OPPOSITION No B 3 117 034

Parker Intangibles LLC, 6035 Parkland Blvd., 44124-4141 Cleveland, United States of America (opponent), represented by Dennemeyer & Associates, 55, rue des Bruyères, 1274 Howald, Luxembourg (professional representative)

a g a i n s t

Martin Parker, Piłsudskiego 180, 05-091 Ząbki, Poland (applicant).

On 19/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 117 034 is partially upheld, namely for the following contested goods and services:

Class 17: All the contested goods in this class.

Class 35: Retailing and wholesaling and online sale relating to the following goods: polyurethane foam for insulating purposes, sealing machines, filling and assembling, foam glues, roofing sealants, specialist sealants, silicones, universal silicones, silicones for sanitary purposes, glass silicones, silicones for building purposes, high temperature and acrylic silicones, fillers, for tiles, for façades, mineral waterproofing, bitumen waterproofing, polymeric resins, polyurethane-bitumen resin, speciality tapes, roofing tapes, building tapes, building foils, protective foils, roofing membranes, window tapes, putty, hand tools, mechanical tools [hand tools].

2. European Union trade mark application No 18 128 510 is rejected for all the above goods and services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS

On 26/04/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 128 510 ‘MPARKER’ (word mark). The opposition is based on European Union trade mark registrations No 47 290 (figurative mark) and No 15 392 921 (figurative 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 goods and services

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

European Union trade mark registration No 47 290 (earlier mark 1)

Class 17: Plastics in extruded form for use in manufacture; packing, stopping and insulating materials; electromagnetic interference shielding materials of plastics or rubber; O-rings, seals, electrically conductive seals, jointings, gaskets; non-metallic couplings and fittings all for pipe, for tubes and for hose; tubing and hose, all of rubber or of plastic; their parts and fittings comprised in this class.

European Union trade mark registration No 15 392 921 (earlier mark 2)

Class 35: Business management and consultation, inventory control, order receiving and entering and industrial product billing services, technical assistance in the establishment or operation of industrial supply services, product consignment management, providing both permanent and portable retail sales for parts and equipment such as motors, hoses and hose fittings, pumps, valves, actuators, adapters, quick couplers, seals and filtration products, and commerce.

Class 37: Installation, maintenance and repair services, namely providing equipment and personnel equipped to fabricate or install, clean, test, replace, maintain or repair equipment for industrial facilities and mobile vehicles; repair facilities for parts and equipment such as motors, hoses and hose fittings, pumps, valves, actuators, adapters, quick couplers, seals and filtration products.

The contested goods and services are the following:

Class 1: Silicon; silicone resins; adhesives for use in industry; adhesives for the building industry; adhesives for ceiling coverings; adhesives for applying wall coverings; adhesives for floor coverings; adhesives [sizing]; adhesives for the building industry; industrial adhesives for use in building; structural adhesives for building use; adhesives and cements.

Class 17: Artificial resin compounds; sealing cements, for building; caulking materials of silicone; silicone rubber; silicone sealants; silicone rubber compositions; silicone rubber sealants; silicon rubber joint sealing compounds; general purpose silicone rubber sealant; packing and stopping material; plastics in extruded form for use in manufacture and being an insulating material; packing, stopping and insulating materials; jointing and connecting materials for use in building; semi-processed plastic substances; polyamide foams; polyurethane foam [semi-finished]; gasket material; sealing and insulating materials of plastic; weatherstrippings (non-metallic -); sealing materials [tapes]; adhesive films of plastic foam for protection against cold, heat, draughts, dust, moisture and noise; insulating compounds; insulating adhesives; insulating foils.

Class 35: Retailing and wholesaling and online sale relating to the following goods: hoists [apparatus], lifting platforms, elevators (lifts) for materials, forklifts and structural parts therefor, elevating platforms, mobile platforms [electric], access platforms [mechanical], elevating or lifting work platforms [including mobile], working platforms [scaffolding] of metal, maintenance platforms for aircraft, military vehicles, industrial machines, boats, tractors and other vehicles, maintenance platforms for rail vehicles and buses, transport platforms for tankers, specialised mobile platforms for the construction of underground tunnels and other industrial applications, fixed platforms for industrial purposes, service passageways for mechanisms and machines between production lines, modular stool systems for professional use, non-slip mats, non-slip underlays, stair treads (steps), not of metal, platform steps, not of metal, for use in scaffolding, grills, not of metal, for safety purposes, metal gates, safety railings and handrails, access ladders, safety harnesses, safety restraints, positioning ropes, security tapes, self-locking devices, self-braking devices, ladders, fire escape ladders [safety equipment], mobile platforms [structures], glass façades, work platforms of metal [scaffolding towers], mobile towers, polyurethane foam for insulating purposes, sealing machines, filling and assembling, accessories for polyurethane foams, foam glues, roofing sealants, specialist sealants, silicones, universal silicones, silicones for sanitary purposes, glass silicones, silicones for building purposes, high temperature and acrylic silicones, accessories for silicones, acrylics, universal acrylics, fillers, for tiles, for façades and painting acrylics, acrylic accessories, mineral waterproofing, bitumen waterproofing, polymeric resins, polyurethane-bitumen resin, bonding mortar, bonding and joint mortars, assembly adhesives, wood adhesive, parquet flooring and carpet adhesives, universal adhesives, polystyrene glue, adhesives for tiles, glue accessories, speciality tapes, roofing tapes, building tapes, building foils, protective foils, roofing membranes, window tapes, ties, not of metal, non-metallic ties for use in building, non-metallic ties for use in brickwork, mortar, spray plaster, thin-coat plasters, interior paints, façade paints, putty, fibreglass nets, flush-mounted nets, façade profiles, preparations for the protection and maintenance of walls, universal primer for plaster, silicate paint primer, primer for non-absorbent substrates, binding primer, emulsion primer, flooring compounds, levelling compounds, grout, wood preservatives, parquet and panel putty, wood putty, hand tools, mechanical tools [hand tools], protective and cleaning agents.

Class 37: Assembly of building boards of plastic, ceiling, floor and wall boards, not of metal, wall, ceiling and floor panels, not of metal, slats, not of metal and fencing of plastic.

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

The term ‘such as’, used in the opponent’s list of goods and services, indicates that the specific services 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).

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

As a preliminary remark, 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.

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 1

The contested silicon; silicone resins; adhesives for use in industry; adhesives for the building industry; adhesives for ceiling coverings; adhesives for applying wall coverings; adhesives for floor coverings; adhesives [sizing]; adhesives for the building industry; industrial adhesives for use in building; structural adhesives for building use; adhesives and cements are dissimilar to all the opponent’s goods and services because they have nothing in common.

According to the explanatory notes of the Nice Classification, the goods in Class 1 include chemical products for use in industry, science and agriculture, including those which go into the making of products belonging to other classes. The contested goods in this case are unprocessed goods, used mainly for industrial purposes. This interpretation is in line with the wording of some of the contested goods, for example silicon; silicon resins or adhesives. Unprocessed goods are raw materials used as the basis for the manufacturing of finished goods. In contrast, the opponent’s goods in Class 17 are not unprocessed goods and are not primarily used in industry, science or agriculture. Most of them are used in construction and can be purchased by the general public in DIY stores. For example insulating materials available in DIY stores are insulation foils, insulating tape or foam, insulating lining paper, and plastics in extruded form for use in manufacture are weatherstripping, plastic films, and pipes. All these goods are finished products used in the fields of heating and plumbing, bathrooms and kitchens or buildings in general. Consequently, the conflicting goods have different natures and purposes. The opponent’s goods in Class 17 are finished products which serve various specific purposes. The contested goods in Class 1 are unprocessed goods, which serve as raw materials for the manufacture of an unlimited variety of different products in all commercial and industrial fields. Moreover, the goods have different distribution channels and are offered for sale in different sales outlets. The opponent’s goods in Class 17 are typically purchased in specialised hardware stores or large DIY stores. In contrast, the contested goods are raw materials, usually distributed by specialised industrial providers and sold in bulk. Furthermore, because of their different natures and purposes, the goods are neither in competition nor complementary. Finally, the conflicting goods target different groups. Goods in Class 17 are purchased by construction companies or craftspeople such as electricians, plumbers or builders, or DIY enthusiasts who purchase the goods in DIY stores. In contrast, the contested goods are raw materials, primarily purchased by companies in manifold industries and used as the basis for fabricating all kinds of finished products. The only link between the goods is that some of the opponent’s goods, namely plastics in extruded form for use in manufacture, may be made using the contested silicon resins. However, this connection alone cannot justify any similarity between the goods, bearing in mind that plastics are the basis of millions of different products in all imaginable industries from simple household products to sophisticated devices used in the aviation industry.

The contested goods in Class 1 are also dissimilar to the opponent’s services in Classes 35 and 37. The opponent’s services in Class 35 belong to the broad categories of business assistance, management and administrative services and retail services and commerce, and the services in Class 37 are installation, maintenance and repair. By their nature, goods are generally dissimilar to services, although they can be complementary. Services can also have the same purpose and thus be in competition with goods. It follows that under certain circumstances similarity between goods and services can be found. However, the contested goods in Class 1 do not coincide in any of the similarity criteria when compared to the opponent’s business management and consultation, inventory control, order receiving and entering and industrial product billing services, technical assistance in the establishment or operation of industrial supply services, product consignment management.

Furthermore, providing both permanent and portable retail sales for parts and equipment such as motors, hoses and hose fittings, pumps, valves, actuators, adapters, quick couplers, seals and filtration products, and commerce and the contested silicon; silicone resins; adhesives for use in industry; adhesives for the building industry; adhesives for ceiling coverings; adhesives for applying wall coverings; adhesives for floor coverings; adhesives [sizing]; adhesives for the building industry; industrial adhesives for use in building; structural adhesives for building use; adhesives and cements are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different purposes. Retail services consist in bringing together, and offering for sale, a wide variety of different goods, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, these goods and services have different methods of use and are neither in competition nor complementary. Similarity between retail services of specific goods covered by one mark and other goods covered by another mark can only be found where the goods involved in the retail services and the other goods covered by the other mark are offered in the same outlets, belong to the same market sector and are of interest to the same consumers. These conditions are not fulfilled here, since the goods sold at retail are dissimilar to the contested goods.

For the opponent’s services in Class 37, installation, repair and maintenance services are vague terms. They do not provide a clear indication of the services being provided, as it simply states that these are repair/installation/maintenance services and does not identify what is to be repaired or installed or maintained. As the goods to be repaired/installed/maintained may have different characteristics, the respective services will be carried out by service providers with different levels of technical capabilities and knowledge, and may relate to different market sectors. However, as these vague terms are followed by clarifications, ‘namely’ and ‘such as’, the Opposition Division will be able to compare the specific installation, maintenance and repair services, namely providing equipment and personnel equipped to fabricate or install, clean, test, replace, maintain or repair equipment for industrial facilities and mobile vehicles; repair facilities for parts and equipment such as motors, hoses and hose fittings, pumps, valves, actuators, adapters, quick couplers, seals and filtration products with the contested goods in Class 1. It is obvious that the opponent’s services refer to different goods and market sectors, such as industrial facilities, vehicles, motors, hoses and hose fittings, pumps, valves, actuators, adapters, quick couplers, seals and filtration products. Therefore, as they are neither complementary nor in competition and cannot be provided by the same entities, no similarity can be found between the contested goods and the opponent’s services.

Contested goods in Class 17

The contested semi-processed plastic substances include, as a broader category, the opponent’s plastics in extruded form for use in manufacture. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested jointing and connecting materials for use in building are included in the broad category of, or overlap with, the opponent’s jointings. Therefore, they are identical.

The contested sealing cements, for building can be used for waterproofing, for example, when building dams. As such, they overlap with the opponent’s insulating materials. Therefore, they are identical.

Packing, stopping and insulating materials; packing and stopping material are identically contained in both lists of goods (including synonyms).

The contested insulating adhesives; insulating foils; polyamide foams are included in the opponent’s broad category of insulating materials. Therefore, they are identical.

The contested gasket material includes, as a broader category, the opponent’s gaskets. Since the Office cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The contested sealing materials of plastic include, as a broader category, the opponent’s seals. 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 artificial resin compounds include epoxy for example, which can be used as insulation material. As such they overlap with the opponent’s insulating materials. Therefore, they are identical.

The contested insulating compounds; plastics in extruded form for use in manufacture and being an insulating material; insulating materials of plastic; adhesive films of plastic foam for protection against cold, heat, draughts, dust, moisture and noise; weatherstrippings (non-metallic -); sealing materials [tapes]; silicone sealants; silicone rubber sealants; silicon rubber joint sealing compounds; general purpose silicone rubber sealant; caulking materials of silicone overlap with the opponent’s insulating materials. Therefore, they are identical.

The contested polyurethane foam [semi-finished] can be used as insulating material or when packing certain goods. As such, it overlaps with the opponent’s packing, stopping and insulating materials. Therefore, they are identical.

The opponent’s insulating materials include goods such as rubber sheets for insulating. Consequently, the contested silicone rubber; silicone rubber compositions overlap with the opponent’s insulating materials. Therefore, they are identical.

Contested services in Class 35

The opponent’s providing both permanent and portable retail sales for parts and equipment such as motors, hoses and hose fittings, pumps, valves, actuators, adapters, quick couplers, seals and filtration products contains a vague term, namely parts and equipment. Parts and equipment can have different characteristics or different purposes, may require very different levels of technical capabilities and knowledge to be produced and/or used, could target different consumers, and be sold through different sales channels and therefore relate to different market sectors. Therefore, the comparison will proceed with the specification following the term ‘such as’, that is permanent and portable retail sales for parts and equipment such as motors, hoses and hose fittings, pumps, valves, actuators, adapters, quick couplers, seals and filtration products. Furthermore, commerce is another vague term which, however, is not followed by any specification that allows the Opposition Division to compare it with the contested goods and services.

Retail and wholesale 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.

Polyurethane foam for insulating purposes, foam glues, roofing sealants, specialist sealants, silicones, universal silicones, silicones for sanitary purposes, glass silicones, silicones for building purposes, high temperature and acrylic silicones, fillers, for tiles, for façades, mineral waterproofing, bitumen waterproofing, polymeric resins, polyurethane-bitumen resin are included in or overlap with the opponent’s insulation materials in Class 17. Furthermore, speciality tapes, roofing tapes, building tapes, building foils, protective foils, roofing membranes, window tapes, putty, can also be used as insulation materials as their purpose is, besides fixing and protection, insulation from water, heat or cold or packing.

Therefore, the contested retailing and wholesaling and online sale relating to the following goods: polyurethane foam for insulating purposes, sealing machines, filling and assembling, foam glues, roofing sealants, specialist sealants, silicones, universal silicones, silicones for sanitary purposes, glass silicones, silicones for building purposes, high temperature and acrylic silicones, fillers, for tiles, for façades, mineral waterproofing, bitumen waterproofing, polymeric resins, polyurethane-bitumen resin, speciality tapes, roofing tapes, building tapes, building foils, protective foils, roofing membranes, window tapes, putty are similar to the opponent’s packing and insulating materials.

Pumps belong to the broad categories of hand tools and mechanical tools. Therefore, the contested retailing and wholesaling and online sale relating to the following goods: hand tools, mechanical tools [hand tools] are at least similar to the opponent’s providing both permanent and portable retail sales for parts and equipment such as pumps. They coincide at least in their nature, purpose and provider.

Retail services of specific goods and retail services of other goods have the same nature as both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

Similarity is found between those retail services where the specific goods concerned are commonly retailed together in the same outlets and they target the same public. However, the degree of similarity between retail of specific goods on the one hand and retail of other goods on the other hand may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors.

The remaining opponent’s goods subject to retail sales are motors, hoses and hose fittings, pumps, valves, actuators, adapters, quick couplers, seals and filtration products. The way in which they are listed, and in the absence of clarification from the opponent, suggests they are used in the field of water-supply systems, sewerage and garden-watering. The contested goods subject to retailing and wholesaling are various building and construction materials and equipment used in building and construction such as hoists, various platforms used in scaffolding, ladders, mortar, primer, plaster, paint, nets, wood preservatives, wood putty, etc. Although all these goods can be used in the construction process of a building, and some of them can target the same public, they are usually found in different sections of construction hyperstores and even in different stores (e.g. hoists and elevators) and some of them can be custom-made (e.g. maintenance platforms for aircraft, military vehicles). Therefore, the contested retailing and wholesaling and online sale relating to the following goods: hoists [apparatus], lifting platforms, elevators (lifts) for materials, forklifts and structural parts therefor, elevating platforms, mobile platforms [electric], access platforms [mechanical], elevating or lifting work platforms [including mobile], working platforms [scaffolding] of metal, maintenance platforms for aircraft, military vehicles, industrial machines, boats, tractors and other vehicles, maintenance platforms for rail vehicles and buses, transport platforms for tankers, specialised mobile platforms for the construction of underground tunnels and other industrial applications, fixed platforms for industrial purposes, service passageways for mechanisms and machines between production lines, modular stool systems for professional use, non-slip mats, non-slip underlays, stair treads (steps), not of metal, platform steps, not of metal, for use in scaffolding, grills, not of metal, for safety purposes, metal gates, safety railings and handrails, access ladders, safety harnesses, safety restraints, positioning ropes, security tapes, self-locking devices, self-braking devices, ladders, fire escape ladders [safety equipment], mobile platforms [structures], glass façades, work platforms of metal [scaffolding towers], mobile towers, accessories for polyurethane foams, accessories for silicones, acrylics, universal acrylics, fillers for painting acrylics, acrylic accessories, bonding mortar, bonding and joint mortars, assembly adhesives, wood adhesive, parquet flooring and carpet adhesives, universal adhesives, polystyrene glue, adhesives for tiles, glue accessories, ties, not of metal, non-metallic ties for use in building, non-metallic ties for use in brickwork, mortar, spray plaster, thin-coat plasters, interior paints, façade paints, fibreglass nets, flush-mounted nets, façade profiles, preparations for the protection and maintenance of walls, universal primer for plaster, silicate paint primer, primer for non-absorbent substrates, binding primer, emulsion primer, flooring compounds, levelling compounds, grout, wood preservatives, parquet and panel putty, wood putty, protective and cleaning agents are dissimilar to the opponent’s providing both permanent and portable retail sales for parts and equipment such as motors, hoses and hose fittings, pumps, valves, actuators, adapters, quick couplers, seals and filtration products, and commerce.

These retail and wholesale services are also dissimilar to the opponent’s goods in Class 17 of earlier mark 1 as the goods subject to retail/wholesale are neither identical nor similar to the opponent’s goods. Furthermore, no similarity can be found between these retail and wholesale services and the remaining services in Class 35: business assistance, management and administrative services do not include retail/wholesale activities as such. They target different publics, do not share the same providers and are not complementary. Finally, these retail and wholesale services are dissimilar to the opponent’s services in Class 37: even if the relevant publics may coincide, they have obviously different natures and purposes and are not provided by the same entities. They require different expertise and are offered via different distribution channels. Finally, they are neither complementary nor in competition.

Therefore, the contested retailing and wholesaling and online sale relating to the following goods: hoists [apparatus], lifting platforms, elevators (lifts) for materials, forklifts and structural parts therefor, elevating platforms, mobile platforms [electric], access platforms [mechanical], elevating or lifting work platforms [including mobile], working platforms [scaffolding] of metal, maintenance platforms for aircraft, military vehicles, industrial machines, boats, tractors and other vehicles, maintenance platforms for rail vehicles and buses, transport platforms for tankers, specialised mobile platforms for the construction of underground tunnels and other industrial applications, fixed platforms for industrial purposes, service passageways for mechanisms and machines between production lines, modular stool systems for professional use, non-slip mats, non-slip underlays, stair treads (steps), not of metal, platform steps, not of metal, for use in scaffolding, grills, not of metal, for safety purposes, metal gates, safety railings and handrails, access ladders, safety harnesses, safety restraints, positioning ropes, security tapes, self-locking devices, self-braking devices, ladders, fire escape ladders [safety equipment], mobile platforms [structures], glass façades, work platforms of metal [scaffolding towers], mobile towers, accessories for polyurethane foams, accessories for silicones, acrylics, universal acrylics, fillers for painting acrylics, acrylic accessories, bonding mortar, bonding and joint mortars, assembly adhesives, wood adhesive, parquet flooring and carpet adhesives, universal adhesives, polystyrene glue, adhesives for tiles, glue accessories, ties, not of metal, non-metallic ties for use in building, non-metallic ties for use in brickwork, mortar, spray plaster, thin-coat plasters, interior paints, façade paints, fibreglass nets, flush-mounted nets, façade profiles, preparations for the protection and maintenance of walls, universal primer for plaster, silicate paint primer, primer for non-absorbent substrates, binding primer, emulsion primer, flooring compounds, levelling compounds, grout, wood preservatives, parquet and panel putty, wood putty, protective and cleaning agents are dissimilar to the opponent’s goods and services in Classes 17, 35 and 37.

Contested services in Class 37

The contested services are dissimilar to the opponent’s goods and services. They refer to the assembly of various boards, panels, slats and fencing used in construction.

The goods for assembly are dissimilar to the opponent’s goods in Class 17 (earlier mark 1). The assembly of these goods is neither complementary nor in competition to the opponent’s goods and it is unlikely to be provided by the same entities as the goods in Class 17 even if these goods are also used in construction.

Furthermore, the contested services are dissimilar to the opponent’s services in Class 35 (earlier mark 2), which, as stated above, are business assistance, management and administrative services and retail services and commerce. They have different natures, purposes, relevant public and origins as they require different skills and knowledge. Furthermore, they are offered using different distribution channels and are neither in competition nor complementary.

The contested services are also dissimilar to the opponent’s services in Class 37. They refer to different goods and require different skills, knowledge and technologies as well as different market sectors.

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, such as DIY enthusiasts, and at business customers with specific professional knowledge or expertise, such as plumbers and construction companies.

The public’s degree of attentiveness may vary from average to high, depending on the price, sophistication, or terms and conditions of the goods and services purchased.

c) The signs

	MPARKER
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).

Part of the public may perceive the verbal element ‘PARKER’ of the earlier marks as an English first name or surname, the Danish and Swedish part of the public will perceive it as a ‘natural park’, and the rest of the public will perceive it as meaningless. In any event, the earlier marks have no meaning in relation to the relevant goods and services and, therefore, they are distinctive.

The verbal element ‘MPARKER’ of the contested sign has no meaning for the relevant public and is, therefore, distinctive.

The earlier marks have no element that could be considered clearly more dominant than other elements.

The figurative elements and aspects of the earlier marks are limited to a standard stylisation in white letters on a black rectangle with a thick, horizontal white line intersecting the letter ‘P’ and continuing into the letter ‘A’. 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).

Although consumers generally tend to focus on the beginning of a sign when they encounter a trade mark, this consideration cannot prevail in all cases and cannot, in any event, undermine the principle that an examination of the similarity of the signs must take account of the overall impression produced by those signs, since the average consumer normally perceives a sign as a whole and does not examine its individual details (27/06/2012, T‑344/09, Cosmobelleza, EU:T:2012:324, § 52).

Visually and aurally, the signs coincide in the letters (and sounds) ‘PARKER’. They differ in the figurative elements and aspects of the earlier marks and the letter ‘M’ at the beginning of the contested sign. The additional letter ‘M’ will most likely be pronounced as an additional syllable, for example [em] or [mə].

Therefore, the signs are visually highly similar and aurally similar to at least an average degree.

Conceptually, neither of the signs has a meaning for part of the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. For another part of the public who will perceive the meaning(s) of the earlier marks as explained above, the other sign has no meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.

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 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.

e) Global assessment, other arguments and conclusion

In determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘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). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

The goods and services are partly identical, partly similar and partly dissimilar. They target the public at large and customers with specific professional knowledge or expertise whose degree of attentiveness may vary from average to high.

The earlier mark is inherently distinctive to a normal degree.

The signs are visually highly similar, aurally similar at least to an average degree and conceptually not similar or the conceptual comparison does not have an impact. In particular, the marks coincide in the distinctive verbal element ‘PARKER’, which is the only verbal element of the earlier marks and is reproduced in its entirety in the contested sign.

The differences between the signs lie in the stylisation of the earlier mark, which is of low impact, and the differing letter ‘M’ in the contested sign. These differences do not significantly affect the visual and aural similarities, cannot outweigh the similarities between the signs, and are not sufficient to exclude a likelihood of confusion.

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). Therefore, it could not be ruled out that even consumers with a high degree of attentiveness may overlook the differing initial letter and confuse the signs.

Furthermore, some of the goods themselves are commonly purchased in establishments where goods are arranged on shelves and consumers are guided by the visual impact of the mark they are looking for, which gives the visual similarity between the signs more impact.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registrations.

It follows from the above that the contested sign must be rejected for the goods and services found to be identical or similar to those of the earlier trade mark.

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.

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

María Clara IBÁÑEZ FIORILLO

Tzvetelina IANTCHEVA

Loreto URRACA LUQUE

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.