OPPOSITION Nо B 3 105 846

 

VSE Aktiengesellschaft, Heinrich-Böcking-Str. 10-14, 66121 Saarbrücken, Germany (opponent), represented by Best Rechtsanwälte PartmbB, Hostatostr. 26, 65929 Frankfurt am Main, Germany (professional representative) 

 

a g a i n s t

 

Infinita Energia - Energias Renováveis, S.A., Centro de Negócios, Rua do Matadouro Regional, Lote 22, Zona Industrial de Santarém, 2005-002 Romeira e Várzea, Santarém, Portugal (applicant), represented by Elzaburu, S.L.P., Miguel Ángel, 21, 28010 Madrid, Spain (professional representative).

 

On XX/03/2021, the Opposition Division takes the following

 

 

DECISION:

1.	Opposition No B 3 105 846 is rejected in its entirety.

 

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

 

REASONS

 

On 11/12/2019, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 117 008 (figurative mark), namely against all the goods and services in Classes 4, 7, 9, 35, 37, 39, 40 and 42. The opposition is based on European Union trade mark registration No 1 173 947 and German trade mark registration No 30 2011 040 483, both for the word mark ‘energis’. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

Proof of use of the earlier marks was requested by the applicant. However, at this point, the Opposition Division does not consider it appropriate to undertake an assessment of the evidence of use submitted (15/02/2005, T-296/02, Lindenhof, EU:T:2005:49, § 41, 72). The examination of the opposition will proceed as if genuine use of the earlier marks had been proven for all the goods and services invoked, which is the best light in which the opponent’s case can be considered.

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

 

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

a) The goods and services

 

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

EUTM No 1 173 947

Class 37: Construction of installations for providing and/or treating and/or distributing of electricity, gas, in particular natural gas, heating, in particular long-distance heating, and water, excluding construction of installations for providing and/or treating energy generated from waste; construction of installations for recycling and/or processing of waste, refuse or industrial waste, excluding construction of installations for recycling and/or processing of waste, refuse or industrial waste for energy generating and air purifying; construction of installations for waste water removal and/or waste water purifying; construction of pipelines for transporting gases, liquids and solids; repair and maintenance of the aforesaid installations and pipelines.

Class 39: Transport and distribution of electricity, gas, heating and water, in particular distribution of electric current, natural gas and long-distance heating; transport of gases, liquids and solids by pipeline.

Class 40: Recycling of waste and trash, excluding recycling of waste and trash for energy generating and air purification; waste treatment using physical and/or chemical and/or biological processes, excluding for energy generating and air purifying; treatment of materials, excluding treatment of material for energy generating from waste and for air purifying, waste water purifying.

Class 42: Disposal of waste, refuse, industrial waste, waste water removal, excluding disposal of waste, refuse, industrial waste, waste water removal for energy generating and air purifying.

German trade mark No 30 2011 040 483

Class 4: Technical and industrial oils and greases; lubricants; dust absorbing, wetting and dust binding agents; gaseous and liquid fuels, heating fuels, lighting fuel; natural gas; liquefied natural gas (LNG); petroleum; coal (fuel); electrical energy; fuels including engine fuels and luminescent materials; fuel gas; fuel blends (gaseous); fuel oils; oil lubricants; oil gas; candles and wicks (for lighting purposes).

Class 7: Machines and industrial plants and installations comprised thereof for the energy, electric, building services and environmental industries; machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements (not hand operated)

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus. Electrical and electro technical devices, apparatus and instruments, namely electromagnetic coils, electric remote ignition apparatus, electro cables, electronic transformers (electricity), gauges (electric), distribution boxes, limitation controls (electricity), suppressors (electricity), measuring apparatus (electric), precision instruments; devices and instruments for recording, broadcasting, presentation and playback of sound and image; devices, apparatus and instruments for conducting, distributing, transforming, saving, regulating and/or controlling electrical current; data processing devices and computers; modems for the connection of computers, telephones, fax machines and remote monitoring devices to communication devices, data carriers; electronic publications (downloadable); saved software; electric meters; data storage devices (both recorded and unrecorded), namely discs, compact discs, magnetic hard drives and magnetic tape, solid state memory, tape decks, optically and/or mechanically encoded discs and storage tape systems, DVDs (included in this class); sound and image carriers (both recorded and unrecorded, included in this class), especially compact discs, cassettes, DVDs and/or audio tapes, records, video tapes; electronic games and game devices as auxiliary implements for external screen or monitor; apparatus and installations composed thereof in the field of telecommunications technology.

Class 35: Advertising; marketing, market research; business and/or organizational consulting in the sectors of advertising and marketing; publication of advertising texts; advice (information) and consultancy for consumers in the field of commerce and business [consumer consultancy]; composing of advertising texts; management; organization and execution of trade shows and exhibitions for business and advertising purposes; organization and execution of advertising campaigns; presentations of goods and services; exhibition of goods for advertising purposes; advertising in general interest magazines and trade journals as well as daily newspapers; radio and television advertising; banner advertising in stadiums; outdoor advertising; telephone answering service for absent participants; office jobs; organization of trade shows and exhibitions for commercial purposes in the field of business administration; management and organizational consulting in business matters in the sector of communication technology and in the energy sector; organizational preparation of planned construction as a service of a housing developer; business services for third parties in the procurement of energy and fuel by means of supply networks and pipelines, and also by means of service contracts for other companies; business consultation of third parties in the sector of production, procurement, transport and usage of energy and water; business consultation in the optimization of heat generating plants; marketing services in particular marketing of materials obtained through waste disposal, waste water treatment, remediation of waste sites, in particular through the recycling and removal of waste materials; commercial business and plant management for third parties in particular in the areas of energy, gas, water and waste water; commercial business and plant management for third parties in particular of heat generating plants; billing of heating expenses (consumption billing) for third parties; payroll accounting; business administration services and professional business services aimed at organisation of access to pipeline networks of third parties (administrative service); execution of commercial services, namely billing of energy deliveries for third parties; acceptance, processing and settling orders in the area of energy supply; establishment of cost-price analyses in the area of energy procurement and energy supply; compilation of statistics in the area of energy procurement and energy supply; procurement services for third parties (purchasing of goods and services for other companies) in the area of energy procurement and energy supply; procurement of commercial transactions and contracts for third parties in the area of energy procurement and energy supply, in particular procurement of contracts regarding transport capacity, transport services by means of supply networks, storage capacities and gas structuring services, also in the framework of e-commerce for third parties; management for third parties of installations that produce, transmit or supply electrical and/or thermal energy, gas or water; procurement of contracts for third parties regarding the provision and utilisation of transport rights in pipeline networks.

Class 37: Building construction; services of a builder, namely the execution of construction projects, in particular disposal site construction, development of building lands, railway track construction, building construction, sports complex construction and underground work; installation and maintenance of networks for data communication (hardware); maintenance, servicing, installation, repairs, fault clearance of implements and plants in the areas of power, electrical, building services, communication and environmental technology; disassembly of oil tanks; fault clearance in electrical installations in particular in the areas of energy, electrical, building services, communication and environmental technology as well as mechanical and plant engineering; construction and maintenance of supply networks for the transport of natural gas, liquefied natural gas, oil, electric power; execution of construction measures for obtaining optional access to pipeline networks of third parties (construction); installation, maintenance and repair of batteries and accumulators, including charging and recharging of electric accumulators and electric batteries; services of petrol stations and vehicle service stations, namely fuelling, maintenance, repair and cleaning of vehicles; vehicle workshop services (as far as included in class 37); maintenance, repair and servicing of vehicles, in particular electric vehicles.

Class 39: Transportation; water distribution and supply (transport); disposal of waste materials from power plants; emptying and filling of oil tanks (storage); all types of logistics services relating to transportation; all types of logistics services in the nature of transportation services through a utility or public services, in particular the delivery of electrical energy, gas, water and district heating to communes, privates households, business and industry; storage, transportation, distribution and delivery of energy and fuel by means of supply networks and also by means of service contracts with third parties; water distribution and supply; storage, transportation, distribution and delivery of energy and fuel by means of pipelines and also by means of service contracts with third parties; storage of energy and fuel; rental of supply networks (energy distribution networks) for the transport of energy sources; packaging and storage of goods; rental of trucks, ships and airplanes; rental of garages and parking lots; transport and distribution of grid gas, natural gas and liquefied natural gas, electricity, water and district heating; waste transport; operation of disposal sites, namely storage of waste oil, waste materials; transport of contaminated soils to be used as landfill; removal of all types of waste; travel services.

Class 40: Waste processing (recycling), in particular also including processing of waste materials and residual materials that accrue in the course of the transformation of mineral resources; waste water treatment; disposal of all types of wastes, namely by waste processing (recycling) and by incineration and other forms of destruction of waste; production of energy, in particular through water, petroleum, and natural gas; remediation of contaminated soils through soil treatment (transformation); remediation of waste sites through separation, burning, sorting and obliteration of all ypes of waste; execution of water management measures, namely drinking water, industrial water and waste water treatment, effluent treatment; processing and transformation of mineral resources as well as other raw materials and energy and of the materials and products accruing thereby as well as all types of chemical and petrochemical products (refining).

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; technical planning of pipelines and cables in the areas of gas, water, waste water and telecommunication; conducting explorative drilling in search of mineral resources, other raw materials, energy and of the materials and products accruing thereby as well as all types of chemical and petrochemical products (refining); technical consultation in the area of energy saving, environmentally compatible and/or efficient energy production for consumers and businesses; technical monitoring of production processes in particular input and output as well as technical control of gases and liquids for transport; engineering services, in particular technical calculation; research in the area of environmental protection; creation of programs for data processing, particular of programs in the areas of energy procurement, energy supply, energy delivery and energy transport; technical safety services, namely conducting technical tests and technical inspections regarding compliance with production and safety regulations in the course of production and handling processes, as well as technical consultancy related thereto; technical planning of infrastructure development proposals, sewers, sewage plants and power plants; technical consultation, technical opinions and technical computations in the area of production, procurement of the transport and usage of energies, gas, water and waste water; technical planning of heat generating plants; technical planning in the optimization of heat generating plants; technical monitoring of industrial installations in the areas of energy, gas, water and waste water and of heat generating plants; services in the area of science and technology as well as research and development services in this regard; compilation of analyses for petroleum extraction; engineering work in the areas of power engineering, electrical engineering, building services engineering, communications engineering, environmental engineering; searching of mineral resources and other raw materials and of energy and of the materials and products accruing thereby as well as all types of chemical and petrochemical products; technical planning for the manufacture of implements and plants in the areas of power, electrical, building services, communications and environmental engineering as well as mechanical and plant engineering, mineral exploration as well as exploration for other raw materials and energy and the materials and products accruing from them as well as all types of chemical and petrochemical products; engineering services, in particular in the areas of gas transport, supply of gas, heat and power as well as the utilization of natural gas.

The contested goods and services are the following:

Class 4: Electrical power, electricity.

Class 7: Generators, power and electricity supply apparatus.

Class 9: Electricity measuring instruments; photovoltaic apparatus for generating electricity; apparatus and instruments for accumulating and storing electricity; apparatus, instruments and cables for electricity.

Class 35: Billing services in the field of energy; assistance and consultancy services in the field of business management of companies in the energy sector; promotion of energy projects.

Class 37: Installation of solar power and wind power systems; maintenance of power generating apparatus and installations; repair of energy production plants and machines.

Class 39: Supply of electricity; distribution of energy; consultancy services relating to the distribution of electricity.

Class 40: Energy production; production of electrical power from renewable sources.

Class 42: Design and development of regenerative energy generation systems; energy auditing; consultancy in the field of energy-saving; research in the field of energy; consultancy relating to technological services in the field of power and energy supply.

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

The terms ‘in particular’ and ‘including’, used in the list of goods and services, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce a non-exhaustive list of examples (09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

 

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

Contested goods in Class 4

The contested electrical power, electricity are synonymous with the opponent’s electrical energy covered by earlier German trade mark No 30 2011 040 483 in the same class. Therefore, they are identical.

Contested goods in Class 7

The contested generators, power and electricity supply apparatus are included in, or overlap with, the broader category of the opponent’s machines and industrial plants and installations comprised thereof for the energy, electric, building services and environmental industries covered by earlier German trade mark No 30 2011 040 483 in the same class. Therefore, they are identical.

Contested goods in Class 9

The contested electricity measuring instruments; photovoltaic apparatus for generating electricity; apparatus and instruments for accumulating and storing electricity; apparatus, instruments and cables for electricity coincide, are included in, or overlap with, the opponent’s electrical and electro technical devices, apparatus and instruments, namely measuring apparatus (electric); apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity covered by earlier German trade mark No 30 2011 040 483 in the same class. Therefore, they are identical.

Contested services in Class 35

The contested billing services in the field of energy include as a broader category the opponent’s billing of heating expenses (consumption billing) for third parties covered by earlier German trade mark No 30 2011 040 483 in the same class. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to those of the opponent.

The contested assistance and consultancy services in the field of business management of companies in the energy sector include, or overlap with, the opponent’s organizational consulting in business matters in the energy sector covered by earlier German trade mark No 30 2011 040 483 in the same class, and are, therefore, identical.

The contested promotion of energy projects are included in the opponent’s marketing services in particular marketing of materials obtained through waste disposal, waste water treatment, remediation of waste sites, in particular through the recycling and removal of waste materials covered by earlier German trade mark No 30 2011 040 483 in the same class. Consequently, they are identical.

Contested services in Class 37

The contested installation of solar power and wind power systems; maintenance of power generating apparatus and installations; repair of energy production plants and machines are included in, or overlap with, the opponent’s construction of installations for providing and/or treating and/or distributing of electricity, excluding construction of installations for providing and/or treating energy generated from waste; repair and maintenance of the aforesaid installations covered by earlier EUTM No 1 173 947 in the same class. Therefore, they are identical.

Contested services in Class 39

The contested supply of electricity; distribution of energy are included in, include, or overlap with, the opponent’s distribution of electricity, gas, heating and water, in particular distribution of electric current, natural gas and long-distance heating covered by earlier EUTM No 1 173 947 in the same class. The supply of electricity is the process of bringing energy from the point of creation, such as a power plant, to the point of consumption; consequently, it is inherent to the concept of distribution. Therefore, these services are identical.

As far as the contested consultancy services relating to the distribution of electricity are concerned, these refer to providing advice that is tailored to the circumstances or needs of a particular user and that recommends specific courses of action for the user. These services are usually provided by the same undertakings as those in charge of supplying electricity, targeting the same consumers and being distributed through the same channels. Therefore, they are at least similar to the opponent’s distribution of electricity, gas, heating and water, in particular distribution of electric current, natural gas and long-distance heating covered by earlier EUTM No 1 173 947 in the same class.

Contested services in Class 40

The contested energy production; production of electrical power from renewable sources coincide and/or overlap with the opponent’s production of energy, in particular through water, petroleum, and natural gas covered by earlier German trade mark No 30 2011 040 483 in the same class. Consequently, they are identical.

Contested services in Class 42

The contested design and development of regenerative energy generation systems overlap with the opponent’s technical planning of pipelines and cables in the areas of gas, water, waste water covered by earlier German trade mark No 30 2011 040 483 in the same class; therefore, they are identical.

The contested energy auditing overlaps with the opponent’s technical opinions and technical computations in the area of production, procurement of the transport and usage of energies, gas, water and waste water covered by earlier German trade mark No 30 2011 040 483 in the same class. They are, consequently, identical.

The contested consultancy in the field of energy-saving; consultancy relating to technological services in the field of power and energy supply include or overlap with the opponent’s technical consultation in the area of energy saving, environmentally compatible and/or efficient energy production for consumers and businesses covered by earlier German trade mark No 30 2011 040 483 in the same class, and are, thus, identical.

The contested research in the field of energy overlaps with the opponent’s research in the area of environmental protection covered by earlier German trade mark No 30 2011 040 483 in the same class, therefore being 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 at least similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the energy sector.

 

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 and the distinctiveness of the earlier marks

 

energis
Earlier trade marks	Contested sign

The relevant territories are the European Union and 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).

When assessing the similarity of the signs, an analysis of whether the coinciding components are descriptive, allusive or otherwise weak is carried out to assess the extent to which these coinciding components have a lesser or greater capacity to indicate commercial origin. It may be more difficult to establish that the public may be confused about origin due to similarities that pertain solely to non-distinctive elements.

The earlier word marks are composed of the single element ‘energis’, which even if it does not exist as such in any of the languages of the relevant territories, will be associated to the concept of ‘energy’ (i.a. ‘power from sources such as electricity and coal that makes machines work or provides heat’; cfr. Collins English Dictionary at: https://www.collinsdictionary.com/dictionary/english/energy, entry no. 4), since the element is very close to the word that conveys such a meaning in the relevant territories (e.g. ‘Energie’ in German, ‘energi’ in Danish and Swedish, ‘energía’ in Spanish, ‘enerģija’ in Latvian, ‘energia’ in Finnish, Italian, Polish and Portuguese, ‘energie’ in Czech, Dutch and Romanian, and ‘énergie’ in French). Taking into account the goods and services concerned, this element has a limited degree of distinctive character due to the fact that it refers to the characteristics/nature of said goods and services.

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion. Since the opponent did not explicitly claim that its marks are particularly distinctive by virtue of intensive use or reputation, the assessment of their distinctiveness will rest on their distinctiveness per se. Considering what has been stated above, the distinctiveness of the earlier marks must be seen as lower than average for all the relevant goods and services.

As regards the contested sign, it is a complex sign composed of a variety of elements, namely, the verbal elements ‘ENERGIA’ and ‘Grupo capitalenergy’ and two figurative elements consisting of a prominent artistic drawing made up of uneven lines that may resemble an infinity symbol or a figure-of-eight track, where the verbal element ‘ENERGIA’ is placed on its bottom right hand side, and the representation of the globe in blue between the elements ‘Grupo’ and ‘capitalenergy’ at the bottom of the sign. The element ‘capitalenergy’ is depicted in light grey and blue, colours that clearly distinguish the components ‘capital’ and ‘energy’, with the second component being more immediately perceivable in the sign due to its colour.

It is considered that all the verbal elements of the sign will be understood by the relevant public due to the existence of either exact or close equivalents in the different languages of the relevant territories. By way of illustration, and in respect of ‘Grupo’: ‘group’ in English, ‘Gruppe’ in German, ‘gruppe’ in Danish, ‘groupe’ in French, ‘grup’ in Romanian, all meaning, inter alia, enterprise; in respect of ‘capital’, this word exists as such or with an initial ‘k’ in many languages: e.g. ‘capital’ in English, French, Romanian and Spanish, ‘Kapital’ in German, ‘kapital’ in Danish, and ‘kapitál’ in Czech, meaning, inter alia, assets or resources; while as far as ‘ENERGIA’ and ‘energy’ are concerned, the same considerations made in respect of the earlier marks are applicable.

The verbal elements ‘Grupo capitalenergy’ will be perceived by the relevant public as the entity providing the relevant goods and services in the field of energy, rather than as a badge of origin, and their distinctive character is therefore limited. The element ‘ENERGIA’ is, contrary to the opponent’s arguments as to its distinctiveness, non-distinctive (or of limited distinctiveness for the public whose languages have only a similar equivalent). The depiction of the globe is also of limited distinctiveness, since it is an element commonly used in trade to refer to goods/services provided globally or internationally.

In the light of the aforementioned, the most distinctive element of the contested sign is the artistic drawing resembling an infinity symbol or eight-shape track, as stated by the applicant, since it does not convey any clear and direct meaning in respect of the goods and services concerned.

It is important to highlight that the verbal element of a sign does not automatically have a stronger impact than the figurative element (31/01/2013, T‑54/12, Sport, EU:T:2013:50, § 40) and, in certain cases, the figurative element of a composite mark may, owing to, inter alia, its shape, size, colour or position within the sign, rank equally with the word element (23/11/2010, T‑35/08, Artesa Napa Valley, EU:T:2010:476, § 37). This is relevant in the present case as the contested sign’s figurative element referred to above is neither banal nor commonplace and in fact is visually eye-catching, being the contested sign’s dominant element due to its size and position.

Visually, the signs coincide in the sequence of letters ‘ENERGI*’ present in the earlier marks and in one of the contested sign’s verbal elements, the distinctiveness of which is at most limited. They differ in the last letter of these elements (‘S’ vs ‘A’) and in the rest of elements of the contested sign, with the figurative element resembling an infinity symbol/eight-shape track being its dominant and most distinctive element.

Although the earlier marks are almost entirely reproduced in an element of the contested sign, contrary to the opponent’s views, it does not play an independent distinctive role within this sign, but it is part of a complex sign, leading to a different overall impression. As a result, the relevant public will immediately perceive not only the coinciding initial letters ‘ENERGI’ in the contested sign but also the additional elements, which create a striking visual difference and result in the signs having a very different layout.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territories, the pronunciation of the signs coincides in the sound of the letters ‛ENERGI*’, present identically in both signs. The pronunciation differs in the sound of the last letter of the aforementioned element (i.e. ‘S’ vs ‘A’) and in the contested sign’s additional elements ‘Grupo capitalenergy’. Taking into account the distinctive character of the respective elements, the signs are aurally similar to a below average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs will be associated with the concept of energy, with the additional elements of the contested sign introducing some other concepts (e.g. enterprise, the globe, and capital). Given the (at most) limited distinctive character of the coinciding meaning, the degree of this similarity is nevertheless low.

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

d) Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (recital 11 of the EUTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18; 11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

In the present case, the goods and services are identical or at least similar, and target the public at large as well as business customers, with a degree of attention varying from average to higher-than-average.

The signs have been found visually and conceptually similar to a very low and low degree, respectively, and aurally similar to a below average degree, on account of the degree of distinctiveness of the relevant elements and the weight and role played by the contested sign’s differing elements, in particular the figurative element consisting of an artistic drawing resembling an infinity symbol or eight-shape track.

As indicated above in section c) of this decision, the earlier marks, given the nature of their verbal element, have a below average degree of distinctive character in relation to the relevant goods and services from the perspective of the public in the relevant territories.

In that respect, signs that have limited intrinsic distinctive character in relation to the goods and services they cover should not be protected beyond what is compatible with the possibility for all to use signs that are necessary to describe the goods/services that are legitimately traded by competitors. A company is certainly free to choose a mark with limited distinctive character, including trade marks with descriptive words, and use it in the market. However, in so doing, it also has to accept that competitors are equally entitled to use trade marks with similar or identical components (including in any language of the relevant territory) (04/05/1999, C‑108/97 & C‑109/97, Chiemsee, EU:C:1999:230; 06/05/2003, C‑104/01, Libertel, EU:C:2003:244; 23/05/2012, R 1790/2011‑5, 4REFUEL (FIG. MARK)/REFUEL).

The evaluation of likelihood of confusion implies some interdependence between the relevant factors, which means that 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). However, the differences found between the signs are sufficient for the Opposition Division to conclude that the relevant public, who will display either an average or a higher-than-average degree of attention, will safely distinguish between the marks, and will not consider that the goods and services found to be identical or at least similar originate from the same undertaking or economically linked undertakings, bearing also in mind that the signs’ most similar elements are of limited distinctiveness, at most, for the relevant public.

Considering all the above, even for those goods and services found to be identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.

Given that the opposition is not well founded under Article 8(1) EUTMR, it is unnecessary to examine the evidence of use filed by the opponent.

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, 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

 

 

Julia GARCÍA MURILLO

Alicia BLAYA ALGARRA

Helen Louise MOSBACK

 

 

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.