OPPOSITION No B 3 112 911

Baur Versand (GmbH & Co KG), Bahnhofstr. 10, 96224 Burgkunstadt, Germany (opponent), represented by Nicola Franzky, Werner-Otto-Straße 1‑7, 22179 Hamburg, Germany (employee representative)

a g a i n s t

Alex Ferraris, Via Della Crosia 23, 15046 San Salvatore Monferrato, Italy (applicant), represented by Nadia Martini, Largo Donegani 2, 20121 Milano, Italy (professional representative).

On 09/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 112 911 is partially upheld, namely for the following contested goods and services:

Class 3: All the goods in this class.

Class 14: All the goods in this class except fittings for watches; barrels [clock- and watchmaking]; pendulums [clock- and watchmaking]; movements for clocks and watches; parts for clocks; parts and fittings for horological instruments; parts for clocks; clock dials.

Class 35: Wholesaling and retailing, including online, of non-medicated cosmetics and toiletry preparations, perfumery, essential oils, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; retailing and wholesaling, including online, of precious metals and their alloys, jewellery, costume jewellery, precious and semi-precious stones, horological and chronometric instruments.

2. European Union trade mark application No 18 147 804 is rejected for all the above goods and services. It may proceed for the remaining contested goods and services, namely:

Class 14: Fittings for watches; barrels [clock- and watchmaking]; pendulums [clock- and watchmaking]; movements for clocks and watches; parts for clocks; parts and fittings for horological instruments; parts for clocks; clock dials.

Class 35: Demonstration of goods; arranging of demonstrations for advertising purposes; presentation of goods and services; display services for merchandise; conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; arranging of demonstrations for advertising purposes; advertising services relating to the sale of goods; presentation of goods on communication media, for retail purposes; negotiation of contracts relating to the purchase and sale of goods; advertising; business management; business administration; office functions.

3. Each party bears its own costs.

REASONS

On 02/03/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 147 804 for the figurative mark , namely against all the goods and services in Classes 3, 14 and 35. The opposition is based on European Union trade mark registration No 18 147 594 for the 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 services on which the opposition is based are the following:

Class 35: Wholesaling and retailing relating to fertilising preparations, of paints, varnishes, lacquers, printer’s ink, photocopier toner, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils,, cosmetics, hair lotions, dentifrices, industrial oils and greases, lubricants, dust absorbing, wetting and binding compositions, fuels (including motor spirit) and illuminants, candles and wicks for lighting, pharmaceutical, veterinary and sanitary preparations, dietetic substances adapted for medical use, food for babies, plasters, materials for dressing, disinfectants, common metals and their alloys, building materials of metal, transportable constructions of metal, materials of metal for railway tracks, non-electric cables and wires of common metal, ironmongery and small items of metal hardware, metallic pipes, safes, machines and machine tools for the treatment of materials and manufacturing, motors and engines (except for land vehicles), agricultural implements other than hand-operated, hand tools and implements (hand-operated), cutlery, forks and spoons, side arms, shaving equipment, scientific, navigation, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking [supervision], life-saving and teaching apparatus and instruments, recording apparatus, reproduction and transmission of sound and images, magnetic data carriers, recording discs, cash registers, calculating machines, data processing equipment and computers, fire extinguishers, orthopedic articles, blood pressure measuring apparatus, massage gloves, apparatus for massage, condoms, baby bottles, teats (dummies), apparatus for lighting, heating, steam generating, refrigerating, drying, ventilating, water supply and sanitary purposes, fahrzeuge, apparatus for locomotion by land, air or water, fireworks, precious metals and their alloys, jewellery, articles of jewellery with precious stones, horological and chronometric instruments, musical instruments, paper, cardboard (paperboard), printed matter, catalogs, bookbinding materials, photographs, stationery, adhesives for stationery or household purposes, artists’ materials, paint brushes, typewriters and office requisites (other than furniture), instructional and teaching material (except apparatus), plastic materials for packaging, rubber, gutta-percha or rubber, asbestos, mica, plastic substances, semi-processed, packing, stopping and insulating materials, flexible pipes, not of metal, leather and imitations of leather, trunks and travelling bags umbrellas, parasols and walking sticks, construction materials (not of metal), non-metallic rigid pipes for building and construction purposes, transportable constructions, not of metal, jalousies, not of metal, porches, not of metal, for building, flooring (parquet -), mirrored furniture, picture frames, statues, figurines and works of art, and ornaments and decorations of wood, flour wax, plaster or plastic, household or kitchen utensils and containers (not of precious metal or coated therewith), combs and spongers, brushes (other than paint brushes), brush-making materials and articles for cleaning purposes, steel wool, unworked or semi-worked glass (except glass used in building), glassware, porcelain and earthenware, ropes, string, nets, tents and tarpaulins, sails, sacks, padding and stuffing materials (except of rubber or plastics), raw fibrous textile, hammocks, awnings of plastic and textile, yarns and threads, for textile use, textiles and textile goods, bed and table cloths, clothing, footwear, headgear, lace and embroidery, ribbon and braid, buttons, hooks and eyes, needles, artificial flowers, rugs, carpets, mats, linoleum and other materials for covering existing floors, wall coverings (non-textile), games and playthings, gymnastic and sporting articles, decorations for Christmas trees, meat, fish, poultry and game, meat extracts, frozen, preserved, dried and cooked fruits and vegetables, jellies, jams, compotes, eggs, milk, and milk products, edible oils and fats, coffee, tea, cocoa, rice, sugar, tapioca, sago, coffee substitutes, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking powders, salt, mustard, vinegar, sauces (condiments), spices, ice, agricultural, horticultural and forestry products and grains, fresh fruits and vegetables, seeds, natural plants and flowers, foodstuffs for animals, malt, beers, mineral and aerated waters and other non-alcoholic drinks, fruit drinks and fruit juices, syrups or other preparations for making beverages, alcoholic beverages (except beer), tobacco, smoker’s articles and matches.

The contested goods and services are the following:

Class 3: Perfume water; toilet water; aromatics for perfumes; toilet water; perfumed creams; fragrances; natural oils for perfumes; pomanders [aromatic substances]; perfumery; perfumery, essential oils; perfume; cosmetic creams and lotions; washing creams; beauty care cosmetics; body and facial creams [cosmetics]; make-up preparations; make-up; soap products; bar soap; soaps; bath oil; essential oils; scented oils; aromatic extracts; non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; bleaching preparations and other substances for laundry use; scouring substances; polishing preparations; grinding preparations; cleaning preparations.

Class 14: Gold; gold, unwrought or beaten; gold alloys; silver; silver and its alloys; unwrought silver; jewels; semi-finished articles of precious metals for use in the manufacture of jewellery; semi-finished articles of precious stones for use in the manufacture of jewellery; diamond [unwrought]; diamonds; gold thread [jewellery]; threads of precious metal [jewellery]; threads of precious metal [jewellery]; silver thread [jewellery]; threads of precious metals; precious and semi-precious gems; jades; jewels; jewels; imitation precious stones; gold alloys; alloys of precious metal; platinum alloys; gold, unwrought or beaten; pearl; natural pearls; imitation pearls; artificial stones [precious or semi-precious]; precious and semi-precious stones; platinum and its alloys; platinum [metal]; rhodium and its alloys; ruby; ruthenium and its alloys; imitation gold; emeralds; topaz; sapphires; cubic zirconia; jewelry findings; amulets [jewellery, jewelry (Am.)]; rings [jewellery, jewelry (Am.)]; rings [jewellery, jewelry (Am.)]; decorative articles [trinkets or jewellery] for personal use; paste jewellery [costume jewelry (Am.)]; personal jewellery; jewellery made of precious stones; articles of jewellery made of precious metal alloys; jewellery made of precious metals; jewellery made of semi-precious materials; bracelets; paste jewellery [costume jewelry (Am.)]; semi-precious articles of bijouterie; personal jewellery; bracelets [jewellery, jewelry (Am.)]; bracelets; bracelets and watches combined; gold bracelets; silver bracelets; bracelets of precious metal; plastic bracelets in the nature of jewelry; gold plated bracelets; silver-plated bracelets; bracelets; gemstones; cabochons for making jewellery; chains [jewelry]; jewel chains; chains of precious metals; rope chain [jewellery] made of common metal; jewelry guard chains; chains [jewelry]; jewellery rope chain for bracelets; jewellery rope chain for anklets; jewelry findings; pendants; bracelet charms; necklace charms; necklaces [jewellery]; threads of precious metal [jewellery]; jewelry findings; gems; jewellery, including imitation jewellery and plastic jewellery; medals; lockets [jewellery]; medallions made of non-precious metals; medallions made of precious metals; earrings; parts and fittings for jewellery; jewel pendants; gemstones; pins being jewelry; fittings for watches; clock cases; chronometric apparatus and instruments; horological articles; barrels [clock- and watchmaking]; pendulums [clock- and watchmaking]; metal expanding watch bracelets; bracelets for watches; watchstraps; watch chains; watch chains; watch clasps; bracelets for watches; chronographs [watches]; chronoscopes; movements for clocks and watches; clocks; clocks and parts therefor; parts and fittings for horological instruments; parts for clocks; clock dials; alarm clocks; identification bracelets [jewelry]; trinkets coated with precious metal; objet d’art made of precious stones; works of art of precious metal; presentation boxes for jewelry; watch pouches; jewel cases; cases for watches and clocks; jewelry boxes; key rings; key chains as jewellery [trinkets or fobs]; jewels; precious metals and their alloys; semi-precious stones; precious stones; horological and chronometric instruments.

Class 35: Demonstration of goods; arranging of demonstrations for advertising purposes; presentation of goods and services; display services for merchandise; conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes; arranging of demonstrations for advertising purposes; wholesaling and retailing, including online, of non-medicated cosmetics and toiletry preparations, perfumery, essential oils, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; retailing and wholesaling, including online, of precious metals and their alloys, jewellery, costume jewellery, precious and semi-precious stones, horological and chronometric instruments; advertising services relating to the sale of goods; presentation of goods on communication media, for retail purposes; negotiation of contracts relating to the purchase and sale of goods; advertising; business management; business administration; office functions.

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 ‘including’, used in the applicant’s and the opponent’s lists of goods and services indicates 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, it introduces a non-exhaustive list of examples (09/04/2003, T‑224/01, Nu-Tride, EU:T:2003:107).

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.

As regards the applicant’s arguments about the actual use in the market of the trade marks under comparison for different goods and services, it should be noted that the examination of the likelihood of confusion carried out by the Office is a prospective examination. The particular circumstances in which the goods and services covered by the marks are actually marketed have, as a matter of principle, no impact on the assessment of the likelihood of confusion because they may vary in time depending on the wishes of the proprietors of the trade marks (15/03/2007, C‑171/06 P, Quantum, EU:C:2007:171, § 59; 22/03/2012, C‑354/11 P, G, EU:C:2012:167, § 73; 21/06/2012, T‑276/09, Yakut, EU:T:2012:313, § 58). Furthermore, the applicant argues that its goods and services in Classes 3, 14 and 35 are expensive/niche goods and services and, therefore, the relevant public will not confuse the contested sign with the opponent’s more affordable services. However, the Opposition Division finds that the contested goods and services are not limited to expensive/niche services only and that specific marketing strategies are not relevant. The fact that the applicant offers its goods and services for sale at a higher price than competitors is a purely subjective marketing factor that is irrelevant when assessing the likelihood of confusion (14/11/2007, T‑101/06, Castell del Remei Oda, EU:T:2007:340, § 52).

Contested goods in Class 3

Retail 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.

Therefore, the contested perfume water; toilet water (listed twice); aromatics for perfumes; perfumed creams; fragrances; natural oils for perfumes; pomanders [aromatic substances]; perfumery (listed twice); essential oils (listed twice); perfume; cosmetic creams and lotions; washing creams; beauty care cosmetics; body and facial creams [cosmetics]; make-up preparations; make-up; soap products; bar soap; soaps; bath oil; scented oils; aromatic extracts; non-medicated cosmetics and toiletry preparations; non-medicated dentifrices; bleaching preparations and other substances for laundry use; scouring substances; polishing preparations; grinding preparations; cleaning preparations are similar to the opponent’s retailing relating to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, dentifrices in Class 35.

Contested goods in Class 14

As mentioned above, retail 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.

There is a low degree of similarity between the retail services concerning specific goods and other goods which are either highly similar or similar to those specific ones. This is because of the close connection between them on the market from consumers’ perspective. Consumers are used to a variety of highly similar or similar goods being brought together and offered for sale in the same specialised shops or in the same sections of department stores or supermarkets. Furthermore, they are of interest to the same consumers.

Taking into account the abovementioned principles, the contested jewels (listed four times); gold; gold, unwrought or beaten (listed twice); gold alloys (listed twice); silver; silver and its alloys; unwrought silver; alloys of precious metal; platinum alloys; platinum and its alloys; platinum [metal]; rhodium and its alloys; ruthenium and its alloys; iamulets [jewellery, jewelry (Am.)]; rings [jewellery, jewelry (Am.)] (listed twice); decorative articles [trinkets or jewellery] for personal use; paste jewellery [costume jewelry (Am.)] (listed twice); personal jewellery (listed twice); jewellery made of precious stones; articles of jewellery made of precious metal alloys; jewellery made of precious metals; jewellery made of semi-precious materials; bracelets (listed three times); semi-precious articles of bijouterie; bracelets [jewellery, jewelry (Am.)]; bracelets and watches combined; gold bracelets; silver bracelets; bracelets of precious metal; plastic bracelets in the nature of jewelry; gold plated bracelets; silver-plated bracelets; chains [jewelry] (listed twice); jewel chains; chains of precious metals; rope chain [jewellery] made of common metal; pendants; bracelet charms; necklace charms; necklaces [jewellery]; jewellery, including imitation jewellery and plastic jewellery; medals; lockets [jewellery]; medallions made of non-precious metals; medallions made of precious metals; earrings; jewel pendants; pins being jewelry; chronometric apparatus and instruments; horological articles; chronographs [watches]; chronoscopes; clocks (listed twice); alarm clocks; identification bracelets [jewelry]; trinkets coated with precious metal; key chains as jewellery [trinkets or fobs]; precious metals and their alloys; horological and chronometric instruments; semi-finished articles of precious metals for use in the manufacture of jewellery; semi-finished articles of precious stones for use in the manufacture of jewellery; diamond [unwrought]; diamonds; gold thread [jewellery]; threads of precious metal [jewellery] (listed three times); silver thread [jewellery]; threads of precious metals; precious and semi-precious gems; jades; imitation precious stones; pearl; natural pearls; imitation pearls; artificial stones [precious or semi-precious]; precious and semi-precious stones; ruby; imitation gold; emeralds; topaz; sapphires; cubic zirconia; jewelry findings (listed three times); gemstones (listed twice); cabochons for making jewellery; jewelry guard chains; jewellery rope chain for bracelets; jewellery rope chain for anklets; gems; parts and fittings for jewellery; metal expanding watch bracelets; bracelets for watches (listed twice); watchstraps; watch chains (listed twice); watch clasps; objet d’art made of precious stones; works of art of precious metal; semi-precious stones; precious stones; clock cases; presentation boxes for jewelry; watch pouches; jewel cases; cases for watches and clocks; jewelry boxes are at least similar to a low degree to the opponent’s retailing relating to precious metals and their alloys, jewellery, articles of jewellery with precious stones, horological and chronometric instruments.

A low degree of similarity between the goods sold at retail and the other goods may be sufficient to find a low degree of similarity with the retail services provided that the goods involved are commonly offered for sale in the same specialised shops or in the same sections of department stores or supermarkets, belong to the same market sector and, therefore, are of interest to the same consumers. The opponent’s retailing relating to precious metals and their alloys, jewellery, articles of jewellery with precious stones, horological and chronometric instruments are similar to a low degree to the contested key rings. These goods and services are closely connected from the consumers’ perspective, since they belong to the same market sector of decorative objects. It is customary to market such goods together and they are commonly sold in the same specialty shops or in the same sections of department stores or supermarkets.

The opponent’s retailing relating to precious metals and their alloys, jewellery, articles of jewellery with precious stones, horological and chronometric instruments and the contested fittings for watches; barrels [clock- and watchmaking]; pendulums [clock- and watchmaking]; movements for clocks and watches; parts for clocks; parts and fittings for horological instruments; parts for clocks; clock dials are not similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. 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. In the present case, these conditions are not fulfilled, since the goods sold at retail are dissimilar to the other goods. The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services, in Class 35.

These contested goods also have nothing in common with the remaining opponent’s services in Class 35 (essentially various retail and wholesale services of goods in very diverse sectors, including cosmetics, building materials, machines, massaging devices, stationery, textiles, clothing, foodstuffs). They have different natures, purposes, methods of use, distribution channels, relevant public and usual providers. In addition, they are neither complementary nor in competition.

Contested services in Class 35

The contested wholesaling and retailing, including online, of non-medicated cosmetics and toiletry preparations, perfumery, essential oils, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations; retailing and wholesaling, including online, of precious metals and their alloys, jewellery, costume jewellery, horological and chronometric instruments are either identically contained in both lists of services (including synonyms) or are included in the broad categories of the opponent’s wholesaling and retailing relating to bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations, soaps, perfumery, essential oils, cosmetics, dentifrices; precious metals and their alloys, jewellery, articles of jewellery with precious stones, horological and chronometric instruments. Therefore, they are identical.

Retail services of specific goods and retail services of other goods have the same nature, as both are retail services with the same purpose of allowing consumers to conveniently satisfy different shopping needs. They also have 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 target the same public. However, the degree of similarity between the retail of specific goods and the retail of other goods may vary depending on the proximity of the retailed goods and the particularities of the respective market sectors.

In the present case, the contested retailing, including online, of precious and semi-precious stones and the opponent’s retailing relating to jewellery, articles of jewellery with precious stones are commonly retailed together in the same places and target the same public, as they can be found in specialised jewellery shops. Therefore, they are similar.

The same principles apply to services rendered in connection with other types of services that consist exclusively of activities revolving around the actual sale of goods, such as wholesale services in Class 35. Therefore, the contested wholesaling, including online, of precious and semi-precious stones and the opponent’s wholesaling relating to jewellery, articles of jewellery with precious stones are similar.

The remaining contested services in this class are essentially diverse advertising, business management, business administration, office functions services as well as conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes and negotiation of contracts relating to the purchase and sale of goods.

The contested demonstration of goods; arranging of demonstrations for advertising purposes; presentation of goods and services; display services for merchandise; arranging of demonstrations for advertising purposes; advertising services relating to the sale of goods; presentation of goods on communication media, for retail purposes; advertising are all various advertising services. Advertising services provide others with assistance in the sale of their goods and services by promoting their launch and/or sale or reinforcing the client’s position in the market and enabling them to acquire a competitive advantage through publicity. To fulfil this target, many different means and products might be used. These services are provided by advertising companies, which study their client’s needs, provide all the necessary information and advice for the marketing of their products and services and create a personalised strategy regarding the advertising of their goods and services through newspapers, websites, videos, and the internet.

Business management services are intended to help companies manage their business by setting out the strategy and/or direction of the company. These services involve activities associated with running a company, such as controlling, leading, monitoring, organising and planning. They are usually rendered by companies specialised in this specific field, such as business consultants. They gather information and provide tools and expertise to enable their customers to carry out their business or provide businesses with the necessary support to acquire, develop and expand their market share. Examples of business management are business research, appraisals, cost-price analyses and organisation consultancy, since they are all intended to help with the strategy of a commercial undertaking. These services also include any ‘consultancy’, ‘advisory’ and ‘assistance’ activity that may be useful in the management of a business, such as how to efficiently allocate financial and human resources, improve productivity, increase market share, deal with competitors, reduce tax bills, develop new products, communicate with the public, carry out marketing, research consumer trends, launch new products and create a corporate identity.

Business administration services are intended to help companies perform business operations and, therefore, interpret and implement the policy set by an organisation’s board of directors. These services include organising people and resources efficiently to direct activities toward common goals and objectives. They include activities such as personnel recruitment, payroll preparation, drawing up account statements and tax preparation, since these enable a business to perform its business functions and are usually carried out by an entity that is separate from the business in question. They are rendered by, inter alia, employment agencies, auditors and outsourcing companies.

Office functions are the internal day-to-day operations of an organisation, including the administration and support services in the ‘back office’. They mainly cover activities that assist in the operation of a commercial enterprise. They include activities typical of secretarial services, such as shorthand and typing, compilation of information in computer databases, invoicing, administrative processing of purchase orders and support services, such as the rental of office machines and equipment.

Conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes consist of the arrangement of events, presentations, exhibitions or trade fairs to facilitate or encourage the promotion and sale of the client’s goods and services. These services are normally provided by specialised companies in their specific field.

Negotiation of contracts relating to the purchase and sale of goods are services rendered by specialists to help businesses resolve their business-related problems in the area of purchase/sale. The principle is that a third party connects buyers and sellers, negotiates between them, and earns commission for such services.

The opponent’s services in Class 35 (essentially various retail and wholesale services of goods in very diverse sectors, as listed above) are dissimilar to these contested services in this class as they have different natures, purposes, methods of use, distribution channels, relevant public and usual providers. In addition, they are neither complementary nor in competition. A provider of the opponent’s services would be very unlikely to also provide advertising, business management, business administration, office functions as well as conducting, arranging and organizing trade shows and trade fairs for commercial and advertising purposes and negotiation of contracts relating to the purchase and sale of goods. Even if the opponent’s activities also entail some of the contested services, the promoting, advertising or managing of one’s own services under one’s own brand is not a service in itself because it is only intended to increase the sales of one’s own services.

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 to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise.

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. In particular, as regards precious and semi-precious stones, the Board held that consumers generally put a certain amount of thought into the selection of these goods (09/12/2010, R 900/2010‑1, Leo Marco (fig.) / LEO, § 22). In many cases, the goods will be luxury items or will be intended as gifts. A relatively high degree of attention on the part of the consumer may be assumed.

c) The signs

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). 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 ‘baur’/’BAUR’ is not meaningful in certain territories, for example in those countries where Bulgarian, English, French, Polish, Portuguese and Spanish are understood. This affects the perception of the signs by that public and influences the assessment of likelihood of confusion. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the Bulgarian-, English-, French-, Polish-, Portuguese- and Spanish-speaking parts of the public.

Both signs are figurative marks. The earlier mark comprises the verbal element ‘baur’, depicted in standard grey lower-case letters. It has no meaning and is, therefore, distinctive. On the right side of the verbal element ‘baur’, there is an orange dot, which in view of its position and size is likely to be perceived as a punctuation mark (a full stop). It is, therefore, non-distinctive.

The contested sign comprises the verbal element ‘BAUR’, depicted in standard black upper-case letters. As described above, it has no meaning and, consequently, is distinctive to a normal degree in relation to the relevant goods and services.

The standard fonts of the signs will be perceived as purely decorative, as it is usual in the market sector for a sign’s verbal elements to be slightly stylised. Therefore, the stylisations of the signs are, per se, non-distinctive, as they are both quite commonplace.

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

Visually, the signs coincide in the verbal element ‘baur’/’BAUR’. They only differ in the earlier mark’s additional punctuation mark and their respective stylisations and colours; grey and orange in the earlier mark and black in the contested sign, as described above. However, the verbal elements of the signs will attract the public’s attention to a greater extent, as an indicator of the commercial origin of the relevant goods and services, as explained above.

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

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs is identical, since they share the same verbal element, ‘baur’/’BAUR’, and the earlier mark’s punctuation mark and the stylisation of the signs have no impact in the aural comparison. Therefore, the signs are aurally identical.

Conceptually, neither of the signs has a meaning for the public under examination 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.

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.

The applicant argued that ‘the degree of distinctiveness of the prior mark “BAUR.” is very low’. However, this claim is not accompanied by further reasoning or evidence that could support it and, therefore, is set aside.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case. This appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks, and the degree of similarity between the signs and the goods and services (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 22).

The goods and services are partly identical, partly similar to varying degrees and partly dissimilar. The present global assessment will proceed only for goods and services found to be identical and similar to varying degrees. They target the general and professional public and the level of attention is average to high. The degree of distinctiveness of the earlier mark is normal.

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 signs are visually highly similar, aurally identical and the conceptual aspect does not influence the assessment of the similarity of the signs, since the signs coincide in their only verbal element. The signs differ merely in the punctuation mark of the earlier mark and in their slightly different stylisations of the coinciding verbal element ‘baur’/’BAUR’. These differences are, however, of limited importance in the overall impression created by the signs and will not attract much of the public’s attention, as explained in detail above. Consequently, the differences between the signs are not sufficient to outweigh the visual similarity and aural identity produced by the common verbal element ‘baur’/’BAUR’.

Considering all the above, in view of the significant similarities between the signs, on account of their coinciding verbal element, even the most highly attentive relevant consumers are likely to believe that the identical or similar goods and services offered under the respective signs originate from the same or economically linked undertakings.

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 high visual similarity and the aural identity compensates for, and outweighs, the fact that some of the goods and services are similar to a low degree.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the Bulgarian-, English-, French-, Polish-, Portuguese- and Spanish-speaking parts of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 18 147 594. 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.

It follows from the above that the contested trade mark must be rejected for the goods and services found to be identical or similar to varying degrees 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

Gueorgui IVANOV

Anna PĘKAŁA

Lars HELBERT

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.