OPPOSITION No B 3 114 949

Sampol Ingenieria y Obras, S.A., Gremio Botoneros, 48, 07009 Palma de Mallorca, Spain (opponent), represented by A.A. Manzano Patentes & Marcas, S.L., Paseo del Pintor Rosales, 44 Bajo, 28008 Madrid, Spain (professional representative)

a g a i n s t

Santana & Pogeira, Rua Francisco Augusto Alvim, 27, 4700-048 Braga, Portugal (applicant), represented by Joana Jorge Cerqueira, Largo Das Teixugueiras, 316, 4815-474 Vizela, Portugal (professional representative).

On 16/04/2021, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 114 949 is partially upheld, namely for the following contested goods and services:

Class 11: Hot air apparatus; air conditioning apparatus; heating apparatus, electric; radiators, electric; water filtering apparatus; bath fittings; heating installations.

Class 35: Advertising; marketing services; retail services in relation to ceiling lights; wholesale services in relation to ceiling lights; retail services in relation to light diffusers; wholesale services in relation to light diffusers; retail services in relation to magnesium filaments for lighting; wholesale services in relation to magnesium filaments for lighting; retail services in relation to street lamps; wholesale services in relation to street lamps; retail services in relation to lamps; wholesale services in relation to lamps; retail services in relation to burners for lamps; wholesale services in relation to burners for lamps; retail services in relation to laboratory lamps; wholesale services in relation to laboratory lamps; retail services in relation to heating filaments, electric; wholesale services in relation to heating filaments, electric; retail services in relation to lamp chimneys; wholesale services in relation to lamp chimneys; retail services in relation to light bulbs; wholesale services in relation to light bulbs; retail services in relation to light bulbs, electric; wholesale services in relation to light bulbs, electric; retail services in relation to aquarium lights; wholesale services in relation to aquarium lights; retail services in relation to electric lamps; wholesale services in relation to electric lamps; retail services in relation to lanterns; wholesale services in relation to lanterns; retail services in relation to lanterns for lighting; wholesale services in relation to lanterns for lighting; retail services in relation to lights for vehicles; wholesale services in relation to lights for vehicles; retail services in relation to luminous tubes for lighting; wholesale services in relation to luminous tubes for lighting; retail services in relation to filaments for electric lamps; wholesale services in relation to filaments for electric lamps; retail services in relation to luminous house numbers; wholesale services in relation to luminous house numbers; retail services in relation to lighting apparatus for vehicles; wholesale services in relation to lighting apparatus for vehicles.

2. European Union trade mark application No 18 174 215 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 27/03/2020, the opponent filed an opposition against all the goods and services of European Union trade mark application No 18 174 215 (figurative mark), namely against all the goods and services in Classes 11 and 35. The opposition is based on European Union trade mark registration No 9 316 118 (figurative mark). The opponent invoked Article 8(1)(a) and (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:

Class 35: Advertisement services; business administration and archiving; business management; collection, systemisation, management and operation of databases; office functions; selling in shops and via global computer networks of electrical and electricity-related goods, articles and material of all kinds.

Class 37: Installation, maintenance and repair of electric, radioelectric, electronic, security system, elevating, ventilation, heating, air-conditioning, refrigerating, plumbing, sanitary, fire-fighting apparatus, equipment and installations; repair and maintenance of machinery, motor vehicles and ships; building construction, repair and maintenance of real estate; restoration of buildings of historic or cultural importance; furniture repair and maintenance; repair and maintenance of roads, runways, motorways, railways; maintenance of street furniture; maintenance of computer and communications installations; building works and construction; hydraulic, maritime, road, runway and railway works; building construction, installation and maintenance of oil and gas pipelines; sanitising, disinfecting, fumigation and rat exterminating; sterilisation of sanitary equipment; restoration of works of art; cleaning services; laundry services.

Class 38: Television and radio broadcast services; new agency services; telecommunications services; information about telecommunication for the attention of emergency situations.

Class 39: Transport and storage of goods; transport of works of art; transport of petroleum and gas by pipeline; distribution of energy services; distribution of low-voltage energy; transport and transfer of patients by land, sea and air; waste transportation services; vehicle towing; towing of vessels; transport and message delivery; transport and distribution of ammunition; travel agents services; collection of luggage trolleys at stations, ports and airports.

Class 40: Services provided by power plants, electricity substations; high-voltage transformation and distribution centres; water treating (provided at desalination plants and water purification plants); urban waste treatment; sludge-treatment services; treatment of radioactive waste, waste acids and oil and waste from heath centres and veterinary clinics; dyeing services.

Class 42: Development and maintenance of computer programs; operation and control of computer systems and infrastructures; electronic certification; technical and industrial design, development and consultancy in the environmental, forestry, farming and agricultural sectors.

The contested goods and services are the following:

Class 11: Hot air apparatus; air conditioning apparatus; heating apparatus, electric; bath fittings; water filtering apparatus; burners for lamps; warming pans; ceiling lights; electric kettles; blankets, electric, not for medical purposes; footmuffs, electrically heated; light diffusers; heating filaments, electric; filaments for electric lamps; magnesium filaments for lighting; heating installations; street lamps; lamps; light bulbs; light bulbs, electric; aquarium lights; laboratory lamps; electric lamps; lanterns; lanterns for lighting; lights for vehicles; radiators, electric; luminous tubes for lighting; lamp chimneys; cooking utensils, electric; luminous house numbers; lighting apparatus for vehicles.

Class 35: Advertising; marketing services; retail services in relation to hot air apparatus; wholesale services in relation to hot air apparatus; retail services in relation to air conditioning apparatus; wholesale services in relation to air conditioning apparatus; retail services in relation to heating apparatus, electric; wholesale services in relation to heating apparatus, electric; retail services in relation to bath fittings; wholesale services in relation to bath fittings; retail services in relation to water filtering apparatus; wholesale services in relation to water filtering apparatus; retail services in relation to burners for lamps; wholesale services in relation to burners for lamps; retail services in relation to warming pans; wholesale services in relation to warming pans; retail services in relation to ceiling lights; wholesale services in relation to ceiling lights; retail services in relation to tea kettles [electric]; wholesale services in relation to tea kettles [electric]; retail services in relation to blankets, electric, not for medical purposes; wholesale services in relation to blankets, electric, not for medical purposes; retail services in relation to footmuffs, electrically heated; wholesale services in relation to footmuffs, electrically heated; retail services in relation to light diffusers; wholesale services in relation to light diffusers; retail services in relation to heating filaments, electric; wholesale services in relation to heating filaments, electric; retail services in relation to filaments for electric lamps; wholesale services in relation to filaments for electric lamps; retail services in relation to magnesium filaments for lighting; wholesale services in relation to magnesium filaments for lighting; retail services in relation to heating installations; wholesale services in relation to heating installations; retail services in relation to street lamps; wholesale services in relation to street lamps; retail services in relation to lamps; wholesale services in relation to lamps; retail services in relation to light bulbs; wholesale services in relation to light bulbs; retail services in relation to light bulbs, electric; wholesale services in relation to light bulbs, electric; retail services in relation to aquarium lights; wholesale services in relation to aquarium lights; retail services in relation to laboratory lamps; wholesale services in relation to laboratory lamps; retail services in relation to electric lamps; wholesale services in relation to electric lamps; retail services in relation to lanterns; wholesale services in relation to lanterns; retail services in relation to lanterns for lighting; wholesale services in relation to lanterns for lighting; retail services in relation to lights for vehicles; wholesale services in relation to lights for vehicles; retail services in relation to radiators, electric; wholesale services in relation to radiators, electric; retail services in relation to luminous tubes for lighting; wholesale services in relation to luminous tubes for lighting; retail services in relation to lamp chimneys; wholesale services in relation to lamp chimneys; retail services in relation to cooking utensils, electric; wholesale services in relation to cooking utensils, electric; retail services in relation to luminous house numbers; wholesale services in relation to luminous house numbers; retail services in relation to lighting apparatus for vehicles; wholesale services in relation to lighting apparatus for vehicles.

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 11

The opponent’s services of installation, maintenance and repair of heating apparatus, equipment and installations in Class 37 ensure the proper functioning of the contested hot air apparatus; heating apparatus, electric; radiators, electric; heating installations and there is a complementarity between these goods and services. They share the same origin, since the companies that manufacture the goods also install, repair and maintain them. They are provided through the same distribution channels and target the same public. Therefore, they are considered to be similar.

The same reasoning applies to the contested air conditioning apparatus which are similar to the opponent’s installation, maintenance and repair of air-conditioning apparatus, equipment, and to the contested water filtering apparatus; bath fittings, which are similar to the opponent’s installation, maintenance and repair of plumbing apparatus, equipment and installations.

The opponent’s installation, maintenance and repair of electric, electronic apparatus, equipment and installations in Class 37 are unclear and imprecise since they do not specify the concrete goods or types of goods to which those services relate as required (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 50). The earlier European Union trade mark registration No 9 316 118 was applied for on 18/10/2010 and, therefore, the requirement to specify the goods or types of goods to which the retail (and by analogy wholesale) services relate established by the case-law cited above clearly applies.

Unclear and imprecise terms can only be taken into account in their most natural and literal sense but cannot be construed as constituting a claim to goods or services that cannot be covered by this meaning without further specification. Although the opponent’s installation, maintenance and repair of electric, electronic apparatus, equipment and installations can be understood under their natural meaning as referring to the action of installing, repairing and maintaining, all in relation to electric, electronic apparatus, equipment and installations, these abstract meanings do not sufficiently reveal their specific commercial nature (i.e. to say what goods or types of goods those services relate to). These opponent’s services can refer to goods of different market sectors and, therefore, may be carried out by service providers with different levels of technical capabilities and know how. It follows that the goods to which these opponent’s services relate cannot be construed as relating to or involving the remaining contested goods when such circumstances cannot be understood from their natural and literal meaning.

It follows that when comparing these opponent’s unclear and imprecise services with the remaining contested goods in this Class, they cannot be construed as relating to the same goods when such qualities or technical capabilities have not been expressly identified in the specification and cannot be understood from its natural and literal meaning. Therefore, they cannot, on the basis of the insufficient information and facts provided by the imprecise specification of the earlier mark, be considered to have the same purpose or methods of use, or to be complementary or in competition. Furthermore, they cannot be considered to target the same relevant public, share the same distribution channels or usually be provided by the same undertakings. Consequently, in the absence of a further specification (by way of a partial surrender) of the unclear and imprecise terms, these services cannot be considered to share sufficient relevant factors with the remaining contested goods for a finding of any similarity between them. Therefore, they must be considered to be dissimilar.

Moreover, the remaining goods are also dissimilar to the remaining opponent’s services in Class 37, as they have nothing relevant in common. The goods and services under comparison do not have the same nature and are neither in competition nor complementary. In addition, they are not usually provided by the same undertakings or via the same distribution channels.

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.

Selling in shops and via global computer networks of electricity-related goods refer to the sale of apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling the distribution or use of electricity. These services and the remaining contested goods, namely burners for lamps; warming pans; ceiling lights; electric kettles; blankets, electric, not for medical purposes; footmuffs, electrically heated; light diffusers; heating filaments, electric; filaments for electric lamps; magnesium filaments for lighting; street lamps; lamps; light bulbs; light bulbs, electric; aquarium lights; laboratory lamps; electric lamps; lanterns; lanterns for lighting; lights for vehicles; luminous tubes for lighting; lamp chimneys; cooking utensils, electric; luminous house numbers; lighting apparatus for vehicles are not similar. Therefore, the necessary conditions are not fulfilled, since the goods sold at retail are dissimilar to the goods concerned. Moreover, 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. Although, like most goods, they can now be found in large retail stores, the goods at issue are sold in specialist departments which, even though they may be close, are nonetheless separate. In such circumstances, the distribution channels of the goods and services cannot be considered to be the same (04/12/2019, T‑524/18, Billa / BILLABONG et al., EU:T:2019:838, § 51).

The opponent’s selling in shops and via global computer networks of electrical related goods, articles and material of all kinds are unclear and imprecise since they do not specify the goods or types of goods to which those services relate as required (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425, § 50).

Unclear and imprecise terms can only be taken into account in their most natural and literal sense but cannot be construed as constituting a claim to goods or services that cannot be covered by this meaning without further specification. Although these opponent’s services can be understood under their natural meaning as referring to the action or business of selling goods or commodities in relatively small quantities for use or consumption, and the activity of buying and selling goods in large quantities, usually for resale (as well as intermediation of trade), all in relation to electrical related goods, articles and material of all kinds, these abstract meanings do not sufficiently reveal their specific commercial nature (i.e. to say what goods or types of goods those services relate to). Selling in shops and via global computer networks can satisfy different shopping needs relating to goods of different market sectors and, therefore, target different consumers, through different distribution channels, and by different undertakings. It follows that these opponent’s services cannot be construed as relating to or involving the contested goods when such circumstances cannot be understood from their natural and literal meaning. Retail and wholesale services in general are not similar to any goods that are capable of being sold by retail or wholesale. Apart from being different in nature, given that services are intangible whereas goods are tangible, they serve different needs. Furthermore, the method of use of those goods and services is different and they are neither in competition nor complementary. Although retail and wholesale services of specific goods may be similar to varying degrees to specific goods, this will depend on the degree of similarity between the goods themselves. Other relevant factors must also be taken into account, such as a possible complementarity (if the goods at issue are identical), whether they target the same relevant public, whether there is a close connection between them on the market from the perspective of the consumer, and whether they are usually offered for sale in the same specialised shops or in the same sections of department stores or supermarkets and belong to the same market sector.

However, in the case at hand, while the opponent’s selling in shops and via global computer networks have been specified to relate to electrical related goods, articles and material of all kinds, the specification of the earlier mark does not indicate to exactly which goods or types of goods the opponent’s services relate. Electrical related goods, articles and material of all kinds, may satisfy different shopping needs relating to goods of different market sectors, target different consumers, and be offered through different distribution channels by different undertakings. As a result, on the basis of the insufficient information and facts provided by the imprecise specification of the earlier mark, the contested goods and the opponent’s selling in shops and via global computer networks of electrical related goods, articles and material of all kinds in Class 35 cannot be considered to target the same relevant public or share the same distribution channels. Moreover, it cannot be considered that there is a close connection between them on the market, that they belong to the same market sector, or that they are complementary or in competition. Consequently, in the absence of a further specification of the unclear and imprecise terms, these services cannot be considered to be similar to the remaining contested goods either. Therefore, the remaining contested goods must be considered dissimilar to all the opponent’s selling in shops and via global computer networks of electrical related goods, articles and material of all kinds.

Moreover, the remaining goods are also dissimilar to the remaining opponent’s services. They have nothing relevant in common with the opponent’s advertising, business management, organisation, administration and office functions in Class 35, telecommunication services in Class 38, transport and travel arrangement in Class 39, treatment of materials, energy production, recycling of waste and treatment of water in Class 40, and scientific and technological services and research and design relating thereto, and IT services in Class 42. The goods and services under comparison do not have the same nature and are neither in competition nor complementary. In addition, they are not usually provided by the same undertakings or via the same distribution channels.

Contested services in Class 35

Advertising is identically contained in both lists of goods (including synonyms).

Marketing services are intended to promote other companies’ goods or services and are included in the broad category of the opponent’s advertising. Therefore, they are identical.

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. Although wholesale services and retail services target a different public, they have the same nature and purpose, since both are aimed at bringing together, for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods.

Similarity is found between those retail or wholesale services where the specific goods concerned are commonly retailed or wholesaled together in the same outlets and they target the same public. However, the degree of similarity between retail or wholesale of specific goods on the one hand and retail or wholesale 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 contested retail services in relation to ceiling lights; wholesale services in relation to ceiling lights; retail services in relation to light diffusers; wholesale services in relation to light diffusers; retail services in relation to magnesium filaments for lighting; wholesale services in relation to magnesium filaments for lighting; retail services in relation to street lamps; wholesale services in relation to street lamps; retail services in relation to lamps; wholesale services in relation to lamps; retail services in relation to light bulbs; retail services in relation to burners for lamps; wholesale services in relation to burners for lamps; retail services in relation to laboratory lamps; wholesale services in relation to laboratory lamps; retail services in relation to heating filaments, electric; wholesale services in relation to heating filaments, electric; retail services in relation to lamp chimneys; wholesale services in relation to lamp chimneys; wholesale services in relation to light bulbs; retail services in relation to light bulbs, electric; wholesale services in relation to light bulbs, electric; retail services in relation to aquarium lights; wholesale services in relation to aquarium lights; retail services in relation to electric lamps; wholesale services in relation to electric lamps; retail services in relation to lanterns; wholesale services in relation to lanterns; retail services in relation to lanterns for lighting; wholesale services in relation to lanterns for lighting; retail services in relation to lights for vehicles; wholesale services in relation to lights for vehicles; retail services in relation to luminous tubes for lighting; wholesale services in relation to luminous tubes for lighting; retail services in relation to luminous house numbers; wholesale services in relation to luminous house numbers; retail services in relation to lighting apparatus for vehicles; wholesale services in relation to lighting apparatus for vehicles; retail services in relation to filaments for electric lamps; wholesale services in relation to filaments for electric lamps have the same nature as the opponent’s selling in shops and via global computer networks of electricity-related goods, articles and material of all kinds. Both services are retail services and as such have the same purpose and method of use. Moreover, the goods subject to the contested retail services and the opponent’s retailed goods are sold in the same outlets and by the same entities. They also target the same relevant public. Therefore, these services are similar.

However, the contested retail services in relation to hot air apparatus; wholesale services in relation to hot air apparatus; retail services in relation to air conditioning apparatus; wholesale services in relation to air conditioning apparatus; retail services in relation to heating apparatus, electric; wholesale services in relation to heating apparatus, electric; retail services in relation to bath fittings; wholesale services in relation to bath fittings; retail services in relation to water filtering apparatus; wholesale services in relation to water filtering apparatus; retail services in relation to warming pans; wholesale services in relation to warming pans; retail services in relation to tea kettles [electric]; wholesale services in relation to tea kettles [electric]; retail services in relation to blankets, electric, not for medical purposes; wholesale services in relation to blankets, electric, not for medical purposes; retail services in relation to footmuffs, electrically heated; wholesale services in relation to footmuffs, electrically heated; retail services in relation to heating installations; wholesale services in relation to heating installations, retail services in relation to radiators, electric; wholesale services in relation to radiators, electric; retail services in relation to cooking utensils, electric; wholesale services in relation to cooking utensils, electric are dissimilar to the opponent’s selling in shops and via global computer networks of electricity-related goods, articles and material of all kinds, as the goods involved in the retail services under comparison are not usually sold together and belong to different market sectors.

The remaining contested services are also dissimilar to the opponent’s selling in shops and via global computer networks of electrical goods, articles and material of all kinds which, as mentioned above, are unclear and imprecise.

The opponent’s selling in shops and via global computer networks of electrical related goods, articles and material of all kinds and the remaining contested retail and wholesale services may be considered to have the same or a similar nature, purpose and methods of use in the sense that they are services aimed at allowing consumers to satisfy different shopping needs in one place. However, on the basis of the insufficient information and facts provided by the imprecise specification of the earlier mark, the services under comparison cannot be considered to involve goods that are usually retailed together in the same outlets or target the same relevant public. Furthermore, they cannot be considered complementary or in competition and the providers of the services concerned are not usually the same. Consequently, in the absence of a further specification of the unclear and imprecise term selling in shops and via global computer networks of electrical related goods, articles and material of all kinds, these services cannot be considered to share sufficient relevant factors with the remaining contested services for a finding of any similarity between them.

These remaining contested services are also dissimilar to the opponent’s other services. Advertising, business management, organisation and administration, and office functions in Class 35, construction services, installation and repair services in Class 37, telecommunication services in Class 38, transport and travel arrangement in Class 39, treatment of materials, energy production, recycling of waste, and treatment of water in Class 40, and scientific and technological services and research and design relating thereto and IT services in Class 42 have different nature, purpose, and method of use. Moreover, they are not usually offered by the same undertakings and are neither in competition nor complementary.

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 mostly at the public at large (e.g. goods in Class 11 and retail services) and at business consumers (in particular the advertising and marketing services). The degree of attention will vary from average to high, depending on the nature of the goods and services, their price and their impact on the customers’ businesses.

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 contested sign is a figurative mark, composed of the letters ‘SAPOL’, written in grey upper-case letters and underlined. In front of these letters are three squares inside each other, in different shades of grey. The earlier mark is also a figurative mark, consisting of the word ‘SAMPOL’, written in dark blue upper-case letters, and followed by a blue circle inside of which there are four horizontal yellow abstract lines. The signs’ verbal elements ‘SAMPOL’ and ‘SAPOL’ are meaningless and are therefore distinctive to an average degree.

The applicant argued that the word ‘SAPOL’ has its origin in the company name Santana & Pogeira S.A., which is the applicant. However, the Opposition Division finds it unlikely that the relevant public will make this association, and no evidence has been submitted to justify it. Consequently, the applicant’s argument cannot be taken into consideration.

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). In the present case, the figurative elements of the signs are essentially decorative.

Visually, and aurally, the signs coincide in the string of letters and sounds ‘SA(*)POL’, which is the entire verbal element of the contested sign and the beginning and ending of the verbal element of the earlier sign. The signs differ in the earlier sign’s middle letter ‘**M***’ and its sound, which has no counterpart in the contested sign. Despite the differences between the signs, they coincide in the two letters at their beginning and three letters at their end. The coincidence at the beginning is particularly relevant since consumers generally tend to focus on this part of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the marks further differ in the figurative elements of the signs, which, as seen above, play a secondary role in their perception.

The signs are therefore visually similar to a below-average degree and aurally similar to a high degree.

Conceptually, neither of the signs has a meaning for 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. The figurative elements of the signs do not convey any particular meaning.

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 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 contested goods and services are partly identical, partly similar and partly dissimilar. They target the public at large and professionals, whose degree of attention varies from average to high. The signs are visually similar to a below-average degree and aurally similar to a high degree, while conceptually they do not convey any clear meaning that would help to distinguish them. Furthermore, the earlier mark has a normal degree of distinctiveness.

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 have identical beginnings and endings, and the only difference in their verbal element is in the middle where it can be easily overlooked.

In its observations, the applicant argued that the same trade mark as applied for here, was also filed in Portugal, and that an opposition based on the same earlier mark was also filed. In such a case, the Portuguese Trademark Office did not consider the existence of likelihood of confusion.

However, it must be noted that decisions of national courts and national offices regarding conflicts between identical or similar trade marks at national level do not have a binding effect on the Office since the European Union trade mark regime is an autonomous system, which applies independently of any national system (13/09/2010, T‑292/08, Often, EU:T:2010:399). Therefore, although the Portuguese Trademark Office allowed the registration, this is not in itself a valid argument and must be rejected.

Considering all the above, there is a likelihood of confusion on the part of the public, therefore the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 9 316 118 .

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 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.

For the sake of completeness, it must be mentioned that the opposition must also fail insofar as based on grounds under Article 8(1)(a) EUTMR and directed against the remaining goods and services because the signs and the goods and services are obviously not identical.

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

Richard BIANCHI

Cristina CRESPO MOLTO

Frédérique SULPICE

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.