DECISION

of the Fifth Board of Appeal

of 5 July 2016

In Case R 523/2015-5

Dulces y Conservas HELIOS, S.A.
Ctra. Salamanca N°44 47195 Arroyo de la Encomienda (Valladolid) España	Opponent / Appellant

represented by BALDER IP LAW, S.L., Paseo de la Castellana 93, 28046 Madrid, España

v

Paweł Kubiak
ul. Swojska 9/3 03-887 Warszawa Polonia	Applicant / Respondent

represented by Kancelaria Prawno-Patentowa Anna Bełz, Północna 6/24, 20-064 Lublin, Polonia

APPEAL relating to Opposition Proceedings No B 2 312 166 (European Union trade mark application No 11 981 611)

The Fifth Board of Appeal

composed of G. Humphreys (Chairperson and Rapporteur), A. Szanyi Felkl (Member) and A. Pohlmann (Member)

Registrar: H. Dijkema

gives the following

Decision

Summary of the facts

1. By an application filed on 14 August 2013, Paweł Kubiak (‘the applicant’) sought to register the figurative mark

for the following list of goods and services:

Class 30 - Tea, coffee, dietetic foods, herbal teas; slimming teas; fruit teas; coffee and tea-based beverages; iced tea; pastry and confectionery, cakes, biscuits, pastries; spices;

Class 32 - Beers, mineral waters, non-aerated and aerated waters, table waters, soda waters; fruit juices, vegetable juices, fruit and vegetable juices, fruit nectars; fruit-flavoured beverages and fruit smoothies, isotonic beverages, energy beverages, non-alcoholic beverages; preparations for making non-alcoholic beverages, syrups, extracts and essences, other preparations for making non-alcoholic beverages;

Class 35 - Wholesaling and retailing of goods, including cosmetics; washing preparations; cosmetics for care and beautification of the skin, skin care preparations, sanitary wipes, tissues impregnated with cosmetic lotions, household chemicals, washing powders, cleaning, scouring and laundry preparations, detergents; tea, coffee, dietetic foods, pastry and confectionery, cakes, biscuits; beers, mineral waters, non-aerated and aerated waters, non-alcoholic beverages, fruit juices, vegetable juices, syrups, essences, extracts and other preparations for making non-alcoholic beverages, isotonic beverages, energy beverages.

2. The application was published on 26 November 2013.

3. On 12 February 2014 Dulces y Conservas HELIOS, S.A. (the ‘opponent’) filed a notice of opposition against the above mentioned application.

4. The opponent relied, inter alia, on the earlier European Union trade mark registration No 2 933 372 of the word mark

HELIOS

filed on 14 November 2002 and registered on 14 December 2004 for the following goods:

Class 29 - Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, eggs, milk and milk products, edible oils and fats, broth and soups, preserves, crystallised fruits, frozen fruits, preserved fruits, vegetables, vegetable salads, fruit salads, cooked fruits, fruit preserved in alcohol, fruit jellies, fruit pulp, fruit chips, gelatine for food, preserved vegetables, gazpacho, gherkins, pickles, tomato purée, tomato juice for cooking, prepared meals made from meat and/or fish;

Class 30 - Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice, capers, pasta, salad dressings, coffee-based beverages, tea-based beverages, cocoa-based beverages, chocolate-based beverages, biscuits, sweetmeats (candy), meat gravies, chocolate, condiments, natural sweeteners, confectionery, infusions, not medicinal, ketchup (sauce), mayonnaise, marzipan, pizzas, tomato sauce, sandwiches, prepared meals, flour predominating;

Class 32 - Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages, non-alcoholic fruit extracts, isotonic beverages, essences for making beverages, non-alcoholic fruit drinks, fruit juices, orgeat, sherbets (beverages).

5. The opponent argued that there was a likelihood of confusion between the conflicting marks within the meaning of Article 8(1)(b) EUTMR. It also claimed that both earlier marks enjoyed reputation in Spain in relation to certain goods in Class 29 and 30 (notably jellies, jams, preserved fruit, honey, ketchup and tomato sauce) and the use of the younger mark could take unfair advantage of, or tarnish the reputation of the earlier mark within the meaning of Article 8(5) EUTMR. The opponent filed the following evidence of reputation:

• Copies of three television advertisements broadcast in Spain and relating to a diet jam, a jam containing honey, and a tomato sauce;

• Data relating to air times (February-April 2014) of these advertisements on various television stations;

• Invoices dated between January 2013 and March 2014 showing sale of the opponent’s products (mainly jams, preserved fruits, honey and tomato sauce) to major supermarkets in Spain;

• Copies of advertisements published in Spanish magazines such as HOLA, NATIONAL GEOGRAPHIC (one advertisement is dated January 2013 and the remaining ones are from October, November and December 2013).

6. By decision of 28 January 2015, the Opposition Division partially allowed the opposition and rejected the contested application for the contested good in Class 30 and 32. The opposition was rejected for the contested services in Class 35. The Opposition Division reasoned as follows:

• The contested goods in Classes 30 and 32 are identical to the goods covered by the earlier mark. As regards the contested services in Class 35, the Opposition Division notes that, in accordance with the Communication of the President of the Office of 31 October 2005 concerning the registration of European Union trade marks for retail services, retail services in general (i.e. not limited in the specification to the sale of particular goods) are not similar to any goods that can be sold at retail. Therefore, and taking into account that the interpretation of the word ‘including’ as only followed by a non-exhaustive list of examples, the contested services in Class 35 are considered dissimilar to the goods covered by the earlier mark;

• The relevant territory is the European Union;

• The contested mark is a figurative mark, consisting of the word HELIX, written in a bold, slightly fancy italic typeface, reflected in grey on the bottom and on the top of the word two spots, one in red and another in orange. The earlier mark is a word mark HELIOS. Visually, the signs are similar to the extent they coincide in the letters ‘HELI’ and they differ in the last letters as well as in the figurative elements. Aurally, the marks coincide in the sound of letters H-E-L-I and to that extent they are similar. The pronunciation of ‘X’ and ‘S’ is also similar. Conceptually, a part of the public in the relevant territory (for example the English-speaking public) can perceive the earlier mark ‘HELIOS’ as meaning ‘the god of the sun, who drove his chariot daily across the sky’ and the contested sign as ‘curve that lies on a cylinder or cone, at a constant angle to the line segments making up the surface; spiral’. Since the signs will be associated with a dissimilar meaning, the signs are not conceptually similar for this part of the public. For another part of the public in the relevant territory, for example the Spanish-speaking public, neither of the signs has a meaning. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs. Overall, the marks under comparison are similar;

• The opponent claimed that the earlier mark has been extensively used and enjoys an enhanced scope of protection. However, for reasons of procedural economy, the claim does not have to be assessed in the present case. The assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se;

• The goods at issue are aimed at the public at large. The level of attention of the relevant public varies from average to below average regarding cheap daily consumption goods;

• Considering that the marks have identical beginning and visually differ in only two letters in the end, the different number of syllables and the letter ‘X’ at the end are not sufficient to differentiate the marks. There is a likelihood of confusion with regard to the identical goods;

• There is no need to examine the opposition with respect to the other earlier mark as it is less similar to the contested mark and covers the same or narrower scope of goods so the outcome cannot be different;

• As regards the ground of opposition based on Article 8(5) EUTMR, for reasons of procedural economy, the Opposition Division assumes that the earlier mark enjoys reputation. However, the consumers confronted with a supermarket bearing the mark ‘HELIX’ would not establish a link between this mark and the opponent’s goods under the name ‘HELIOS’, even assuming their reputation. The contested sign has an additional letter ‘X’ at the end which is visually eye-catching and rather unusual while the earlier mark contains two spots which are not shared by the earlier mark. It has to be also noted that the reputation was claimed for some goods only (notably jams, conserved fruits or vegetables and honey, ketchup, tomato sauce). This is a very small part of goods that can be retailed so it is very unlikely that the relevant consumer would make a connection between them unless the marks were identical or similar to a high degree. This would rather be the case if the opponent claimed reputation for a very large variety of goods in different fields. Finally, in relation to retail services, it could be the case that the name of the supermarket itself appears on a house product. However, it is very unlikely that a similar mark would be used for goods. Therefore, considering the differences between the marks and the commercial practice in the retail sector, there is no link between the remaining contested services and the goods for which the opponent claimed reputation. Concluding that the distinctive character of the earlier mark is likely to be diminished through the use of a sign such as the contested one, would be to empower the earlier mark with more than even a very substantial reputation;

• Reputation is a requirement for succeeding in an opposition based on Article 8(5) EUTMR, but it is not enough on its own. Even the most famous of brands must submit to the additional requirement that the marks in question be sufficiently similar that consumers are likely to make a connection between the younger mark and the older, reputed mark. Owing to the differences between the marks on the visual and aural levels and the huge differences in usage and provision between the goods and services in dispute and the goods for which reputation is assumed, the Opposition Division is not persuaded that consumers will make the necessary connection in this case, which is essential for the application of Article 8(5) EUTMR and for unfair advantage to be taken of the distinctive character or repute of the earlier mark;

• The opponent also refers to some previous decisions of the Office acknowledging that ‘HELIOS’ enjoys a reputation for jams and jellies in Spain. The Opposition Division does not need to enter into these decisions as it has assumed that the earlier marks have a reputation for all the goods claimed. The opponent also refers to some previous decisions of the Office acknowledging that ‘HELIOS’ enjoys a reputation for jams and jellies in Spain. The Opposition Division does not need to enter into these decisions as it has assumed that the earlier marks have a reputation for all the goods claimed. Taking into account and weighing up all the relevant factors of the case at hand, the Opposition Division concludes that it is unlikely that the relevant public will make a mental connection between the signs in dispute, that is to say establish a ‘link’ between them. Therefore, the opposition is not well founded under Article 8(5) EUTMR and must be rejected for the remaining services, namely those in Class 35: wholesaling and retailing of goods, including cosmetics; washing preparations; cosmetics for care and beautification of the skin, skin care preparations, sanitary wipes, tissues impregnated with cosmetic lotions, household chemicals, washing powders, cleaning, scouring and laundry preparations, detergents; tea, coffee, dietetic foods, pastry and confectionery, cakes, biscuits; beers, mineral waters, non-aerated and aerated waters, non-alcoholic beverages, fruit juices, vegetable juices, syrups, essences, extracts and other preparations for making non-alcoholic beverages, isotonic beverages, energy beverages. The opponent has also claimed reputation for the remaining earlier trade mark, namely Spanish trade mark registration No 3 012 548 for the figurative mark . However, since Article 8(5) EUTMR fails for the earlier European Union trade mark registration No 2 933 372 for the word mark ‘HELIOS’, it cannot apply to the other earlier trade mark of the opponent, as it is assumed to have a reputation for the same or a narrower scope of the goods as the ones examined above. Furthermore, the opponent states also in its arguments that it has demonstrated that the use of the sign ‘HELIX (FIGURATIVE)’, for some of the contested services would be detrimental to the reputation of ‘HELIOS’ and that for some of the other contested services, the use of the mark would take unfair advantage of the distinctive character or the repute of the earlier mark. However, it is not necessary to enter into the encroachment upon reputation, as no link between the marks will be established. Given that one of the necessary requirements of Article 8(5) EUTMR is not met, the opposition must be rejected as unfounded insofar as this ground is concerned.

7. On 11 March 2015 the opponent filed a notice of appeal against the contested decision, and on 8 May 2015 submitted the statement of grounds.

8. The appeal was forwarded to the Opposition Division for revision pursuant to Article 62 EUTMR and on 2 June 2015 it was remitted to the Boards of Appeal.

9. On 31 July 2015 the applicant submitted its observations in reply to the appeal.

10. By a letter of 6 April 2016, the Board requested the applicant to limit the list of goods and services claimed by specifying the goods to which the retail services relate.

11. By a letter of 28 April 2016, the applicant modified its list of goods and services in Class 35 to read as follows:

Class 35 – Service in wholesale and retail sale of goods, namely: food products, beverages and food; agricultural, gardening and forestry; beauty products; cleaning agents, detergents and toiletries; pharmaceutical products; paper and office supplies; travel accessories; saddlery, bags, purses, belts; building materials of metal and not metal; furniture, mirrors, frames; small hand tools and utensils for household and kitchen, toiletries; glassware, porcelain articles; textiles and textile goods; clothing, footwear, headgear; games and toys, gymnastic and sporting articles, decorations for Christmas trees; electric and electronic products; tobacco, smoker’s articles, matches.

Submissions and arguments of the parties

12. The opponent requests the Board to annul the contested decision and to allow the opposition in its entirety, also in relation to Class 35. Its arguments can be summarised as follows:

• Following the Praktiker judgment (07/07/2005, C‑418/02, Praktiker, EU:C:2005:425), the registration of a trade mark for ‘retail services’ without specifying the retail goods is no longer acceptable. Therefore, the Opposition Division erred in its assessment that, by using the term ‘including’, the applicant covered the retail services in general. The applicant’s list of goods should be interpreted as including retail of cosmetics; washing preparations; cosmetics for care and beautification of the skin, skin care preparations, sanitary wipes, tissues impregnated with cosmetic lotions, household chemicals, washing powders, cleaning, scouring and laundry preparations, detergents; tea, coffee, dietetic foods, pastry and confectionery, cakes, biscuits; beers, mineral waters, non-aerated and aerated waters, non-alcoholic beverages, fruit juices, vegetable juices, syrups, essences, extracts and other preparations for making non-alcoholic beverages, isotonic beverages, energy beverages. As a consequence, there is similarity between the opponent’s goods and ‘wholesale and retail of tea, coffee, dietetic foods, pastry and confectionery, cakes, biscuits; beers, mineral waters, non-aerated and aerated waters, non-alcoholic beverages, fruit juices, vegetable juices, syrups, essences, extracts and other preparations for making non-alcoholic beverages, isotonic beverages, energy beverages’ and there is a likelihood of confusion with respect to these services. It is even more so considering the high distinctive character of the earlier mark by virtue of use;

• Considering the reputation of that the earlier mark enjoys in Spain in relation to all the goods in Classes 29 and 30, a link can be established between the earlier mark for these goods and the applicant’s service of ‘wholesaling and retailing of cosmetics, washing preparations, cosmetic for care and beautification of the skin, skin care preparations, sanitary wipes, tissues impregnated with the cosmetic lotion’. These goods are aimed at the same consumer and can be distributed by the same channels – supermarkets;

• Finally, as regards the use of the contested mark for ‘wholesaling and retailing of household chemicals, washing powders, cleaning, scouring and laundry preparations, detergents’, it can be detrimental to the reputation of the earlier mark. The earlier mark evokes positive image as branded products are healthy and tasty and this image is incompatible with the retail of household chemicals and goods for cleaning purpose.

13. The applicant requests the Board to dismiss the appeal. Its argument can be summarised as follows:

• The applicant’s services in Class 35 are dissimilar to the opponent’s goods. Also, the marks at issue are only similar to a very low degree. The Opposition Division’s interpretation of the applicant’s list of goods and service was in accordance with Communication of the President of the Office of 31 October 2005;

• The signs, despite a low degree of visual and aural similarity, are dissimilar conceptually. ‘Helios’ has a recognisable meaning – it refers to the god of the sun (often found in the literature). Most people, including Spanish speakers, will come across this name at school while studying Greek mythology. The term ‘HELIX’ sounds like a Spanish word ‘HELICE’. Overall, the clear meaning of the earlier sign, in addition to the figurative elements of the contested sign, exclude any likelihood of confusion;

• The retail services have an entirely different nature to the goods, and serve different needs;

• The opponent claimed recognition for goods in Class 30. This recognition seems doubtful considering numerous trade marks containing the word ‘HELIOS’ registered for goods in Classes 29 and 30. In any case, even if reputation is shown for jams and jellies, it cannot be extended to other goods and to services relating to these goods;

• The earlier mark cannot be deemed to enjoy a higher degree of distinctiveness. As mentioned above, many trade marks containing the word ‘HELIOS’ are registered in Class 30;

• As correctly established by the Opposition Division, no link would be established between the marks and Article 8(5) EUTMR does not apply in this case.

Reasons

14. The appeal complies with Articles 58, 59 and 60 EUTMR and Rule 48 CTMIR. It is, therefore, admissible.

Scope of appeal

15. The Board notes that the appeal concerns only the services in Class 35. The rejection of the contested application in relation to goods in Classes 30 and 32 is, therefore, final.

Limitation of the applicant’s list of goods and services in Class 35

16. The applicant’s specification as listed in paragraph 1 above was considered by the Board to be too vague and, therefore, contrary to Rule 2 CTMIR (currently also reflected in Article 28(2) EUTMR after the amendment which entered into force on 23 March 2016) and not in line with the principles developed by the case-law in relation, in particular, to the retail services.

17. The Board recalls that the list of goods and services shall be worded in such a way as to clearly indicate the nature of the goods and services, and to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.

18. As regards the term ‘retail services’, in accordance with the established practice both at the time of the filing of the contested application and at present, this term is only acceptable where the type of goods and services to be sold is indicated with sufficient clarity and precision (cf. 07/07/2005, C‑418/02, Praktiker, EU:C:2005:425 and Communication of the President of the Office of 31 October 2005 concerning the registration of the European Union trade mark for retail services later replaced by Communication No. 1/14 of the President of the Office of 19 September 2014).

19. As a result, the applicant filed the following limitation of its list of goods and services in Class 35:

Class 35 – Service in wholesale and retail sale of goods, namely: food products, beverages and food; agricultural, gardening and forestry; beauty products; cleaning agents, detergents and toiletries; pharmaceutical products; paper and office supplies; travel accessories; saddlery, bags, purses, belts; building materials of metal and not metal; furniture, mirrors, frames; small hand tools and utensils for household and kitchen, toiletries; glassware, porcelain articles; textiles and textile goods; clothing, footwear, headgear; games and toys, gymnastic and sporting articles, decorations for Christmas trees; electric and electronic products; tobacco, smoker’s articles, matches.

20. The Board considers that the new wording fulfils the conditions specified above. It defines sufficiently clearly the scope of protection in Class 35. It does not extend the scope of protection as compared to the original wording which was broad. It is therefore, admissible and the Board will examine the appeal taking into account the applicant’s list of goods and services as limited.

Article 8(1)(b) EUTMR

21. Article 8(1)(b) EUTMR provides that, upon opposition by the proprietor of an earlier trade mark, the trade mark applied for must not be registered if, because of its identity with or similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public in the territory in which the earlier trade mark is protected. The likelihood of confusion is to include the likelihood of association with the earlier trade mark.

22. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of that article (see 11/11/1997, C–251/95, Sabèl, EU:C:1997:528, § 16-18; and 29/09/1998, C–39/97, Canon, EU:C:1998:442, § 30).

23. According to established case-law, the likelihood of confusion must be appreciated globally, taking into account all factors relevant to the circumstances of the case (see 22/06/1999, C–342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 18).

24. It is in the light of those considerations that the contested decision’s assessment of the likelihood of confusion between the conflicting marks must be examined.

Comparison of the goods and services

25. The Board recalls that, in assessing the similarity of goods and services, all the relevant factors relating to those goods and services should be taken into account, including, inter alia, their nature, their intended purpose and their method of use and whether they are in competition with each other or are complementary (29/09/1998, C–39/97, Canon, EU:C:1998:442, § 23). Other factors may also be taken into account such as, for example, the distribution channels of the goods or services concerned (11/07/2007, T–443/05, Pirañam, EU:T:2007:219, § 37). The reference point is whether the relevant public will perceive the goods or services concerned as having a common commercial origin (04/11/2003, T–85/02, Castillo, EU:T:2003:288, § 38) and whether consumers consider it normal that the goods or services are marketed under the same trade mark, which normally implies that a large number of producers or providers are the same (11/07/2007, T–150/04, Tosca Blu, EU:T:2007:214, § 37).

26. The contested services in Class 35 are the following:

Class 35 – Service in wholesale and retail sale of goods, namely: food products, beverages and food; agricultural, gardening and forestry; beauty products; cleaning agents, detergents and toiletries; pharmaceutical products; paper and office supplies; travel accessories; saddlery, bags, purses, belts; building materials of metal and not metal; furniture, mirrors, frames; small hand tools and utensils for household and kitchen, toiletries; glassware, porcelain articles; textiles and textile goods; clothing, footwear, headgear; games and toys, gymnastic and sporting articles, decorations for Christmas trees; electric and electronic products; tobacco, smoker’s articles, matches.

27. These services have to be compared against the opponent’s goods in Classes 29, 30 and 32. The Board recalls that, in accordance with the established practice, retail of specific goods is considered similar when compared with these specific goods. However, it is only where the services relate to goods that are identical to the goods of the earlier mark that the relationship between the retail services and the goods is close, in the sense that the goods are indispensable to or, at the very least, important for the provision of those services, which are specifically provided when those goods are sold. The objective of any retail trade is the sale of goods, and that trade includes, in addition to the sales transaction, all activity carried out by the trader for the purpose of encouraging the conclusion of such a transaction. Such services are provided with the aim of selling certain specific goods and retail would make no sense without those goods (24/09/2008, T‑ 116/06, O Store, EU:T:2008:399, § 54).

28. The same applies to the wholesale services.

29. Therefore, in the present case, there is a similarity between the earlier goods and the contested ‘service in wholesale and retail sale of goods, namely: food products, beverages and food’, as these retailed goods are identical to the goods covered by the opponent’s specification.

30. However, there is no similarity between the opponent’s goods and the remaining services in Class 35, i.e. ‘service in wholesale and retail sale of goods, namely: agricultural, gardening and forestry; beauty products; cleaning agents, detergents and toiletries; pharmaceutical products; paper and office supplies; travel accessories; saddlery, bags, purses, belts; building materials of metal and not metal; furniture, mirrors, frames; small hand tools and utensils for household and kitchen, toiletries; glassware, porcelain articles; textiles and textile goods; clothing, footwear, headgear; games and toys, gymnastic and sporting articles, decorations for Christmas trees; electric and electronic products; tobacco, smoker’s articles, matches’. None of the criteria in paragraph 25 above appear to be satisfied and no convincing arguments have been adduced as to why those goods and services should be considered similar.

Relevant public

31. As the earlier mark is an EUTM, the relevant territory is the European Union.

32. The goods and services at issue are mostly aimed at the general public, except for wholesale services which are addressed to retailers and shop owners.

33. The Board observes that, for the purposes of the global assessment of the likelihood of confusion, the average consumer of the relevant goods and services 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 attentiveness is likely to vary according to the category of goods or services in question.

34. In the Board’s view, the level of attention of the relevant public is average, both as regards the retail and wholesale services.

35. The Board recalls that the factor relating to the relevant public and that relating to attention level are, in principle, independent of each other. Consequently, the mere fact that the wholesale services are addressed to professional retailers and shop owners does not presuppose the higher degree of attention on their part (19/11/2014, T‑138/13, VISCOTECH, EU:T:2014:973, § 47). Considering that the goods which are the object of retail and wholesale services here are mass consumption goods, the level of attention of the relevant public is considered average.

Comparison of the marks

36. The earlier mark is a word mark ‘HELIOS’, whereas the contested mark is a figurative mark, consisting of a word HELIX, written in a bold, slightly fancy italic typeface with a mirror reflection of the word at the bottom of the word and with two irregular spots over the word. The signs coincide in four consecutive letters, ‘HELI’, so they are visually similar to that extent. The signs differ in the endings of their verbal elements (‘-OS’ of the earlier sign versus ‘-X’ of the contested sign) and in the figurative elements of the contested sign. Aurally, the signs will be pronounced as ‘HE-LI-OS’ and ‘HE-LIX’, so they are aurally similar to a certain degree. Conceptually, the contested sign may be understood by the meaning given by the Opposition Division in English (i.e. as a ‘curve that lies on a cylinder or cone, at a constant angle to the line segments making up the surface; spiral’), but it will be seen as meaningless in most of the territories and, in particular, in Spain. As regards, the earlier sign, it may be understood as the name of the god of the sun in Greek mythology, at least by more educated consumers. The term exists in all languages of the European Union (including English, Spanish, German, Italian, Polish, Danish and Swedish), in some with the slight difference in spelling (e.g. Hélio in Portuguese, Hélios in French, Czech and Slovak, Héliosz in Hungarian). The signs are thus not conceptually similar. However, the name of this Greek god does not form part of everyday speech and is unlikely to occur immediately to a consumer, even an educated one, when purchasing foodstuffs. Therefore, the semantic meaning of the term is not capable of counteracting the visual and aural similarities.

37. Overall, considering the visual and aural similarities and the conceptual content of the earlier mark, the marks are similar to a low degree.

Distinctiveness of the earlier mark

38. The opponent claimed that the earlier mark enjoyed a higher degree of distinctiveness by virtue of use.

39. The Board recalls that, in order to determine whether the earlier mark has a higher degree of distinctiveness and therefore enjoys a wider scope of protection, account has to be taken of the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark; the proportion of the relevant section of the public which, because of the mark, identifies the goods as originating from a particular undertaking; and statements from chambers of commerce and industry or other trade and professional associations (22/06/1999, C-342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 22 et seq.).

40. The opponent must show that the earlier mark had acquired enhanced distinctiveness through extensive use or reputation by the filing date of the contested application, i.e. in the present case by 14 August 2013 (13/03/2013, T‑553/10, Farmasul, EU:T:2013:126, § 68).

41. In the present case, the opponent filed evidence relating to advertising and sales of its products under the earlier figurative mark. Nevertheless, the vast majority of this evidence postdates the filing date of the contested application.

42. All the television advertisement air times refer to 2014 and all but one magazine advertisement postdates the application date. Part of the invoices refer to the period before the filing of the contested application (January-August 2013) but even though that part clearly refers to the use of the earlier figurative mark, this is in itself insufficient to prove the enhanced distinctive character of the earlier mark.

43. Therefore, the assessment of the likelihood of confusion will lie on the inherent distinctive character of the mark, which is normal.

Global assessment

44. The Board recalls that the assessment of the likelihood of confusion must take into account the perception of relevant public of the signs and goods or services concerned, taking into account all factors relevant to the circumstances of the case (11/11/1997, C–251/95, ‘Sabèl’, EU:C:1997:528, § 22; 29/9/1998, C–39/97, ‘Canon’, EU:C:1998:442, § 16; 22/6/1999, C–342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18).

45. Such a global assessment of the likelihood of confusion implies some interdependence between the relevant factors, and in particular a similarity between the trade marks and between the goods or services. Accordingly, a greater degree of similarity between the goods may be offset by a lower degree of similarity between the marks, and vice versa (see, to that effect, 22/06/1999, C‑342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 20; 11/11/1997, C–251/95, ‘Sabèl’, EU:C:1997:528, § 24, and 29/09/1998, C–39/97, ‘Canon’, EU:C:1998:442, § 17).

46. In the present case, the marks were found to be similar to a low degree and the earlier mark is deemed to enjoy a normal degree of distinctiveness. Considering that the level of attention of the relevant public is average, there is a likelihood of confusion as regards similar goods and services, i.e. ‘service in wholesale and retail sale of goods, namely: food products, beverages and food’. This is all the more so considering that the relevant public is open to the possibility of imperfect memory when acquiring the goods in situations where, as often will be the case, a side-by-side comparison of the marks will not be possible.

47. There is no likelihood of confusion as regards the remaining services in Class 35, which are dissimilar to the goods covered by the earlier mark.

Article 8(5) EUTMR

48. In order for an earlier mark to be afforded the broader protection of Article 8(5) EUTMR, the following conditions must be met:

– That the marks at issue are identical or similar;

– That the earlier opposition mark has a reputation;

– That there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

49. As those conditions are cumulative, failure to satisfy one of them will be sufficient to render that provision inapplicable (06/07/2012, T–60/10, Royal Shakespeare, EU:T:2012:348, § 18; 25/05/2005, T‑67/04, Spa-Finders, EU:T:2005:179, § 30; 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 34 et seq.).

50. As found above, the evidence filed in the present case is insufficient to show that the earlier mark acquired an enhanced degree of distinctiveness by the date on which the contested application was filed. A fortiori, this evidence does not demonstrate that the earlier mark was reputed by that date. It therefore follows that Article 8(5) EUTMR cannot apply.

Conclusion

51. The appeal is allowed in part and the contested decision is annulled insofar as ‘service in wholesale and retail sale of goods, namely: food products, beverages and food’ is concerned. The opposition is allowed and the contested application is rejected for these services. The appeal is dismissed for the remainder.

52. It is not necessary to examine the opposition by reference to the opponent’s figurative mark as the result cannot be any different, either under Article 8(1)(b) EUTMR or under Article 8(5) EUTMR. The marks have more differences and the list of goods covered by the figurative mark is narrower.

Costs

53. Since the appeal is partially allowed, each party succeeds on some heads and fails on others. Consequently, each party must bear its own fees and costs of the appeal proceedings, in accordance with Article 85(2) EUTMR.

Order

On those grounds,

THE BOARD

hereby:

1. Allows the appeal in part and annuls the contested decision insofar as ‘service in wholesale and retail sale of goods, namely: food products, beverages and food’ is concerned;

2. Allows the opposition and rejects the contested application for these services;

3. Dismisses the appeal for the remainder;

4. Orders each party to bear its own costs in the opposition and appeal proceedings.

Signed G. Humphreys

Signed A. Szanyi Felkl

Signed A. Pohlmann

Registrar: Signed H.Dijkema