OPPOSITION No B 2 182 486

E-Plus Mobilfunk GmbH, E-Plus-Str. 1, 40472 Düsseldorf, Germany (opponent), represented by Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft MBB, Widenmayerstr. 23, 80538 München, Germany (professional representative)

a g a i n s t

Energija plus d.o.o., Veselova ulica 10, 2000 Maribor, Slovenia (applicant), represented by Jure Marn, Ljubljanska ulica 9, 2000 Maribor, Slovenia (professional representative).

On 11/02/2016, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 182 486 is partially upheld, namely for the following contested services:

Class 35: Office functions; secretarial services (which appears twice); compilation of information into computer databases, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; word processing; document reproduction; systemization of information into computer databases, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; telephone answering for unavailable subscribers; shorthand; photocopying services; typing; arranging subscriptions to telecommunication services for others; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely secretarial services.

Class 36: Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Monetary affairs; Home banking; Banking; Stock exchange quotations; Brokerage; Funds transfer (Electronic -); Charitable fund raising; Analysis (Financial -); Fund investments; Clearing, financial; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Financial information; Financial sponsorship; Financial consultancy, except for facilitating and arranging financing of vehicle fleets; Financial management; Financial evaluation [insurance, banking, real estate], except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Savings bank services; Debit card services; Credit card services; Credit card services; Issuing of travellers' checks [cheques]; Issue of tokens of value; Credit bureaux; Hire-purchase financing, except for leasing of vehicles; Mortgage banking; Exchanging money; Instalment loans; Marine insurance underwriting; Securities brokerage; Loans [financing]; Fire insurance underwriting; Retirement payment services; Provident fund services; Lending against security; Mutual funds; Insurance information, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance consultancy, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance brokerage, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Accident insurance underwriting, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Health insurance underwriting; Life insurance underwriting; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services.

Class 39: Arranging of tours (which appears twice); arranging of cruises; sightseeing [tourism] (which appears twice); booking of seats for travel; escorting of travellers; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely travel agency services.

2. Community trade mark application No 11 051 109 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 Community trade mark application No 11 051 109. The opposition is based on the following earlier rights:

1. Community trade mark registration No 4 609 061 for the figurative mark ;

2. Community trade mark registration No 4 475 232 for the word mark ‘e plus’;

3. Community trade mark registration No 1 132 299 for the figurative mark ;

4. German trade mark registration No 2 051 154 for the word mark ‘e-plus’;

5. German trade mark registration No 39 815 172 for the figurative mark ;

6. German trade mark registration No 30 551 014 for the word mark ‘e plus’;

7. German trade mark registration No 30 551 474 for the figurative mark .

The opponent invoked Article 8(1)(b) and 8(5) CTMR for all the earlier marks.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) CTMR

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 Community trade mark registration No 4 609 061 (1). For completeness, it should be mentioned that the applicant’s request for proof of use of all of the opponent’s trade marks cannot be taken into account for this mark because, at the date of publication of the contested trade mark, it had not been registered for at least five years.

1. The goods and services

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

Class 9: Apparatus for recording, transmission or reproduction of sound or images, in particular subscriber terminals and accessories therefor, namely mains apparatus, mains charging apparatus, accumulators, connecting cables, holding devices and auto-holding devices specially adapted to subscriber terminals, carriers, aerials; data-processing equipment and computers; SIM (Subscriber Identification Module) cards.

Class 35: Telephone services, namely secretarial services.

Class 37: Civil engineering; repair work for buildings, installation and assembly of radio and communications devices, repair and maintenance of electrical engineering products.

Class 38: Telecommunications, in particular mobile radiotelephone services, operation of a telecommunications network, operation of a mobile radiotelephone network, message sending, providing an e-commerce platform in online services, transmission of information of all kinds in online services, providing Internet portals, for others; telecommunications, in particular value-added services, namely establishing a call answering system as a function of a central computer, or of a mailbox, transmission of short messages, call relaying, conferencing.

Class 39: Telephone services, namely travel agency services, included in class 39.

Class 42: Weather reports; civil engineering services; architectural and construction drafting, computer programming, in particular for telecommunications; rental of data processing installations, in particular telecommunications apparatus.

Class 43: Telephone services, namely hotel reservations.

The contested services are the following:

Class 35: Advertising; Business management, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Business administration, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Office functions; Administrative processing of purchase orders, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Secretarial services; Commercial information agencies; Tax preparation; Shop window dressing; Distribution of samples; Economic forecasting; Invoicing; Data search in computer files for others, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Sponsorship search; Compilation of information into computer databases, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Updating of advertising material; Rental of vending machines; Office machines and equipment rental; Opinion polling; Personnel recruitment; Auditing; Accounting; Auctioneering; Modelling for advertising or sales promotion; Direct mail advertising; Publication of publicity texts; Word processing; Payroll preparation; Rental of advertising time on communication media; Rental of advertising space; Publicity material rental; Rental of photocopying machines; On-line advertising on a computer network; Arranging newspaper subscriptions for others; Fashion shows for promotional purposes (Organization of -); Organization of exhibitions for commercial or advertising purposes; Organization of trade fairs for commercial or advertising purposes; Writing of publicity texts; Bill-posting; Commercial or industrial management assistance; Business management assistance, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Commercial administration of the licensing of the goods and services of others; Business appraisals; Business information; Commercial information and advice for consumers [consumer advice shop], in both cases with the exception of vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Business inquiries, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Business research, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Business investigations, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Business management of sports people; Business organization consultancy, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Business management of hotels; Business management of performing artists; Sales promotion for others; Presentation of goods on communication media, for retail purposes; Demonstration of goods; Publicity columns preparation; Production of advertising films; Procurement services for others [purchasing goods and services for other businesses], except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Psychological testing for the selection of personnel; News clipping services; Dissemination of advertising matter; Publicity; Advertising by mail order; Publicity agencies; Radio advertising; Television advertising; Document reproduction; Accounts (Drawing up of statements of -); Relocation services for businesses; Compilation of statistics; Systemization of information into computer databases, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Telephone answering for unavailable subscribers; Shorthand; Public relations; Photocopying services; Price comparison services; Telemarketing services; Layout services for advertising purposes; Outsourcing services [business assistance]; Typing; Efficiency experts; Business consultancy (Professional -), except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Cost price analysis; Management (Advisory services for business -), except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Personnel management consultancy; Business management consultancy, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Business management and organization consultancy, in both cases with the exception of vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; Transcription; Marketing; Marketing studies; Marketing studies; Import-export agencies; File management (Computerized -); Employment agencies; Arranging subscriptions to telecommunication services for others; Import/export agencies; Marketing and business advertising; Brokerage in the purchase and sale of electricity; Business organisation of installations for generation and distribution of energy; Business organisation of power plants, in particular hydroelectric power plants; Secretarial services; Marketing studies; Administrative management of electricity generation installations; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely secretarial services.

Class 36: Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Monetary affairs; Real estate affairs; Debt collection agencies; Real estate agencies; Actuarial services; Home banking; Banking; Stock exchange quotations; Brokerage; Customs brokerage; Stamp appraisal; Jewelry appraisal; Real estate appraisal; Numismatic appraisal; Antique appraisal; Art appraisal; Rental of offices [real estate]; Funds transfer (Electronic -);Deposits of valuables; Charitable fund raising; Factoring; Fiduciary; Analysis (Financial -); Fund investments; Clearing, financial; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Financial information; Financial sponsorship; Financial consultancy, except for facilitating and arranging financing of vehicle fleets; Financial management; Financial evaluation [insurance, banking, real estate], except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Fiscal assessments; Guarantees; Safe deposit services; Savings bank services; Debit card services; Credit card services; Credit card services; Issuing of travellers' checks [cheques]; Issue of tokens of value; Credit bureaux; Business liquidation services, financial; Hire-purchase financing, except for leasing of vehicles; Mortgage banking; Exchanging money; Instalment loans; Valuation of standing timber (Financial -); Evaluation of wool (Financial -); Renting of flats; Organization of collections; Rent collection; Marine insurance underwriting; Securities brokerage; Loans [financing]; Housing agents; Brokerage of carbon credits; Check [cheque] verification; Fire insurance underwriting; Accommodation bureaux [apartments]; Retirement payment services; Provident fund services; Real estate management; Apartment house management; Lending against security; Repair costs evaluation [financial appraisal], except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Mutual funds; Leasing of farms; Leasing of real estate; Pawn brokerage; Insurance information, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance consultancy, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance brokerage, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Accident insurance underwriting, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Health insurance underwriting; Life insurance underwriting; Trading in electrical energy; Electrical energy brokerage; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services.

Class 39: Transport by pipeline; Garage rental; Electricity distribution; Distribution of energy; Water distribution; Delivery of goods; Delivery of goods by mail order; Newspaper delivery; Flower delivery; Message delivery; Refloating of ships; Franking of mail; Storage information; Transportation information; Boat rental; Horse rental; Aircraft rental; Rental of diving suits; Rental of diving bells; Rental of storage containers; Rental of freezers; Coach (Railway -) rental; Launching of satellites for others; Courier services [messages or merchandise]; Freight [shipping of goods]; Boat transport; Shipbrokerage; Stevedoring; Ice-breaking; Freighting; Porterage; Refrigerator rental; Parking place rental; Rental of warehouses; Rental of wheelchairs; Water supplying; Parcel delivery; Packaging of goods; Car parking; Piloting; Underwater salvage; Transporting furniture; Bottling services; Marine transport; Brokerage (Freight -); Transport brokerage; Arranging of tours; Arranging of cruises; Sightseeing [tourism]; Traffic information; Unloading cargo; Barge transport; River transport; Salvaging; Rescue operations [transport]; Ambulance transport; Salvage of ships; Booking of seats for travel; Removal services; Storage of goods; Storage (Physical -) of electronically-stored data or documents; Operating canal locks; Storage; Boat storage; Freight forwarding; Escorting of travellers; Lighterage services; Ferry-boat transport; Tram transport; Transport; Transport and storage of trash; Pleasure boat transport; Hauling; Transportation logistics; Armored-car transport; Towing; Wrapping of goods; Railway transport; Air transport; Distribution of energy; Electricity distribution; Distribution of energy; Mediation in energy supply (distribution); Rental of electricity meters; Car transport; Garage rental; Transport information; Storage information; Refrigerator rental; Parking place rental; Packaging of goods; Brokerage (Freight -); Transport brokerage; Arranging of tours; Sightseeing [tourism]; Salvaging, except for vehicle breakdown assistance; Removal services; Storage; Freight forwarding; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely travel agency services.

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

The term ‘in particular’, used in both the applicant’s and the opponent’s lists of goods and services, indicates that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T‑224/01, Nu‑Tride, EU:T:2003:107).

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

As a preliminary remark, it is to be noted that according to Rule 2(4) CTMIR, the Nice Classification serves purely administrative purposes. Therefore, goods or services may not be regarded as being similar or dissimilar to each other simply on the grounds that they appear in the same or different classes in 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 services in Class 35

The contested secretarial services; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely secretarial services (which appears twice) is considered to be similar to the opponent’s telephone services, namely secretarial services. This is because telephone services, namely secretarial services are understood to mean secretarial services provided over the telephone. Therefore, whilst the applicant has specifically excluded secretarial services provided over the telephone, its remaining secretarial services will be similar as they will cover the same types of secretarial activities, namely typing, maintaining physical and electronic files, dealing with the post, photocopying, emailing clients, ordering stationery, etc. They share a common purpose, will be provided by the same providers, target the same users and can be in competition with one another. The fact that the applicant’s services will not be provided via the telephone whereas the opponent’s will be is insufficient by itself to find these services dissimilar.

For the same reasons the contested services of compilation of information into computer databases, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; word processing; document reproduction; systemization of information into computer databases, except for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation therefor; shorthand; photocopying services; typing; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely secretarial services are also found similar to the opponent’s telephone services, namely secretarial services. A client looking for a provider of typing or any of the other services just mentioned above, may well select a provider of secretarial services provided over the telephone for all the reasons just mentioned.

The contested office functions; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely secretarial services cover services aimed at performing day-to-day operations that are required by a business to achieve its commercial purpose. They mainly cover activities that assist in the working of a commercial enterprise. They include activities typical to secretarial services, such as shorthand and typing, as well as support services, such as the rental of office machines and equipment. However, it is impossible for the Opposition Division to filter secretarial services from the contested broad category. The Opposition Division cannot dissect ex officio the broad category of the applicant’s services. Therefore, the applicant’s service has to be treated as a single, indivisible unit which includes services which are considered similar to the opponent’s telephone services, namely secretarial services.

The contested arranging subscriptions to telecommunication services for others; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely secretarial services is considered to be similar to the opponent’s telecommunications, in particular mobile radiotelephone services in Class 38. This is because the provider of mobile telephone services may provide all services related to provision of said mobile telephone services given that mobile telephony is their area of expertise and they have the greatest knowledge regarding their own telephone services. This is same as manufacturers of certain goods who also provide parts and fittings for those goods, and also installation and maintenance services based on their intimate knowledge of the goods. Consequently, these services are similar as they may come from the same providers, target the same users and available at the same distribution channels. Finally, they are complementary.

The contested telephone answering for unavailable subscribers; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely secretarial services is considered to be similar to the opponent’s telecommunications, in particular value-added services, namely establishing a call answering system as a function of a central computer, or of a mailbox, transmission of short messages, call relaying, conferencing in Class 38 as these services have a similar purpose (provision of telephone answering services), are directed at similar clients (those wish to have a telephone answering services) and are in competition with one another.

The remaining contested services can be summarised as advertising, marketing, publicity, various business services such as management, administration and assistance (but not for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation), specific office functions such as processing purchase orders, renting office machines, etc., auctioneering and rental of vending machines, all of the aforementioned excluding services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services and excluding telephone services, namely secretarial services. These services are dissimilar to the opponent’s goods and services, which can be summarised as various electronic and computer apparatus in Class 9, secretarial services provided over the telephone in Class 35, civil engineering, repair of buildings, installation and assembly of radio and communications devices, repair and maintenance of electrical engineering products in Class 37, telecommunications in Class 38, travel agency services provided over the telephone in Class 39, weather reports, civil engineering services, architectural and construction drafting, computer programming and rental of data processing installations in Class 42 and hotel reservation services provided over the telephone in Class 43.

When comparing the above contested services with the opponent’s goods and services in Classes 9, 35, 37, 38, 39, 42 and 43, the Opposition Division can establish no nexus between the goods and the services. They have different natures and serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with nor necessarily complementary to each other. The fact that the contested services (for example business management) could make use of the earlier right’s goods (for example computers), or that all the earlier goods and services could, for example, feature in advertising, are insufficient reasons on their own to find any degree of similarity.

Contested services in Class 36

The contested services in Class 36 can be summarised as all sorts of services regarding insurance affairs, financial affairs, monetary affairs and real estate affairs, but excluding services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services. All these services have a financial component to their nature and purpose and this is not shared by the nature or the purpose of the opponent’s goods and services, summarised above. Likewise, the providers of these contested services are usually very specific financial entities such as banks, stock market brokers, insurance brokers, estate agents, etc., and are often subject to regulatory oversight. The opponent’s goods and services are not provided by such entities, but rather come from very different manufacturers and providers. These goods and services target different consumers via quite different distribution channels are neither in competition with nor are they complementary to each other. Consequently, the contested services in Class 36 are dissimilar to the opponent’s goods and services.

Contested services in Class 39

The contested arranging of tours (appears twice); arranging of cruises; sightseeing [tourism] (appears twice); booking of seats for travel; escorting of travellers; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services; all aforementioned services excluding telephone services, namely travel agency services are considered to be similar to the opponent’s telephone services, namely travel agency services, included in class 39. This is because telephone services, namely travel agency services are understood to mean travel agency services provided over the telephone. Therefore, whilst the applicant has specifically excluded travel agency services provided over the telephone, the remaining services listed above are all activities carried out by travel agencies, whether by telephone or not. Therefore, they share a common purpose, will be provided by the same providers, target the same users and can be in competition with one another. The fact that the applicant’s services will not be provided via the telephone whereas the opponent’s will be is insufficient by itself to find these services dissimilar.

The remaining contested services can be summarised as services rendered in transporting people or goods from one place to another, services relating to the storing of goods in a warehouse or other building, services related to providing information relating to tariffs, timetables and methods of transport, services relating to the inspection of vehicles or goods before transport and rental of various goods such as horses, wheelchairs, diving bells and diving suits, all of the aforementioned excluding services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services and excluding telephone services, namely travel agency services. These services are dissimilar to the opponent’s goods and services, which have already been summarised above.

When comparing the above contested services with the opponent’s goods and services in Classes 9, 35, 37, 38, 39, 42 and 43, the Opposition Division can establish no nexus between the goods and the services. They have different natures and serve different needs. Furthermore, the method of use of those goods and services is different. They are neither in competition with nor necessarily complementary to each other. The fact that the contested services (for example transportation information) could make use of the earlier right’s services (weather reports in Class 42 for example), or that all the earlier goods will be transported or stored after manufacture, are insufficient reasons on their own to find any degree of similarity.

2. The signs

Earlier trade mark	Contested sign

The relevant territory is the European Union.

The unitary character of the Community trade mark means that an earlier Community trade mark can be relied on in opposition proceedings against any application for registration of a Community 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 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 German-speaking part of the relevant public.

The applicant argues that the contested sign may be seen as a letter ‘S’ and not necessarily as a letter ‘E’. Whilst not excluding the possibility of a part of the public seeing a letter ‘S’ in the contested sign, the Opposition Division is of the opinion that the average consumer will readily see and perceive a letter ‘E’ in the contested sign, and will proceed based on this impression of the average consumer.

Visually, the earlier mark consists of the lowercase letter ‘E’ followed by a dot and the lowercase letters ‘PLUS’, followed by a + symbol in a superscript position. All the elements appear in a standard bold typeface. The contested sign consists of a stylised lowercase letter ‘E’ with a + symbol appearing at its top left-hand corner. The ‘E’ and + are in white on a square black background with rounded corners. Consequently, the signs are similar to the extent that they both feature a lowercase ‘E’ and a + symbol, although the exact placement of these elements differs between the signs. They differ in the dot and ‘PLUS’ letters of the earlier mark and the stylisation of the letter ‘E’ and the background of the contested sign.

Aurally, the pronunciation of the signs coincides in the sound of the letter ‘E’ and the sound of the letters ‘PLUS’ of the earlier mark which will be the same as the vocalised + symbol present identically in both signs. Consequently, using a strict analysis the earlier sign will be pronounced ‘E-PLUS-PLUS’ and the contested signs as ‘PLUS-E’. However, the presence in the earlier mark of a verbal element (‘PLUS’) and a symbol (+) which are aurally identical means that a significant part of the public will not pronounce the symbol. This is because customers when faced with a mix of verbal and figurative elements will usually pronounce the verbal ones. An example from the present case is the fact that the dot present in the earlier mark will most probably never be pronounced by a customer faced with this sign. Furthermore, the Opposition Division is of the opinion that this selective pronunciation will be reinforced in the current case because the verbal element and the symbol have the same concept. Likewise, whilst the contested sign may be pronounced with the + symbol first and then the letter ‘E’, it is likely that a part of the public faced with the contested sign will first pronounce the letter, which is the largest part of the sign and therefore the first part to be discerned, and then move on to the + symbol, which although positioned at the ‘start’ of the sign, plays, due to its smaller size, a secondary role. Hence, the Opposition Division believes a part of the relevant public will pronounce the contested sign as ‘E’ and then the + symbol. Consequently, the signs can be aurally identical for a part of the public, and similar for the remaining public.

Conceptually, neither of the signs has a meaning per se for the public in the relevant territory. However, the + symbol and the verbal element ‘PLUS’ will be understood by the relevant public as ‘advantage, expresses that something, to a certain amount, is increasing’ (definition from Duden Online Wörterbuch, duden.de). The letter ‘E’ is likely to be perceived just as the letter that it represents but will not in itself trigger any specific associations. Consequently, the signs are conceptually similar in that they both refer to the letter ‘E’ and at least one ‘PLUS’/+.

Taking into account the abovementioned visual, aural and conceptual coincidences, the signs under comparison are similar.

3. Distinctive and dominant elements of the signs

In determining the existence of likelihood of confusion, the comparison of the conflicting signs must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components.

The marks have an identical component, namely the + symbol. Furthermore, the earlier mark has the word ‘PLUS’. This symbol and term are not particularly distinctive for a trade mark, as they will convey an indefinite positive message, evoking the idea of ‘advantage, something that is increasing’. Therefore, this symbol and word has a somewhat laudatory connotation and its distinctiveness is deemed to be below average.

The marks under comparison have no elements which could be considered clearly more dominant (visually eye-catching) than other elements.

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.

According to the opponent, the earlier mark has been extensively used and enjoys an enhanced scope of protection for some of the services for which it is protected. However, for reasons of procedural economy, the evidence filed by the opponent to prove this claim does not have to be assessed in the present case (see below in ‘Global assessment’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the allusion to an indefinite positive message, evoking the idea of ‘advantage, something that is increasing’, as stated above in section c) of this decision.

5. 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 services found to be similar are directed at business professionals (the services found similar in Class 35) and at the public at large (the services found similar in Class 39). The degree of attention may vary from average to higher than average.

6. Global assessment, other arguments and conclusion

The contested services are partly similar and partly dissimilar to the opponent’s goods and services. The degree of attention of the relevant public ranges from average to higher than average.

The marks are visually, aurally and conceptually similar because of the elements that they have in common, namely ‘E’ and the + symbol. Additionally, the earlier mark’s other verbal element, ‘PLUS’, is aurally and conceptually the same as the + symbol.

The Opposition Division has found that the earlier mark has at least a normal level of distinctiveness, despite the presence of allusive elements in the mark.

As explained in section b) above, a part of the relevant public will pronounce the signs identically, although another part may pronounce the signs similarly.

The marks differ in the precise location of the shared elements, the dot and the additional verbal element ‘PLUS’ of the earlier right and the stylisation of the letter ‘E’ and the background of the contested sign.

The stylisation of the contested sign’s ‘E’ and + symbol and the fact that they are depicted on a background will be perceived as a common graphical means of bringing the words in question to the public’s attention. Therefore, the relevant public will pay little attention to these features. Likewise the dot of the earlier mark will have little impact given that here it acts as a separator in much the same way as a space or hyphen would. It should be noted that, where a trade mark is composed of verbal and figurative elements, the principle has been established that the word component of the sign usually has a stronger impact on the consumer than the figurative component. This is justified by the fact that consumers will more easily remember the name of the goods and services in question and will refer to them using that name, rather than by describing the figurative elements or stylisation of the trade mark.

Average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (judgment of 22/06/1999, C342/97, ‘Lloyd Schuhfabrik’, paragraph 26). Therefore, the differences in the exact arrangement of the elements may not be remembered accurately.

The applicant refers to previous decisions of the Office to support its arguments (Oppositions No B 148 447 and No B1 031 097 and Board of Appeal Decision R 0766/2002-1). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case law, the legality of decisions is to be assessed purely with reference to the CTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T281/02, Mehr fur Ihr Geld, EU:T:2004:198).

Even though previous decisions of the Office are not binding, their reasoning and outcome should still be duly considered when deciding upon a particular case.

However, the previous cases referred to by the applicant are not relevant to the present proceedings, because in these cases the factors of the distinctive and dominant elements have been found to be different from those in the current case.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the German-speaking part of the public and, therefore, the opposition is partially well founded on the basis of the opponent’s Community trade mark registration No 4 609 061. It follows from the above that the contested trade mark must be rejected for the services found to be similar 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) CTMR, the opposition based on this article and directed at these services cannot be successful.

As stated above in section b), a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Since the opposition is partially successful on the basis of the inherent distinctiveness of the earlier mark, there is no need to assess the enhanced degree of distinctiveness of the opposing mark due to its reputation as claimed by the opponent and in relation to similar services. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

Likewise, there is no need to assess the claimed enhanced degree of distinctiveness of the opposing mark in relation to dissimilar services, as the similarity of goods and services is sine qua non for there to exist likelihood of confusion. The result would be the same even if the earlier mark enjoyed an enhanced degree of distinctiveness.

The opponent has also based its opposition on the following earlier trade marks:

• Community trade mark registration No 4 475 232 for the word mark ‘e plus’ (2);

• Community trade mark registration No 1 132 299 for the figurative mark (3);

• German trade mark registration No 2 051 154 for the word mark ‘e-plus’ (4);

• German trade mark registration No 39 815 172 for the figurative mark (5);

• German trade mark registration No 30 551 014 for the word mark ‘e plus’ (6);

• German trade mark registration No 30 551 474 for the figurative mark (7).

Since these marks cover the same goods and services, and are either identical (No 7) or highly similar to the already compared earlier sign, 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. Likewise there is no need to examine the applicant’s request for proof of use or the claimed enhanced degree of distinctiveness for these earlier rights as the result of such examinations could not lead to a different outcome with respect to those services already found dissimilar.

The Opposition Division will now continue to examine the opposition in relation to the other ground noted by the opponent in the notice of opposition, namely Article 8(5) CTMR.

REPUTATION – ARTICLE 8(5) CTMR

The Opposition Division finds it appropriate to first examine the opposition in relation to earlier Community trade mark registration No 4 609 061 (1), for which the opponent claimed repute in Germany.

According to Article 8(5) CTMR, upon opposition by the proprietor of an earlier trade mark within the meaning of Article 8(2) CTMR, the contested trade mark shall not be registered where it is identical with, or similar to, the earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where, in the case of an earlier Community trade mark, the trade mark has a reputation in the Community and, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) CTMR are only applicable when the following conditions are met.

• The signs must be either identical or similar.

• The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

• Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) CTMR (16/12/2010, T‑345/08, & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested sign. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

1. The signs

The signs have already been compared above under the grounds of Article 8(1)(b) CTMR. Reference is made to those findings, which are equally valid for Article 8(5) CTMR.

2. Reputation of the earlier trade mark

According to the opponent, the earlier Community trade mark registration No 4 609 061 (1) has a reputation in Germany.

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case the contested trade mark was filed on 18/07/2012. Therefore, the opponent was required to prove that the trade mark on which the opposition is based had acquired a reputation in Germany prior to that date. The evidence must also show that the reputation was acquired for the services for which the opponent has claimed reputation, namely:

Class 38: Telecommunications, in particular mobile radiotelephone services, operation of a telecommunications network, operation of a mobile radiotelephone network, message sending, providing an e-commerce platform in online services, transmission of information of all kinds in online services, providing Internet portals, for others; telecommunications, in particular value-added services, namely establishing a call answering system as a function of a central computer, or of a mailbox, transmission of short messages, call relaying, conferencing.

In order to determine the mark’s level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.

On 08/05/2015 the opponent submitted evidence of reputation. On 20/05/2015 the applicant requested that the opponent translate all and any elements not in the language of proceedings. On 25/06/2015 the opponent submitted the translations. The evidence filed was, in particular, the following:

• Annex 2.1: Affidavit of Mr. Stefan Borgschulte, Head of Controlling BtP at the opponent, dated 23/04/2015. It is stated that the opponent is the operator of the Germany’s third largest mobile telecommunications network called E-Plus net and Eplus Service GmbH & Co. KG provides, within the E-Plus net, mobile radiotelephone services to end consumers, and that the numbers of customers was in the millions as were the turnover figures.

• Annex 2.2: Price lists and special conditions valid for contracts as of 15/05/2012. Shows the use of the sign E-Plus along with various descriptive terms (e.g. SMS, SMS Info, speech to speech) for telephone services.

• Annex 2.3: Copies of 33 invoices issued within the period 2008 to 2013. The trade mark appears in colour at the top right hand corner, but also as text next to some of the items listed in the invoice. The addresses are redacted but show the city or town of the customers and the all refer to Germany. The totals range from EUR 10 to EUR 480.

• Annex 2.4: Article from the website handy-deutschland.de dated 06/08/2009 regarding the renewal of a mobile telephone tariff. The trade mark appears in colour at the top right hand corner, but also as ‘E-Plus’ in the text.

• Annex 2.5: Article from the website chip.de dated 06/07/2009 regarding the mobile telephone tariff called E-Plus Time & More 250 Web Edition. The trade mark appears as ‘E-Plus’ in the text.

• Annex 2.6: Article from the website chip.de dated 19/11/2009 regarding the telephone tariff called E-Plus Zehnstation Web Edition. The trade mark appears as ‘E-Plus’ in the text.

• Annex 2.7: A link to a video on Youtube youtube.com dated 01/09/2012 entitled ‘E-Plus Group’ The net development initiative of E-Plus Group.

• Annex 2.8: Printout of the opponent’s website eplus-gruppe.de dated 06/08/2014. It shows customer numbers growing from 9.5 million in 2004 to 25.8 million by Q2 2014 and service revenue growing from EUR 2.1 billion in 2003 to EUR 3.0 billion in 2013.

• Annex 2.9: Screenshot dated 17/06/2012 from the Internet Wayback Machine (web.archive.org) showing the Wikipedia entry for E-Plus, stating that it is a mobile telecommunications operator in Germany with 19 million subscribers and is the third largest in the market.

• Annex 2.10: Ten pages of screenshots of the opponent’s website eplus.de or from the Internet Wayback Machine (web.archive.org) showing the opponent’s website, dated from 2010, 2011 and 2012. They show the figurative trade mark in colour used in relation to mobile telephone services.

• Annex 2.11: Twenty seven pages of internet printouts relating to the E-Plus Group (E-Plus Gruppe) dated from 2012. Some of the evidence is from the opponent’s website, whilst others are from third party German language website. They show either the trade mark or E-Plus Gruppe.

• Annex 2.12: Three page extract from the 2010 Annual report of Dutch KPN, the former parent company of the opponent. It is stated that E-Plus is the third largest mobile telecommunications network operator in Germany and that it has 90%+ coverage of the population for 2.5G networks and 70% coverage for 3G networks.

• Annex 2.13: Article from the online magazine “Handelsblatt” dated 24/01/2012 states that “E-Plus is, with more than 22 million customers (2011) and a turnover of roughly EUR 3.1 million, Germanys’ 3^rd biggest telecommunications operator…”.

• Annex 2.14: Extract of a study entitled “European Telecoms Matrix Q2 2011” from Bank of America Merrill Lynch dated 06/06/2011, which states that in 2010 E-Plus held a 19% market share in German mobile subscriber market (making it the third largest) and that the opponent’s turnover was EUR 3.24 billion.

• Annex 2.15: Summary of the results taken from a study entitled “Market Tracking Table – Germany (Euros, Spot currency Q1 2012)” dated 31/05/2012 states that E-Plus’s market share in relation to the total connections was at 15.8% in 2000 and rose to 19.1% in Q1 2011.

• Annex 8: Ten pages of advertising, in German and showing the trade mark in question but undated.

• Annex 9: Screenshots from the website eplus.de or from the Internet Wayback Machine (web.archive.org) showing the opponent’s website, dated from 2010, 2011 and 2014. They show the opponent’s trade mark in colour used alongside mobile telecommunications services.

• Annex 10: Screenshot dated 22/07/2010 from the Internet Wayback Machine (web.archive.org) showing a page from the website of E-Plus Service GmbH & Co. KG entry for E-Plus.

• Annex 11: Two screenshots, one from 2012 and the other from 2014 showing the website eplus.de. They show the opponent’s trade mark in colour used alongside mobile telecommunications services.

• Annex 12: A print out of the internet archive web.archive.org dated 21/08/2010 with a screenshot of the opponent’s website eplus.de. It shows the opponent’s trade mark in colour used alongside mobile telecommunications tariffs.

• Annex 13: Article from the online magazine “Spiegel online” entitled “E-Plus takes over low-cost supplier Blau” showing a picture of an E-Plus SIM card dated 26/03/2008.

• Annex 14: Two screenshots from the website myvideo.de showing a television advisement entitled “Eplus – little angel commercial” uploaded on 12/03/2005.

• Annex 15: Article from faz.net dated 11/06/2012 entitled “Rumours about merger – E-Plus and O2 attract the views”.

• Annex 16: Article from fde.engadet.com dated 03/06/2012 entitled “KPN and Telefonica are thinking about a merger of O2 and E-Plus”.

• Annex 17: Article from telegeography.com dated 26/10/2012 entitled “Telefonica eyes German network sharing deal” and makes reference to E-Plus in the text.

• Annex 18: Article from fr-online.de dated 03/10/2013 entitled “Shareholders approve merger between O2 and E-Plus” and shows a picture of an E-Plus SIM card.

• Annex 19: Article from zeit.de dated 26/08/2013 entitled “E-Plus - major shareholder approves sale to O2”.

• Annex 20 Article from boerse.ard.de dated 02/10/2013 entitled “Merger of E-Plus and O2, Shareholders opened the track”.

• Annex 21: Article from tagesspiegel.de dated 06/08/2013 entitled “Strict conditions for merger betweenO2 and E-Plus”.

• Annex 22: Screenshots from the website eplus.de dated 08/2010 and 08/2011. They show the opponent’s trade mark in colour used alongside mobile telecommunications services.

• Annex 23: Screenshot of a picture taken on 15/04/2008 in Düsseldorf showing a car bearing the trade mark in white lettering.

• Annex 24: Screenshot from the website flickr.com showing a photograph taken on 02/03/2007 which shows a promotional campaign in which the trade mark in question (again in white lettering) appears on a parasol.

• Annex 25: A photograph dated 05/09/2010 of a shop front showing the trade mark in green. The opponent claims there are more than 800 E-Plus shops all over Germany.

• Annex 26: Screenshot from the website flickr.com showing a photograph taken on 10/03/2005 which shows a large version of the trade mark attached to the exhibition building at the 2005 Hannover cebit trade fair.

• Annex 27: Undated screenshot from the opponent’s website eplus-gruppe.de showing the use of the sign “E-Plus Gruppe”.

• Annex 28: A printout of the About us section of the website eplus-gruppe.de, dated 01/10/2012.

• Annex 29: A printout of the opponent’s profile from the social networking site xing.com dated 01/10/2012 showing the sign “E-Plus Gruppe” stating that “E-Plus Group is the contender in the German market for mobile telecommunication services, more than 23.1 million customers phone, send messages and surf the Internet within the net of the trademark group.”

• Annex 30: Copy of a press release issued by the opponent showing the sign “E-Plus Gruppe” dated 22/05/2012 entitled “Via all channels: new mobile telecommunications initiated of E-Plus Group which is shops and retail.”

• Annex 31: same as Annex 2.12.

• Annex 32: Printout from the opponent’s website providing an overview of the number and location of the E-Plus shops in Germany.

• Annex 33: Printout from the opponent’s website explaining the current situation regarding the division of services between services offered under the earlier right and other rights such as “BASE”, “simyo”, etc..

• Annex 34: Article from the online magazine “Handelsblatt” dated 24/01/2012 which states that “E-Plus is the third largest mobile telecommunications provider in Germany with more than 22 million customers (2011) and a turnover of around 3.1 billion in Euro.”

• Annex 35: Screenshot dated 22/06/2012 from the Internet Wayback Machine (web.archive.org) showing the Wikipedia entry for E-Plus which states that E-Plus had 19 million subscribers in June 2012.

• Annex 36: Screenshot dated 12/05/2013 from the Internet Wayback Machine (web.archive.org) showing information from the opponent’s website stating that in the first quarter of 2013 E-Plus had a service revenue from mobile telecommunications of EUR 714 million, 23.9 million subscribers and approximately 4000 full time employees.

• Annex 37: Copy of District Court of Hamburg judgement 29/05/2006 Ref. 406 O 318/05) attesting to enhanced level of distinctiveness of the trade mark .

• Annex 38: Copy of Opposition Division decision in case B 612 426 dated 27/07/2005 attesting to enhanced level of distinctiveness of the trade mark .

• Annex 39: An extract from an independent market survey of the research company “RSG Marketing Research” in German without translation.

On the basis of the above the Opposition Division concludes that the earlier trade mark has a reputation in Germany for some of the services for which the opponent has claimed reputation, namely telecommunications, namely mobile radiotelephone services, operation of a mobile radiotelephone network.

It is clear from the evidence that the earlier trade mark has been subject to long-standing and intensive use and is generally known in the relevant market, where it enjoys a consolidated position among the leading brands, as has been attested by diverse independent sources. The turnover figures, market share and brand awareness shown by the evidence and the various references in the press to its success all unequivocally show that the mark enjoys a high degree of recognition among the relevant public.

Most of the evidence shows the sign used, albeit sometimes in colour, for operating a mobile telephone network. Consequently, whilst the opponent claimed a greater scope of services, a reputation has only been shown in relation to the following services: telecommunications, namely mobile radiotelephone services, operation of a mobile radiotelephone network.

The evidence which is filed in German mostly has partial translations or is reasonably self-evident (or includes images). The Opposition Division feels that most of the evidence is, therefore, acceptable as far as being in the language of proceedings is concerned. Three exceptions to this are the evidence filed in Annexes 37, 38 and 39 which have only been filed in German. These have not been taken into account.

The applicant contests the evidence of use filed by the opponent on the grounds that it does not originate from the opponent itself but from another company. According to Article 15(2) CTMR, use of the Community trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor. Although this provision covers CTMs, it can be applied by analogy to earlier marks registered in Member States. The fact that the opponent submitted evidence of use of its marks by a third party implicitly shows that it consented to this use (judgment of 08/07/2004, T203/02, ‘VITAFRUIT’). Consequently, since it can be presumed that the evidence filed by the opponent is an implicit indication that use has been made with its consent, the applicant’s claim is unfounded. To this extent, and in accordance with Article 15(2) CTMR, the Opposition Division considers that the use made by those other companies was made with the opponent’s consent and thus is equivalent to use made by the opponent.

3. The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs are similar. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) CTMR but has been confirmed in the judgments of 23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

As has been seen above the signs are similar, even to the degree that for those services found similar there is a likelihood of confusion under Article 8(1)(b) CTMR. Likewise, the earlier mark has a strong reputation in mobile telecommunications. This is a fast moving industry offering services to the general public as well as to specialists, and the percentage of the public using such services is very high.

However, the establishment of such a link, while triggered by similarity (or identity) between the signs, requires that the relevant sections of the public for each of the goods and services covered by the trade marks in dispute are the same or overlap to some extent.

According to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51 and 52.)

The contested services can be summarised as advertising, marketing, publicity, various business services such as management, administration and assistance (but not for vehicle dealership services, vehicle fleet management services, vehicle rental and leasing and reservation), specific office functions such as processing purchase orders, renting office machines, etc., auctioneering and rental of vending machines, all of the aforementioned excluding services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services and excluding telephone services, namely secretarial services in Class 35, insurance affairs, financial affairs, monetary affairs and real estate affairs, but excluding services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services in Class 36 and transporting people or goods from one place to another, services relating to the storing of goods in a warehouse or other building, services related to providing information relating to tariffs, timetables and methods of transport, services relating to the inspection of vehicles or goods before transport and rental of various goods such as horses, wheelchairs, diving bells and diving suits, all of the aforementioned excluding services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services and excluding telephone services, namely travel agency services in Class 39.

Some of these services, namely part of those services in Class 36, are services which are also offered to the general public and both are consumer facing service areas. Moreover, some financial services can now be carried out using mobile telephones, and online banking and smartphone payment systems are already realities. This trend is likely to go further due to ongoing liberalisation of financial markets allowing a range of new players to offer such services. Today, in parts of the relevant territory supermarkets offer bank accounts, loans, insurance and other financial services. Therefore, the Opposition Division feels that there is an overlap between the public of the contested services in Class 36 and the opponent’s reputed services in Class 38. Therefore, the Opposition Division finds that there is an overlap between the public of the following contested services in Class 36:

Class 36: Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Monetary affairs; Home banking; Banking; Stock exchange quotations; Brokerage; Funds transfer (Electronic -); Charitable fund raising; Analysis (Financial -); Fund investments; Clearing, financial; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Financial information; Financial sponsorship; Financial consultancy, except for facilitating and arranging financing of vehicle fleets; Financial management; Financial evaluation [insurance, banking, real estate], except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Savings bank services; Debit card services; Credit card services; Credit card services; Issuing of travellers' checks [cheques]; Issue of tokens of value; Credit bureaux; Hire-purchase financing, except for leasing of vehicles; Mortgage banking; Exchanging money; Instalment loans; Marine insurance underwriting; Securities brokerage; Loans [financing]; Fire insurance underwriting; Retirement payment services; Provident fund services; Lending against security; Mutual funds; Insurance information, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance consultancy, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance brokerage, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Accident insurance underwriting, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Health insurance underwriting; Life insurance underwriting; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services.

Furthermore, given the degree of similarity between the signs, including the similar structure of the marks, the concepts engendered (albeit vague) and the high level of recognition of the earlier mark between the signs and the proximity of the services in Classes 36 and 38, the public will ‘establish a link’ between the signs in relation to part of the services in conflict. Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) CTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

However, for the remaining services, namely the remaining services in Classes 35, 36 and 39, there is no overlap between the relevant sections of the public for the trade marks in dispute. Each trade mark targets a different type of public. While the contested services are aimed at business professionals aiming to increase market share through advertising or more efficient organisation and management, or real estate services, or specialised valuation services or transportation services, the earlier trade mark was found to have a reputation among the general public for mobile telecommunications. Given that the public for these services of the contested trade mark is completely distinct from the relevant section of the public among which the earlier trade mark enjoys a reputation, no association will be made between the signs.

4. Risk of injury

Use of the contested mark will fall under Article 8(5) CTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) CTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims the following:

• Use of the contested application will inevitably result in an economic benefit for the applicant without due cause since the application mark takes unfair advantage of the earlier mark’s distinctiveness and repute in Germany.

• There would be an image transfer resulting in an unjustified economic benefit for the applicant, because it does not have to make marketing investments.

• Due to the similarity between the marks a t issue the contested mark appears to be a derivative of the widely known opposition mark. In particular it is highly likely that the proprietor of the contested mark will create another picture of his trademark and pursue another marketing strategy than the opponent. This will cause damage through erosion of the reputation of the opposition mark.

• Given the degree of similarity between the signs it is obvious that the opponent mark’s ability to identify the opponent’s services will be weakened by the use of the contested sign.

In other words, the opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade mark, and be detrimental to the distinctive character and repute of the earlier trade mark.

Before examining the opponent’s claim, it is appropriate to recall that the opposition is directed against the following services which it has been found above that the public will ‘establish a link’ between the signs:

Class 36: Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Monetary affairs; Home banking; Banking; Stock exchange quotations; Brokerage; Funds transfer (Electronic -); Charitable fund raising; Analysis (Financial -); Fund investments; Clearing, financial; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Financial information; Financial sponsorship; Financial consultancy, except for facilitating and arranging financing of vehicle fleets; Financial management; Financial evaluation [insurance, banking, real estate], except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Savings bank services; Debit card services; Credit card services; Credit card services; Issuing of travellers' checks [cheques]; Issue of tokens of value; Credit bureaux; Hire-purchase financing, except for leasing of vehicles; Mortgage banking; Exchanging money; Instalment loans; Marine insurance underwriting; Securities brokerage; Loans [financing]; Fire insurance underwriting; Retirement payment services; Provident fund services; Lending against security; Mutual funds; Insurance information, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance consultancy, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance brokerage, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Accident insurance underwriting, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Health insurance underwriting; Life insurance underwriting; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services.

As seen above, the earlier trade mark was found to have a reputation for:

Class 38: Telecommunications, namely mobile radiotelephone services, operation of a mobile radiotelephone network.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) CTMR covers cases where there is clear exploitation and ‘free‑riding on the coat‑tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

• Use of the contested application will inevitably result in an economic benefit for the applicant without due cause since the application mark takes unfair advantage of the earlier mark’s distinctiveness and repute in Germany.

• There would be an image transfer resulting in an unjustified economic benefit for the applicant, because it does not have to make marketing investments.

In determining the likelihood that unfair advantage will occur, there are several factors to consider. Those factors include the degree of similarity between the conflicting marks; the nature of the goods and services for which these marks are registered, including the degree of closeness or dissimilarity between those goods and services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character; and the existence of the likelihood of confusion (judgment of 27/11/2008, C252/07, ‘Intel Corporation’, paragraph 42).

Taking into account the strong reputation of the earlier mark in Germany, the Opposition Division considers that there is sufficient similarity between the signs for the consumer to form an association between them in respect of the services in Class 36 which could be directed at overlapping sections of the public and have been listed above.

As claimed by the opponent, the use of the contested mark by the applicant will take unfair advantage of the opponent’s investment in its trade mark and the earlier mark’s reputation. The opponent has invested money in developing and building the reputation of its earlier mark as evidenced by having achieved a close to 20% market share and it is known by a large proportion of the public in Germany, and the applicant would benefit from the attraction and prestige of the earlier trade mark without expenditure.

On the basis of the above, the Opposition Division concludes that the contested trade mark will take unfair advantage of the distinctive character or the repute of the earlier trade mark.

Other forms of encroachment upon reputation

The opponent also argues that use of the contested trade mark would be detrimental to the repute of the earlier trade mark.

As seen above, a link and encroachment upon reputation is an essential condition for Article 8(5) CTMR to apply. Encroachment may take three different forms. For an opposition to be well founded in this respect, it is sufficient if only one of these forms is found to occur. In the present case, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade mark for those services which are linked. It follows that there is no need to examine whether other forms also apply as the remaining services do not have sufficient link as explained above.

Conclusion

Considering all the above, the opposition is partially well founded under Article 8(5) CTMR insofar as it is directed against the following services:

Class 36: Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Monetary affairs; Home banking; Banking; Stock exchange quotations; Brokerage; Funds transfer (Electronic -); Charitable fund raising; Analysis (Financial -); Fund investments; Clearing, financial; Financial affairs, except for facilitating and arranging financing of vehicle fleets; Financial information; Financial sponsorship; Financial consultancy, except for facilitating and arranging financing of vehicle fleets; Financial management; Financial evaluation [insurance, banking, real estate], except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Savings bank services; Debit card services; Credit card services; Credit card services; Issuing of travellers' checks [cheques]; Issue of tokens of value; Credit bureaux; Hire-purchase financing, except for leasing of vehicles; Mortgage banking; Exchanging money; Instalment loans; Marine insurance underwriting; Securities brokerage; Loans [financing]; Fire insurance underwriting; Retirement payment services; Provident fund services; Lending against security; Mutual funds; Insurance information, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance consultancy, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Insurance brokerage, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Accident insurance underwriting, except for vehicle fleet management, namely insurance agency services in the fields of liability, collision, and comprehensive insurance of vehicles for others; Health insurance underwriting; Life insurance underwriting; all of the aforementioned excludes services related to telephone transmission services, internet transmission services, machine to machine transmission services and television transmission services.

The opposition is not successful insofar as the remaining services are concerned.

The opponent has also based its opposition on the following earlier trade marks:

• Community trade mark registration No 4 475 232 for the word mark ‘e plus’ (2);

• Community trade mark registration No 1 132 299 for the figurative mark (3);

• German trade mark registration No 2 051 154 for the word mark ‘e-plus’ (4);

• German trade mark registration No 39 815 172 for the figurative mark (5);

• German trade mark registration No 30 551 014 for the word mark ‘e plus’ (6);

• German trade mark registration No 30 551 474 for the figurative mark (7).

Since these marks claim a reputation for the same services and the same territory as has just been compared and are either identical or highly similar to the already compared earlier sign, the outcome cannot be different with respect to services for which the opposition has already been rejected.

COSTS

According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) CTMR, 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

Gailė SAKALAITĖ

Ric WASLEY

Solveiga BIEZA

According to Article 59 CTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 CTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. 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 800 has been paid.