sale of clothing and clothing accessories.

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.

The contested services are retail services related to clothing and clothing accessories, provided online, through mail order services, or in physical stores. The opponent’s providing an online platform for buyers and sellers of goods and services is basically an intermediary service that puts sellers in touch with buyers through the provision of a platform where the seller can display and offer its goods for sale without the intermediary being concerned with the nature or price of the goods on sale. The contested services are similar to a low degree to the opponent’s providing an online platform for buyers and sellers of goods and services as the relevant public may be the same, whether this is as a buyer or seller, and the purpose of the services, broadly speaking, may be the same, namely facilitating the sale of goods.

2. 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 found to be similar to a low degree are directed at the public at large. The degree of attention is considered to be average.

3. The signs and the distinctiveness of the earlier mark

NOME	NOMO
Earlier trade mark	Contested sign

The relevant territory is Germany.

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 signs under comparison have no meaning for the public in the relevant territory and no arguments to the contrary were submitted by the parties. The verbal elements of both signs are not related to the relevant services and are therefore distinctive.

The same finding applies to the distinctiveness of the earlier mark as a whole since no claim for enhanced distinctiveness through use was submitted by the opponent. Consequently, the distinctiveness of the earlier mark must be seen as normal.

Visually and aurally, the signs coincide in their string of letters and their sound ‘NOM’ at the beginning of the signs and they differ only in their last letter ‘E’ v ‘O’.

Therefore, the signs are visually and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory, as seen above. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

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

4. Global assessment, other arguments and conclusion

The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the circumstances of the case (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 16).

The services found be similar to a low degree target the public at large with an average degree of attention.

The signs are visually and aurally similar to a high degree and the conceptual comparison is not possible. The distinctiveness of the earlier mark is normal.

The signs coincide in their beginnings, namely the first three letters out of four, which is the part that consumers will focus on when they encounter the signs in the market. 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.

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). In the present case it is likely that consumers will remember the identical beginnings of the signs when they encounter them in the market and will be less aware of their different last letter.

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 similarities between the signs easily counteract the low degree of similarity between the services.

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

Therefore, the opposition is well founded on the basis of the opponent’s German trade mark registration No 302 017 113 466. It follows that the contested trade mark must be rejected for all the contested 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.

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

Tzvetelina IANTCHEVA

Sylvie ALBRECHT

Mads Bjørn Georg JENSEN

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.