OPPOSITION No B 2 177 395

Zentrum Mikroelektronik Dresden AG, Grenzstr. 28, 01109 Dresden, Germany (opponent), represented by Lippert, Stachow & Partner, Krenkelstr. 3, 01309 Dresden, Germany (professional representative)

a g a i n s t

Ausonia S.R.L., Via Giarre, 45, 35031 Abano Terme (PD), Italy (applicant), represented by De Gaspari Osgnach S.R.L., Via Oberdan, 20, 35122 Padova, Italy (professional representative).

On 05/05/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 177 395 is partially upheld, namely for the following contested services:

Class 35: Wholesaling and retailing, including via computerised online ordering, relating to nautical, optical and signalling apparatus and instruments, apparatus for transmission of sound, telephone apparatus, software.

Class 41: Education; Providing of training; Entertainment, Other than television entertainment; Academies [education]; Coaching [training]; Education; Practical training [demonstration]; Providing on-line electronic publications, not downloadable, Other than providing non-downloadable electronic publications online in the television sector, television programmes and television entertainment; Publication of books; Publication of texts, other than publicity texts; Publication of electronic books and journals on-line, Other than online publications in the television sector, television programmes and television entertainment; Electronic desktop publishing; Game services provided on-line from a computer network; Desktop publishing.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Computer software (Updating of -); Land surveying; Construction drafting; Chemical analysis; Water analysis; Computer system analysis; Architecture; Material testing; Architectural consultation; Consultancy in the field of energy-saving; Computer software consultancy; Consultancy in the design and development of computer hardware; Oil-well testing; Quality control; Vehicle roadworthiness testing; Data conversion of computer programs and data [not physical conversion]; Conversion of data or documents from physical to electronic media; Creating and maintaining web sites for others; Digitization of documents [scanning]; Industrial design; Duplication of computer programs; Computer software design; Oil-field surveys; Geological surveys; Underwater exploration; Provision of scientific information, advice and consultancy in relation to carbon offsetting; Providing search engines for the internet; Engineering; Cloud seeding; Installation of computer software; Rental of computer software; Maintenance of computer software; Monitoring of computer systems by remote access; Hosting computer sites [web sites]; Surveying; Urban planning; Computer system design; Computer programming; Textile testing; Recovery of computer data; Oil prospecting; Research and development for others; Geological prospecting; Biological research; Geological research; Bacteriological research; Chemical research; Cosmetic research; Physics [research]; Research in the field of environmental protection; Mechanical research; Technical research; Analysis for oil-field exploitation; Weather forecasting; Chemistry services; Laboratory (Scientific -) services; Computer virus protection services; Project studies (Technical -); Calibration [measuring]; Creating virtual communities for registered users to organise groups and events, participate in discussions, aggregate information and resources, and engage in social networking; Hosting of interactive websites and online non-downloadable software for uploading, downloading, inputting, displaying, tagging, sharing and transmitting messages, comments, multimedia content, videos, films, photographs, audio content, animation, pictures, images, text, information, and other user-generated content.

2. European Union trade mark application No 11 042 322 is rejected for all the above services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the services of European Union trade mark application No 11 042 322. The opposition is based on European Union trade mark registrations No 8 449 217 and No 9 477 969. 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.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 8 449 217.

1. The goods and services

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

Class 9: Integrated circuits; namely, metal-oxide-semiconductor (MOS) circuits; multi-chip integrated circuit modules; electric and/or electronic sensors for light intensity, acceleration, compression, pressure, and distance; microsystems, namely, application-specific integrated circuits (ASICs); integrated circuits in the nature of application-specific standard electronic products (ASSPs); memory integrated circuits, namely, static random access memory (SRAM) circuits, dynamic random access memory (DRAM) circuits, and non-volatile static random access memory (NVSRAM) circuits; memory expansion modules; structured semi-conductor discs; Telephone transmitters; Computer software, recorded.

Class 42: Design and development of metal-oxide-semiconductor (MOS) circuits, multi-chip integrated circuit modules, electric and/or electronic sensors for light intensity, acceleration, compression, pressure, and distance, microsystems consisting primarily of micro-processors and micro-computers, customized integrated circuits in the nature of application-specific integrated circuits (ASICs), integrated circuits in the nature of application-specific standard electronic products (ASSPs), memory integrated circuits in the nature of static random access memory (SRAM) circuits, dynamic random access memory (DRAM) circuits, and non-volatile static random access memory (NVSRAM) circuits, memory expansion modules, and structured semi-conductor discs; laboratory research in the field of chemistry and physics; engineering services; scientific research; industrial research in the field of physics; Computer programming; Design of Computer Software.

The contested services, after limitation, are the following:

Class 35: Advertising; Business management; Business administration; Office functions; Bill-posting; Rental of vending machines; Rental of advertising time on communication media; Commercial information agencies; Publicity agencies; Import-export agencies; Updating of advertising material; Commercial administration of the licensing of the goods and services of others; Cost price analysis; Commercial or industrial management assistance; Business consultancy (Professional -); Business management consultancy; Personnel management consultancy; Accounting; Shop window dressing; Dissemination of advertising matter; Distribution of samples; Demonstration of goods; Business management of performing artists; Direct mail advertising; Compilation of statistics; Invoicing; Business management of hotels; Business management of sports people; File management (Computerized -); Business information; Commercial information and advice for consumers [consumer advice shop]; Business investigations; Layout services for advertising purposes; Rental of advertising space; Marketing; Rental of photocopying machines; Office machines and equipment rental; Publicity material rental; Organization of exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Fashion shows for promotional purposes (Organization of -); Efficiency experts; Payroll preparation; Presentation of goods on communication media, for retail purposes; Economic forecasting; Production of advertising films; Business management assistance; Sales promotion for others; Publication of publicity texts; Advertising; On-line advertising on a computer network; Advertising by mail order; Publicity columns preparation; Radio advertising; Television advertising; Compilation of information into computer databases; Business inquiries; Personnel recruitment; Writing of publicity texts; Public relations; Sponsorship search; Data search in computer files for others; Marketing research; Business research; Document reproduction; Psychological testing for the selection of personnel; Arranging newspaper subscriptions for others; Arranging subscriptions to telecommunication services for others; Procurement services for others [purchasing goods and services for other businesses]; Price comparison services; Business management and organization consultancy; Business organization consultancy; Management (Advisory services for business -); Typing; Photocopying services; Modelling for advertising or sales promotion; News clipping services; Relocation services for businesses; Telephone answering for unavailable subscribers; Secretarial services; Shorthand; Outsourcing services [business assistance]; Telemarketing services; Systemization of information into computer databases; Opinion polling; Tax preparation; Accounts (Drawing up of statements of -); Business appraisals; Marketing studies; Transcription; Administrative processing of purchase orders; Word processing; Employment agencies; Auctioneering; Auditing; Providing information on goods available via the Internet or other communications networks; Management of retail outlets and wholesaling and retailing, including via computerised online ordering, relating to chemicals used in industry, science, photography, agriculture, horticulture and forestry, manures, chemical substances for preserving foodstuffs, paints, varnishes, lacquers, preservatives against rust and deterioration of wood, colorants, bleaching preparations and other substances for laundry use, cleaning, polishing, degreasing and abrasive preparations, perfumery and cosmetics, soaps, essential oils, hair lotions, dentifrices, depilatory preparations, shampoos, make-up preparations, preparations for shaving, toiletries, detergent preparations, oils and industrial greases, lubricants, fuels (including motor spirit) and illuminants, candles and wicks for lighting, pharmaceuticals and veterinary preparations, sanitary preparations for medical purposes, including first aid kits, dietetic substances and foodstuffs adapted for medical or veterinary use, food for babies, food supplements for humans and animals, plasters, materials for dressings, disinfectants, preparations for destroying vermin, fungicides, herbicides, common metals and their alloys, metal building materials, transportable buildings of metal, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal, ores, hand tools and implements (hand-operated), cutlery, razors, razor blades, shaving cases, scissors, nail files and nail clippers, manicure sets, scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission, reproduction of sound or images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, spectacles, contact lenses and related preserving and cleaning liquids, telephone apparatus and accessories therefor, photographic cameras, including digital, and accessories therefor, electronic calculators, electronic translators, electronic dictionaries, electronic agendas, computers and accessories therefor, batteries, electrical adapters, telephone cards, software, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, electric torches, light bulbs, electric hair dryers, precious metals and their alloys and goods made from the aforesaid materials or coated therewith, jewellery, precious stones, horological and chronometric instruments, cuff links, tie pins, key rings, statuettes, musical instruments, paper, cardboard and goods made from these materials, book binding material, photographs, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites, instructional and teaching material, plastic materials for packaging, printers’ type, printing blocks, stationery articles, books, dictionaries, guidebooks and maps, newspapers, magazines and printed matter, playing cards, make-up removal wipes of paper, handkerchiefs of paper, postcards, lottery tickets, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, bags, rucksacks, pocket wallets, purses, make-up bags, key cases, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, household or kitchen utensils and containers, combs and sponges, brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass, glassware, porcelain and earthenware, toothbrushes, gift articles and artistic objects of earthenware, ceramics, porcelain, terracotta or glass, containers for foods and beverages, bottle gourds, corkscrews, bottle openers, textiles and textile goods, bed and table covers, clothing, footwear, headgear, belts, handkerchiefs of textile, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile), games and playthings, including electronic games, gymnastic and sporting articles, decoration for Christmas trees, meat, fish , poultry and game, meat extracts, preserved, frozen, dried and cooked fruit and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa and artificial coffee, chocolate, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, fresh and frozen baked goods, sweets, biscuits, caramels, chewing gum, ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, grains and agricultural, horticultural, and forestry products, live animals, fresh fruit 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 and other preparations for making beverages, alcoholic beverages including wine, tobacco, smokers' articles, matches, cigars, cigarettes, lighters for smokers, cigar cases, cigarette cases.

Class 41: Education; Providing of training; Entertainment, Other than television entertainment; Sporting and cultural activities; Academies [education]; Animal training; Rental of movie projectors and accessories; Rental of show scenery; Rental of stage scenery; Rental of tennis courts; Rental of cine-films; Rental of sound recordings; Rental of radio and television sets; Coaching [training]; Sport camp services; Circuses; Music composition services; Conducting fitness classes; Timing of sports events; Physical education; Radio entertainment; Dubbing; Education; Religious education; Practical training [demonstration]; Providing sports facilities; Providing golf facilities; Providing on-line electronic publications, not downloadable, Other than providing non-downloadable electronic publications online in the television sector, television programmes and television entertainment; Photography; Providing amusement arcade services; Amusement parks; Gambling; Entertainment information, Other than information relating to television entertainment; Education information; Recreation information; Gymnastic instruction; Correspondence courses; Sign language interpretation; Layout services, other than for advertising purposes; Night clubs; Rental of videotapes; Providing karaoke services; Microfilming; Production of radio programmes; Videotape editing; Rental of audio equipment; Rental of lighting apparatus for theatrical sets; Games equipment rental; Rental of skin diving equipment; Rental of sports equipment, except vehicles; Toy rental; Rental of sports grounds; Rental of video cassette recorders; Rental of stadium facilities; Rental of camcorders; Organization of balls; Organization of sports competitions; Arranging of beauty contests; Organization of competitions [education or entertainment]; Organization of exhibitions for cultural or educational purposes; Operating lotteries; Organization of fashion shows for entertainment purposes; Organization of shows [impresario services]; Arranging and conducting of concerts; Arranging and conducting of conferences; Arranging and conducting of congresses; Arranging and conducting of colloquiums; Arranging and conducting of seminars; Arranging and conducting of symposiums; Arranging and conducting of workshops [training]; Vocational guidance [education or training advice]; Boarding schools; Party planning [entertainment]; Booking of seats for shows; Lending libraries; Production of music; Production of shows; Projection in movie theatres; Educational examination; Publication of books; Publication of texts, other than publicity texts; Publication of electronic books and journals on-line, Other than online publications in the television sector, television programmes and television entertainment; Electronic desktop publishing; Presentation of live performances; Theatre productions; Scriptwriting services; Writing of texts, other than publicity texts; Videotaping; Photographic reporting; Vocational retraining; Music-halls; Nursery schools; Modelling for artists; Bookmobile services; Ticket agency services [entertainment]; Calligraphy services; Holiday camp services [entertainment]; Providing casino facilities [gambling]; Health club services [health and fitness training]; Club services [entertainment or education]; News reporters services; Disc jockey services; Discotheque services; Providing recreation facilities; Zoological garden services; Game services provided on-line from a computer network; Language interpreter services; Providing museum facilities [presentation, exhibitions]; Orchestra services; Personal trainer services [fitness training]; Recording studio services; Translation; Entertainer services; Subtitling; Movie studios; Desktop publishing; Organising cultural events, including meetings and seminars.

Class 42: Scientific and technological services and research and design relating thereto; Industrial analysis and research services; Design and development of computer hardware and software; Computer rental; Computer software (Updating of -); Land surveying; Construction drafting; Chemical analysis; Handwriting analysis [graphology]; Water analysis; Computer system analysis; Architecture; Authenticating works of art; Material testing; Architectural consultation; Consultancy in the field of energy-saving; Computer software consultancy; Consultancy in the design and development of computer hardware; Oil-well testing; Quality control; Vehicle roadworthiness testing; Data conversion of computer programs and data [not physical conversion]; Conversion of data or documents from physical to electronic media; Creating and maintaining web sites for others; Design of interior decor; Digitization of documents [scanning]; Industrial design; Duplication of computer programs; Computer software design; Oil-field surveys; Geological surveys; Underwater exploration; Provision of scientific information, advice and consultancy in relation to carbon offsetting; Providing search engines for the internet; Engineering; Cloud seeding; Installation of computer software; Rental of computer software; Maintenance of computer software; Monitoring of computer systems by remote access; Rental of web servers; Hosting computer sites [web sites]; Surveying; Urban planning; Computer system design; Computer programming; Textile testing; Recovery of computer data; Oil prospecting; Research and development for others; Geological prospecting; Biological research; Geological research; Bacteriological research; Chemical research; Cosmetic research; Physics [research]; Research in the field of environmental protection; Mechanical research; Technical research; Analysis for oil-field exploitation; Weather forecasting; Chemistry services; Graphic arts designing; Packaging design; Dress designing; Laboratory (Scientific -) services; Computer virus protection services; Styling [industrial design]; Project studies (Technical -); Calibration [measuring]; Evaluation of wool (Quality -); Valuation of standing timber (Quality -); Creating virtual communities for registered users to organise groups and events, participate in discussions, aggregate information and resources, and engage in social networking; Hosting of interactive websites and online non-downloadable software for uploading, downloading, inputting, displaying, tagging, sharing and transmitting messages, comments, multimedia content, videos, films, photographs, audio content, animation, pictures, images, text, information, and other user-generated content.

Class 45: Legal services; Security services for the protection of property and individuals; Personal and social services rendered by others to meet the needs of individuals; Chaperoning; Personal body guarding; Clothing rental; Evening dress rental; Night guards; Detective agencies; Marriage agencies; Opening of security locks; Baby sitting; Dating services; Horoscope casting; Licensing of intellectual property; Licensing of computer software [legal services]; Security consultancy; Intellectual property consultancy; Crematorium services; Funerals; Copyright management; Personal background investigations; Baggage inspection for security purposes; Inspection of factories for safety purposes; Mediation; Rental of safes; Rental of fire extinguishers; Rental of fire alarms; Organization of religious meetings; Planning and arranging of wedding ceremonies; Undertaking; Guards; Registration of domain names [legal services]; Lost property return; Genealogical research; Legal research; Missing person investigations; Arbitration services; Adoption agency services; Litigation services; House sitting; Alternative dispute resolution services; Intellectual property watching services; Fire-fighting; Pet sitting; Monitoring of burglar and security alarms; Social networking and online communities for registered users to share information, photographs, audio and video content for obtaining the opinions of other users, for providing information or advice.

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 services in Class 35

Retail services concerning the sale of particular goods are similar to a low degree to those particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as 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. 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 and internet shopping, catalogue or mail order services.

Some of the contested retail and wholesale services concern goods that are identical to those covered by the earlier mark in Class 9, namely:

• The opponent’s telephone transmitters are included in the broad and mutually overlapping categories of nautical, signalling apparatus and instruments and apparatus for transmission of sound featured in the contested list of retail and wholesale services. Furthermore, telephone transmitters are covered by the broader category of telephone apparatus.

• The opponent’s electric and/or electronic sensors for light intensity, acceleration, compression, pressure, and distance cannot be clearly separated from the broad category of optical apparatus and instruments featured in the contested list of retail and wholesale services.

• The opponent’s computer software, recorded is included in the broader category of software featured in the contested list of retail and wholesale services.

Therefore, the contested wholesaling and retailing, including via computerised online ordering, relating to nautical, optical and signalling apparatus and instruments, apparatus for transmission of sound, telephone apparatus, software are similar to a low degree to the opponent’s electric and/or electronic sensors for light intensity, acceleration, compression, pressure, and distance; telephone transmitters; computer software, recorded in Class 9, respectively.

With regard to the remaining wholesaling and retailing services, it is noted that retail and wholesale services of specific goods, on the one hand, and merely similar or dissimilar goods, on the other hand, are not considered similar. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. Retail and wholesale services consist in bringing together, and offering for sale, a wide variety of different products, thus allowing consumers to conveniently satisfy different shopping needs at one stop. This is not the purpose of goods. Furthermore, goods and services have different methods of use and are neither in competition nor complementary.

Similarity between retail and wholesale services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical. This condition is not fulfilled in relation to the remaining goods featured in the contested retail and wholesale services, since the goods at issue are obviously not identical to the opponent’s goods.

The rest of the contested services in Class 35 have no relevant connection with any of the opponent’s goods or services in Classes 9 and 42. The contested application seeks protection for business support services which can be grouped as follows: advertising (for instance marketing and publicity, updating and dissemination of advertising matter); business management (for instance commercial and industrial management assistance (including management of retail outlets), professional business consultancy and investigations); business administration (for instance personnel recruitment, payroll preparation, organization of exhibitions and trade shows, invoicing, procurement services for others); office functions (for instance compilation of data into computer databases, typing, word processing and photocopying, rental of office machines and equipment); auctioneering; rental of vending machines.

Concerning the foregoing contested services vis-à-vis the opponent’s goods in Class 9 that are essentially computer hardware components, optical sensors, telecommunications apparatus and computer software, the Opposition Division notes that, by their nature, goods are generally dissimilar to services. In particular, the contested services are mainly aimed at providing help, for third parties, in the management of the business affairs or commercial functions of a commercial/industrial enterprise, and assisting with the operational administration and the running of the daily tasks of an undertaking, as well as services rendered by advertising agencies. The natures and purposes of advertising, business management/administration services and office functions are fundamentally different from the manufacture of the opponent’s goods. The mere fact that some goods commonly appear in advertisements or that business management/administration or clerical services are necessary functions in any manufacturing undertaking are insufficient to find them similar.

The nature, purpose and method of use of the contested auctioneering are different from those of the opponent’s goods in Class 9. The mere fact that some electronic goods such as semiconductor chips may be featured in commodities auctions is not sufficient for finding them similar, as consumers would not expect the organiser of auctions to be involved in the manufacture of these goods, because their main activity is to arrange the bidding for and selling of goods for others. The contested rental of vending machines is a specific service provided by specialists in order to allow other entrepreneurs to be involved in machine-operated retail sales without purchasing the vending machine. There is nothing relevant in common between the contested rental of vending machines and the opponent’s goods in Class 9.

The opponent’s services in Class 42 have no relevant connection with the remaining contested services either. Being computer programming services and scientific and technological services rendered in the field of physics and industry, they have clearly distinct natures and purposes from those of the contested business support services or retail and wholesale activities. These services are neither complementary nor in competition. Furthermore, they are directed at different consumer circles and move through different commercial channels.

Therefore, the contested advertising; business management; business administration; office functions; bill-posting; rental of vending machines; rental of advertising time on communication media; commercial information agencies; publicity agencies; import-export agencies; updating of advertising material; commercial administration of the licensing of the goods and services of others; cost price analysis; commercial or industrial management assistance; business consultancy (professional -); business management consultancy; personnel management consultancy; accounting; shop window dressing; dissemination of advertising matter; distribution of samples; demonstration of goods; business management of performing artists; direct mail advertising; compilation of statistics; invoicing; business management of hotels; business management of sports people; file management (computerized -); business information; commercial information and advice for consumers [consumer advice shop]; business investigations; layout services for advertising purposes; rental of advertising space; marketing; rental of photocopying machines; office machines and equipment rental; publicity material rental; organization of exhibitions for commercial or advertising purposes; organization of trade fairs for commercial or advertising purposes; fashion shows for promotional purposes (organization of -); efficiency experts; payroll preparation; presentation of goods on communication media, for retail purposes; economic forecasting; production of advertising films; business management assistance; sales promotion for others; publication of publicity texts; advertising; on-line advertising on a computer network; advertising by mail order; publicity columns preparation; radio advertising; television advertising; compilation of information into computer databases; business inquiries; personnel recruitment; writing of publicity texts; public relations; sponsorship search; data search in computer files for others; marketing research; business research; document reproduction; psychological testing for the selection of personnel; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; procurement services for others [purchasing goods and services for other businesses]; price comparison services; business management and organization consultancy; business organization consultancy; management (advisory services for business -); typing; photocopying services; modelling for advertising or sales promotion; news clipping services; relocation services for businesses; telephone answering for unavailable subscribers; secretarial services; shorthand; outsourcing services [business assistance]; telemarketing services; systemization of information into computer databases; opinion polling; tax preparation; accounts (drawing up of statements of -); business appraisals; marketing studies; transcription; administrative processing of purchase orders; word processing; employment agencies; auctioneering; auditing; providing information on goods available via the internet or other communications networks; management of retail outlets and wholesaling and retailing, including via computerised online ordering, relating to chemicals used in industry, science, photography, agriculture, horticulture and forestry, manures, chemical substances for preserving foodstuffs, paints, varnishes, lacquers, preservatives against rust and deterioration of wood, colorants, bleaching preparations and other substances for laundry use, cleaning, polishing, degreasing and abrasive preparations, perfumery and cosmetics, soaps, essential oils, hair lotions, dentifrices, depilatory preparations, shampoos, make-up preparations, preparations for shaving, toiletries, detergent preparations, oils and industrial greases, lubricants, fuels (including motor spirit) and illuminants, candles and wicks for lighting, pharmaceuticals and veterinary preparations, sanitary preparations for medical purposes, including first aid kits, dietetic substances and foodstuffs adapted for medical or veterinary use, food for babies, food supplements for humans and animals, plasters, materials for dressings, disinfectants, preparations for destroying vermin, fungicides, herbicides, common metals and their alloys, metal building materials, transportable buildings of metal, non-electric cables and wires of common metal, ironmongery, small items of metal hardware, pipes and tubes of metal, safes, goods of common metal, ores, hand tools and implements (hand-operated), cutlery, razors, razor blades, shaving cases, scissors, nail files and nail clippers, manicure sets, scientific, surveying, photographic, cinematographic, weighing, measuring, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, reproduction of sound, apparatus for recording, transmission, reproduction of images, magnetic data carriers, recording discs, compact discs, DVDs and other digital recording media, mechanisms for coin-operated apparatus, cash registers, spectacles, contact lenses and related preserving and cleaning liquids, accessories for telephone apparatus, photographic cameras, including digital, and accessories therefor, electronic calculators, electronic translators, electronic dictionaries, electronic agendas, computers and accessories therefor, batteries, electrical adapters, telephone cards, apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes, electric torches, light bulbs, electric hair dryers, precious metals and their alloys and goods made from the aforesaid materials or coated therewith, jewellery, precious stones, horological and chronometric instruments, cuff links, tie pins, key rings, statuettes, musical instruments, paper, cardboard and goods made from these materials, book binding material, photographs, adhesives for stationery or household purposes, artists' materials, paint brushes, typewriters and office requisites, instructional and teaching material, plastic materials for packaging, printers’ type, printing blocks, stationery articles, books, dictionaries, guidebooks and maps, newspapers, magazines and printed matter, playing cards, make-up removal wipes of paper, handkerchiefs of paper, postcards, lottery tickets, leather and imitations of leather, and goods made of these materials, animal skins, hides, trunks and travelling bags, umbrellas, parasols and walking sticks, whips, harness and saddlery, bags, rucksacks, pocket wallets, purses, make-up bags, key cases, furniture, mirrors, picture frames, goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics, household or kitchen utensils and containers, combs and sponges, brushes, brush-making materials, articles for cleaning purposes, steelwool, unworked or semi-worked glass, glassware, porcelain and earthenware, toothbrushes, gift articles and artistic objects of earthenware, ceramics, porcelain, terracotta or glass, containers for foods and beverages, bottle gourds, corkscrews, bottle openers, textiles and textile goods, bed and table covers, clothing, footwear, headgear, belts, handkerchiefs of textile, lace and embroidery, ribbons and braid, buttons, hooks and eyes, pins and needles, artificial flowers, carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile), games and playthings, including electronic games, gymnastic and sporting articles, decoration for christmas trees, meat, fish , poultry and game, meat extracts, preserved, frozen, dried and cooked fruit and vegetables, jellies, jams, compotes, eggs, milk and milk products, edible oils and fats, coffee, tea, cocoa and artificial coffee, chocolate, rice, tapioca and sago, flour and preparations made from cereals, bread, pastry and confectionery, fresh and frozen baked goods, sweets, biscuits, caramels, chewing gum, ices, sugar, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices, ice, grains and agricultural, horticultural, and forestry products, live animals, fresh fruit 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 and other preparations for making beverages, alcoholic beverages including wine, tobacco, smokers' articles, matches, cigars, cigarettes, lighters for smokers, cigar cases, cigarette cases are dissimilar to all of the opponent’s goods and services in Classes 9 and 42.

Contested services in Class 41

The contested education (listed twice); providing of training; academies [education]; coaching [training]; practical training [demonstration] and the opponent’s industrial research in the field of physics in Class 42 share the same general purpose of acquiring and/or imparting or disseminating knowledge or skills. Besides, while it is true that education and training services are generally directed to the public at large it remains that they may also target companies and professionals. Thus, these services may be provided to the same consumers. Finally, the sources offering education and training services (such as universities, academies, schools) are likely to participate in the providing of technological research services (through research centres where chemists, physicists, engineers, etc., work in cooperation with or for the benefit of private industrial undertakings, in the development of new technologies). Therefore, these services are similar.

The opponent’s computer software, recorded in Class 9 can refer to application software – the so-called ‘apps’ – that enable users to perform various tasks on their computers, tablet computers and smartphones. Desktop publishing is a common functionality used at home or small offices for example in order to create documents, for layout formatting and online sharing/publishing. To that extent, the opponent’s computer software, recorded and the contested providing on-line electronic publications, not downloadable, other than providing non-downloadable electronic publications online in the television sector, television programmes and television entertainment; publication of books; publication of texts, other than publicity texts; publication of electronic books and journals on-line, other than online publications in the television sector, television programmes and television entertainment; electronic desktop publishing; desktop publishing have the same purpose. Moreover, they are of interest to the same consumer circles who can expect that they originate from the same undertakings. The goods and services are, therefore, similar.

The contested game services provided on-line from a computer network are complementary to games software which is included in the opponent’s broadly defined category of computer software, recorded in Class 9. Provision of the services at issue requires use of the opponent’s goods; furthermore, they are directed at the same consumers who expect that such goods and services are offered under the control of the same business entity. Insofar as the foregoing contested online game services cannot be clearly separated from the broader category of entertainment, other than television entertainment the same findings apply also to those of the contested services. They are similar.

The rest of the contested services in this class are essentially entertainment (for instance radio entertainment and production of shows), sporting and cultural activities (for example concerts, circuses and holiday camps), various specific types of training (for instance in the field of religion, sports, fitness, for animals), organisation and conducting of events, photographic and news reporting, calligraphy, translation and interpreting services, or ancillary rental services related to these groups of services (for instance rental of movie projectors, rental of tennis courts etc.). They have no relevant connections with the opponent’s goods or services in Classes 9 and 42, since they have distinct natures and purposes, they do not originate from the same industry, let alone the same undertakings. Furthermore, they are neither complementary nor in competition.

Therefore, the contested sporting and cultural activities; animal training; rental of movie projectors and accessories; rental of show scenery; rental of stage scenery; rental of tennis courts; rental of cine-films; rental of sound recordings; rental of radio and television sets; sport camp services; circuses; music composition services; conducting fitness classes; timing of sports events; physical education; radio entertainment; dubbing; religious education; providing sports facilities; providing golf facilities; photography; providing amusement arcade services; amusement parks; gambling; entertainment information, other than information relating to television entertainment; education information; recreation information; gymnastic instruction; correspondence courses; sign language interpretation; layout services, other than for advertising purposes; night clubs; rental of videotapes; providing karaoke services; microfilming; production of radio programmes; videotape editing; rental of audio equipment; rental of lighting apparatus for theatrical sets; games equipment rental; rental of skin diving equipment; rental of sports equipment, except vehicles; toy rental; rental of sports grounds; rental of video cassette recorders; rental of stadium facilities; rental of camcorders; organization of balls; organization of sports competitions; arranging of beauty contests; organization of competitions [education or entertainment]; organization of exhibitions for cultural or educational purposes; operating lotteries; organization of fashion shows for entertainment purposes; organization of shows [impresario services]; arranging and conducting of concerts; arranging and conducting of conferences; arranging and conducting of congresses; arranging and conducting of colloquiums; arranging and conducting of seminars; arranging and conducting of symposiums; arranging and conducting of workshops [training]; vocational guidance [education or training advice]; boarding schools; party planning [entertainment]; booking of seats for shows; lending libraries; production of music; production of shows; projection in movie theatres; educational examination; presentation of live performances; theatre productions; scriptwriting services; writing of texts, other than publicity texts; videotaping; photographic reporting; vocational retraining; music-halls; nursery schools; modelling for artists; bookmobile services; ticket agency services [entertainment]; calligraphy services; holiday camp services [entertainment]; providing casino facilities [gambling]; health club services [health and fitness training]; club services [entertainment or education]; news reporters services; disc jockey services; discotheque services; providing recreation facilities; zoological garden services; language interpreter services; providing museum facilities [presentation, exhibitions]; orchestra services; personal trainer services [fitness training]; recording studio services; translation; entertainer services; subtitling; movie studios; organising cultural events, including meetings and seminars are dissimilar to all of the opponent’s goods and services in Classes 9 and 42.

Contested services in Class 42

Scientific research; computer software design (listed twice in the contested list of services); engineering; computer programming are identically contained in both lists of services, despite differences in the wordings.

The contested scientific services and design relating thereto include, as a broader category, the opponent’s engineering services in Class 42. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested technological services and research relating thereto; industrial analysis and research services include, as broader categories, the opponent’s industrial research in the field of physics in Class 42. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested technological design services; industrial design include, as a broader category, the opponent’s design and development of metal-oxide-semiconductor (MOS) circuits in Class 42. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested design and development of computer hardware include, as a broader category, the opponent’s design and development of microsystems consisting primarily of micro-processors and micro-computers in Class 42. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested development of computer software; computer software (updating of -); maintenance of computer software; creating virtual communities for registered users to organise groups and events, participate in discussions, aggregate information and resources, and engage in social networking overlap with the opponent’s computer programming in Class 42. They are identical.

The contested land surveying; construction drafting; architecture; architectural consultation; consultancy in the field of energy-saving; oil-well testing; oil-field surveys; geological surveys; underwater exploration; provision of scientific information, advice and consultancy in relation to carbon offsetting; cloud seeding; surveying; urban planning; oil prospecting; research and development for others; geological prospecting; geological research; research in the field of environmental protection; analysis for oil-field exploitation; project studies (technical -) are included in, or overlap with, the broad category of the opponent’s engineering services in Class 42. They are identical.

The contested weather forecasting overlaps with the opponent’s scientific research in Class 42. They are identical.

The contested chemical analysis; water analysis; material testing; quality control; vehicle roadworthiness testing; textile testing; biological research; bacteriological research; chemical research; cosmetic research; physics [research]; mechanical research; technical research; chemistry services; laboratory (scientific -) services; calibration [measuring] are included in, or overlap with, the opponent’s laboratory research in the field of chemistry and physics; engineering services in Class 42. They are identical.

The contested computer system analysis; computer software consultancy; data conversion of computer programs and data [not physical conversion]; creating and maintaining web sites for others; duplication of computer programs; providing search engines for the internet; installation of computer software; rental of computer software; monitoring of computer systems by remote access; hosting computer sites [web sites]; computer system design; recovery of computer data; computer virus protection services; hosting of interactive websites and online non-downloadable software for uploading, downloading, inputting, displaying, tagging, sharing and transmitting messages, comments, multimedia content, videos, films, photographs, audio content, animation, pictures, images, text, information, and other user-generated content are commonly provided by the same entities as those involved in the design and development of computer software. Such services are directed at the same consumers and they are offered through the same channels. Therefore, the foregoing contested services are similar to the opponent’s computer programming in Class 42.

The contested consultancy in the design and development of computer hardware are similar to the opponent’s design and development of microsystems consisting primarily of micro-processors and micro-computers in Class 42. Such services are commonly provided by the same entities as those involved in design and development of computer hardware components. Moreover, they are directed at the same consumers and they are offered through the same channels.

The conversion of data or documents from physical to electronic media; digitization of documents [scanning] are complementary to the opponent’s computer software, recorded in Class 9, insofar as the latter includes specific programs for data digitization. These goods and services have the same purpose. They are of interest to the same consumer circles and could be in competition with each other, as consumers can choose between purchasing a computer program and outsourcing the document scanning service from an external provider. They are similar.

The rest of the contested services in this class have no relevant connections with the opponent’s goods or services. Specifically, computer rental and rental of web servers deal with the provision of temporary access to computer hardware and is quite remote from computer programming, engineering services, laboratory research or design and development of computer components. Likewise, the contested handwriting analysis [graphology]; authenticating works of art; design of interior decor; graphic arts designing; packaging design; dress designing; styling [industrial design]; evaluation of wool (quality -); valuation of standing timber (quality -) are specific technological services which are provided by experts in a given field who are normally not involved in computer programming, engineering, laboratory research, or design and development of computer components. The mere fact that such services may be provided by using some sort of computer software (which is covered by the earlier mark in Class 9) is not sufficient in itself to lead to a finding of similarity, as the natures, purposes and usual origins of these goods and services are clearly different.

Therefore, the contested computer rental; handwriting analysis [graphology]; authenticating works of art; design of interior decor; rental of web servers; graphic arts designing; packaging design; dress designing; styling [industrial design]; evaluation of wool (quality -); valuation of standing timber (quality -) are dissimilar to all of the opponent’s goods and services in Classes 9 and 42.

Contested services in Class 45

The contested services in this class are various safety, rescue, security and enforcement services (for instance security services for the protection of property and individuals, night guards, detective agencies), personal and social services (for instance baby sitting, house sitting, dating services, marriage agencies) and legal services (for instance litigation and dispute resolution, copyright management and licensing of computer software). Such services are provided by professionals or persons operating in narrow niches. The natures and purposes of the contested services are clearly different from those of the opponent’s goods and services .There is no complementarity or interchangeability. The distribution channels do not coincide either. With regard to the contested licensing of computer software vis-à-vis the opponent’s computer software, recorded in Class 9 or computer programming services in Class 42, account must be taken of the fact that the contested legal services are those provided for third parties but not in the course of the commercialisation of a company’s own software. Licensing services are provided by intellectual property lawyers who are hired by IT companies. The mere fact that the goods and services may be used in conjunction is not in itself sufficient for a finding of similarity.

Therefore, it is considered that all of the contested services in Class 45 are dissimilar to all of the opponent’s goods and services in Classes 9 and 42.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the 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. Contrary to what the applicant argues, the opponent’s goods and services are not exclusively intended for a professional public. This is because the earlier mark covers some goods and services, for instance computer software and engineering which are defined so broadly that these categories encompass goods and services for household use, such as ‘apps’ for entertainment and services provided by architecture agencies. Therefore, the applicant’s arguments in that regard must be set aside.

The degree of attention that the relevant public will have when choosing the goods and services at issue will vary from average (in relation to frequent, inexpensive purchases such as when buying entertainment ‘apps’ on an online retail outlet) to high (in relation to rare purchases implying a high involvement on the part of the public, also for expensive and technologically advanced goods and services such as optical apparatus and engineering services).

3. The signs

PINK GREEN WIRELESS
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. In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

The earlier mark comprises the words ‘PINK GREEN WIRELESS’.

The contested sign features the conjoined words ‘GREEN’ and ‘PINK’ depicted in a fairly standard typeface in distinct colours. Specifically, the word ‘GREEN’ is depicted in pink, whilst the word ‘PINK’ is depicted in green. To the left of the verbal elements, a figurative element is placed comprising a white leaf upon a green rectangular background.

Both signs contain the words ‘PINK’ and ‘GREEN’ as readily identifiable components. In the earlier mark, they are represented as two separate words. In the contested sign, these words are graphically separated by the use of the different colours. When encountering the signs at issue, the relevant consumers will perceive these words as names of colours – ‘GREEN’ being the colour of, inter alia, plants and vegetation, and ‘PINK’ referring to a pale reddish tint. On the other hand, it cannot be entirely ruled out that, for a part of the public, the names of the colours may trigger some other associations. In particular, ‘GREEN’ is commonly used, in the course of trade, as a term to refer to something ecological. In relation to some of the goods and/or services at issue which enable their user to act in an environment-friendly way (for instance computer software used for eco-friendly facilities (heating, ventilation) management, tuition in the field of ecology, non-polluting scientific and technological services), the term ‘GREEN’ is devoid of any distinctive character. On the other hand, in relation to the rest of the goods and/or services (for instance online game services) the word ‘GREEN’ enjoys an average degree of distinctiveness. Be that as it may, the juxtaposition of the words ‘PINK GREEN’, or ‘GREENPINK’ is fanciful and distinctive as a whole.

The contested sign’s figurative element depicting a leaf against a green background evokes the concepts of plants and vegetation; it is possible that consumers perceive some extended meanings derived thereof for instance something being environmentally-friendly. Therefore, the distinctiveness of that individual element in relation to some of the contested services that can be directed at preserving the environment and natural resources is weak. On the other hand, in relation to the rest of the services (for instance online game services) the image of the leaf is fanciful and enjoys an average degree of distinctiveness.

With regard to the element ‘WIRELESS’ in the earlier mark, the relevant public will understand it as referring to communication without material contacts. In the context of the relevant goods and services, that term is banal and conveys a descriptive message in terms of the goods being wireless equipment or intended for use in conjunction with wireless devices, and the services being provided or distributed over wireless networks. Therefore, the element ‘WIRELESS’ lacks any distinctive capacity in the earlier mark.

Visually, the signs coincide in the words ‘PINK’ and ‘GREEN’, notwithstanding their slight stylisation in the contested sign as described above. Further, the signs differ inasmuch as the shared words appear in a reversed order, namely ‘PINK GREEN’ in the earlier mark and ‘GREENPINK’ in the contested sign, the additional, yet non-distinctive word ‘WIRELESS’ in the earlier mark and the image of the leaf and the overall colourful graphical representation of the contested sign.

Irrespective of whether the image of the leaf is weak or distinctive to an average degree in relation to the services covered by the contested application, account must be taken of the fact that, 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; decisions of 19/12/2011, R 233/2011‑4 Best Tone (fig.) / BETSTONE (fig.), § 24; 13/12/2011, R 53/2011‑5, Jumbo (fig.) / DEVICE OF AN ELEPHANT (fig.), § 59). Even though the image of the leaf appears in the initial part of the sign, for the present comparison it is more relevant that the signs share the words ‘PINK’ and ‘GREEN’ (despite the differences in their representation and order) than the difference arising from the figurative element in the contested sign. Therefore, the signs are similar to an average degree.

Aurally, the pronunciations of the signs coincide in the sound of the words ‛PINK’ and ‘GREEN’. Admittedly, there is a point of aural difference resulting from the reversed order of these words, as indicated above. However, that is not sufficient for rendering the pronunciations dissimilar. The earlier mark differs in the sound corresponding to the additional, yet non-distinctive word ‘WIRELESS’. The figurative element in the contested sign will not be pronounced. Therefore, the signs are similar to an average degree.

Conceptually, both signs convey the concepts of colours conveyed by the words ‘PINK’ and ‘GREEN’. In addition, a part of the public may perceive the element ‘GREEN’ as meaningful and thus non-distinctive in the context of some of the goods and/or services at issue. The image of the leaf in the contested sign may also have ecological connotations which are weak in relation to some of the applicant’s services. The earlier mark’s element ‘WIRELESS’ refers to a technical feature of the opponent’s goods and services and will not be seen as a badge of trade origin in itself.

A specific feature of the contested sign is that each of the words, ‘GREEN’ and ‘PINK’, is depicted in a colour which matches the other term. That accounts for an element of surprise in the contested sign. However, the use of the mismatching colours in the representation of the words emphasises the fact that the sign as a whole comprises a combination of two concepts, pink and green.

Both signs will be associated with the concepts carried by the juxtaposed words ‘PINK’ and ‘GREEN’, irrespective of their representation or order. That, and the fact that the element ‘WIRELESS’ is non-distinctive in the earlier mark, renders the signs similar to an average degree insofar as the image of the leaf plays a distinctive role in the contested sign for some of the contested services. For the part of the contested services in relation to which the image of the leaf is weak, the conceptual similarity between the signs is high.

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

4. 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 clear 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, despite the presence of the non‑distinctive element, ‘WIRELESS’, and, where applicable, the non-distinctive element ‘GREEN’, as stated above in section c) of this decision.

5. Global assessment, other arguments and conclusion

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). The interdependence principle is crucial to the assessment of likelihood of confusion, as, in the present case, the signs show strong similarities and some of the goods and services are identical or similar to an average degree, whereas some other of the goods and services are only similar to a low degree.

The similarity between the signs results from the words ‘PINK’ and ‘GREEN’. Admittedly, the order in which these elements are represented in each sign differs and the words are depicted in a slightly stylised manner in the contested sign. However, when encountering the signs at issue, the average consumer will mentally register the presence of these words in both of them. Their inverted sequence will be of secondary importance, particularly as there is no conceptual difference arising from the order of the two independent terms.

The additional components, ‘WIRELESS’ in the earlier mark and the image of the leaf in the contested sign, are insufficient in themselves to put a substantial distance between the overall impressions produced by the signs. The degree of distinctiveness of the element ‘GREEN’ has no material effect on the assessment of likelihood of confusion either. This is because the similarity between the signs is embedded in the combination of the elements ‘PINK’ and ‘GREEN’ which is distinctive as a whole and will be retained in consumers’ memory.

Although, the average consumers of the category of products concerned are deemed to be reasonably well-informed and reasonably observant and circumspect, 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 with 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).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods and services covered are from the same or economically linked undertakings. In the present case, consumers may think that the signs under comparison are versions of the ‘PINK GREEN’ (or ‘GREEN PINK’) brand, the contested sign being its graphical representation and the earlier mark denoting a product line for wireless equipment and services.

Therefore, based on the average degree of inherent distinctiveness of the earlier mark and the nature of the additional components, it is considered that the differences between the signs do not counteract the similarities and are not capable of enabling the average consumer, be it the general public or business customers, to safely distinguish between the signs in relation to the goods and services found identical or similar to an average degree.

With regard to the goods and services that are similar to a low degree, taking into account the interdependence principle, it is considered that the striking similarity between the signs which arises from the distinctive combination of the elements ‘PINK’ and ‘GREEN’, regardless of their order, outweighs the remote similarity between those goods and services, even where the consumers’ attentiveness is high.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well-founded on the basis of the opponent’s European Union trade mark registration No 8 449 217. 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 services found to be identical or similar to varying degrees to the goods and services of the earlier trade mark.

The rest of the contested services are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these services cannot be successful.

For the sake of completeness, it is noted that there is no need to continue the examination of the opposition under Article 8(1)(b) EUTMR in relation to the remaining part of the public in the relevant territory, as the comparison of the goods and services does not depend on linguistic factors and the outcome of the opposition would be the same.

The opponent has also based its opposition on European Union trade mark No 9 477 969 for the word mark ‘PINK IS THE NEW GREEN’, invoking the following goods and services:

Class 9: Integrated circuits; namely, metal-oxide-semiconductor (MOS) circuits; multi-chip integrated circuit modules; electric and/or electronic sensors for light intensity, acceleration, compression, pressure, and distance; microsytems, namely, applicant-specific integrated circuits (ASICs); integrated circuits in the nature of applicant specific standard electronic products (ASSPs); memory integrated circuits, namely, static random access memory (SRAM) circuits, dynamic random access memory (DRAM) circuits, and non-volatile static random access memory (NVSRAM) circuits; memory expansion modules; structured semi-conductor discs; telephone transmitters.

Class 42: Design and development of metal-oxide-semiconductor (MOS) circuits, multi-chip integrated circuit modules, electric and/or electronic sensors for light intensity, acceleration, compression, pressure, and distance, microsystems consisting primarily of micro-processors and micro-computers, customized integrated circuits in the nature of applicant-specific integrated circuits (ASICs), integrated circuits in the nature of applicant-specific standard electronic products (ASSPs), memory integrated circuits in the nature of static random access memory (SRAM) circuits, dynamic random access memory (DRAM) circuits, and non-volatile static random access memory (NVSRAM) circuits, memory expansion modules, and structured semi-conductor discs; laboratory research in the field of chemistry and physics; engineering services; scientific research; industrial research in the field of physics, computer programming.

In comparison to EUTM No 8 449 217 that has been assessed above, EUTM No 9 477 969 does not cover computer software, recorded in Class 9, and design of computer software in Class 42. Since this mark covers a narrower scope of goods and services, the outcome cannot be different with respect to services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Alexandra APOSTOLAKIS

Solveiga BIEZA

Ric WASLEY

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 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 of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.