OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPPOSITION No B 2 430 620
Isabel Castelo D'Ortega y Cortes, Modesto Lafuente, 37-39, 28003 Madrid, Spain (opponent), represented by Javier Ungría López, Avda. Ramón y Cajal, 78, 28043 Madrid, Spain (professional representative)
a g a i n s t
Xiaohua Chen, Avda. Rosales 16 Portal C - 1º A, 28041 Madrid, Spain (applicant), represented by Onofre Indalecio Sáez Menchón, Gran Via 69 -5° Of. 510, 28013 Madrid, Spain (professional representative).
On 22/01/2016, the Opposition Division takes the following
2. The opponent bears the costs, fixed at EUR 300.
opponent filed an opposition against all the goods and services of
Community trade mark application No
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 goods and services
The goods and services on which the opposition is based are the following:
Spanish trade mark No 3 028 125 for the word mark ‘OCASO’
Class 3: Preparations for bleaching and other substances for washing; preparations for cleaning, polishing, degreasing and scraping; soaps, perfumery, essential oils; cosmetics, hair lotions and dentifrices; deodorants for personal use (perfumery).
Class 9: Scientific, nautical, geodesic, photographic, cinematographic, optical, weighing, measuring, signalling, controlling (inspection), rescue and teaching apparatus and instruments; apparatus and instruments for conducting, distribution, transformation accumulation, regulation and control of the electricity; apparatus for the registration, transmission, reproduction of the sound and images; magnetic data carriers, recording discs; compact discs, DVD’s and other digital recording media; mechanisms for coin-operated apparatus; cash registers; calculating machines, data processing equipment, computers; computer software; fire-extinguishing apparatus.
Class 16: Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus), plastic materials for packaging (not included in other classes); printers’ type; printing blocks; publications; printed publications; periodicals.
Class 20: Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
Class 21: Household or kitchen utsensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Class 24: Fabrics and textile materials not included in other classes, bed and table linen.
Class 28: Games and toys, dolls, playing cards, gymnastics and sport articles not included in other classes, decoration for Christmas trees.
Class 35: Sales promotion services for third persons; advertising; business management; business administration; office functions; help in the management of the business affairs or commercial functions of an industrial or commercial enterprise; import-export and commercial representation agencies; studies and analysis of the market services; studies related to business organization; planning, control, management and business expertise and auditing the accounts; wholesale and retail selling in shops and wholesale and retail selling by means of world-wide computer networks; exclusive sales services.
Class 36: Insurance; financial affairs; financial analysis; monetary affairs; banking; home banking; brokerage and stock exchange quotations services; capital management and investment; administration, brokerage and valuation of estates services; real estate affairs; deposit of values; issuance of credit and debit cards; fiduciary services; constitution and investment of funds; constitution of mortgages; banking, financial, monetary, insurance and real estate on line services through telecommunications networks (including mobile phones), telematics networks and computer global communications networks.
Class 40: Services of treatment of materials.
Community trade mark No 3 546 215 for the figurative mark :
Class 36: Insurance services.
The contested goods and services are the following:
Class 3: Abraders; Essential oils and aromatic extracts; Toiletries; Tailors' and cobblers' wax; Cleaning and fragrancing preparations; Animal grooming preparations.
Class 9: Navigation, guidance, tracking, targeting and map making devices; Scientific research and laboratory apparatus, educational apparatus and simulators; Optical devices, enhancers and correctors; Apparatus, instruments and cables for electricity; Safety, security, protection and signalling devices; Devices for treatment using electricity; Information technology and audiovisual equipment; Diving equipment; Recorded content; Magnets, magnetizers and demagnetizers; Measuring, detecting and monitoring instruments, indicators and controllers.
Class 16: Adhesives for stationary or household purposes; Bags and articles for packaging, wrapping and storage of paper, cardboard or plastics; Filtering materials of paper; Printed matter; Decoration and art materials and media; Paper and cardboard; Works of art and figurines of paper and cardboard, and architects' models; Stationery and educational supplies; Disposable paper products; Money holders.
Class 20: Displays, stands and signage; Animal housing and beds; Furniture and furnishings; Containers, and closures and holders therefor; Statues, figurines, works of art and ornaments and decorations, made of materials such as wood, wax, plaster or plastic, included in the class; Whalebone, unworked or semi-worked; Bamboo; Ambroid bars; Reeds [plaiting materials]; Bamboo canes; Wood ribbon; Straw edgings; Tusks [raw or partly worked material]; Oyster shells; Tortoiseshells [unworked or partly worked material]; Coral; Coral [unworked or partly worked]; Cork bands; Stag antlers; Corozo; Horn, unworked or semi-worked; Artificial horns; Animal horns; Animal teeth; Meerschaum; Meerschaum [raw or partly worked material]; Claws (Animal -); Onigaya hay [raw or partly worked material]; Animal bone [unworked or partly worked material]; Yellow amber; Whalebones; Reeds [raw or partly worked material]; Ivory; Ivory, unworked or semi-worked; Wicker; Mother-of-pearl; Raw mother of pearl; Mother-of-pearl, unworked or semi-worked; Plaited straw, except matting; Animal hooves; Rattan; Rattan [unworked or partly worked material]; Tortoiseshell imitation; Straw plaits; Door, gate and window fittings; Fasteners; Fans for personal use, non-electric; Hand fans; Hand-held flat fans; Stair fittings of plastics; Stacking adaptors non-metallic fittings; Rings for bulls' noses [non-metallic]; Spring washers of plastic; Ring closures, other than of metal; Plastic handles; Flagpoles; Strap-hinges, not of metal; Trays, not of metal; Non-metallic trays [other than for domestic use or for sorting or counting money]; Poles, not of metal; Split cane flower sticks; Hinges, not of metal; Hinges, not of metal incorporating a spring; Hinges, not of metal having a spring action; Spools (non-metallic -) [other than parts of machines or apparatus]; Reels [not of metal, non-mechanical or parts of machines]; Mooring buoys; Saw horses; Stair edgings of plastics; Reels of wood for yarn, silk, cord; Winding spools, not of metal, non-mechanical, for flexible hoses; Tracks [rails] (Non-metallic -); Hose hangers not of metal; Cane connectors of non-metallic materials; Spring assemblies (Non-metallic -) for incorporation into cushions; Spring assemblies (Non-metallic -) for incorporation into mattresses; Ferrules of non-metallic materials for walking sticks; Staves of wood; Corner cap components, not of metal; Porcelain handles; Protective shields of plastics materials for trees; Chain links of non-metallic materials; Tile spacers; Hard wood tree stakes; Tent pegs, not of metal; Mats, removable, for sinks; Identification tags of plastic for animals; Pipe support sleeves [plastic]; Wall hooks of non-metallic materials; Safety hooks, not of metal; Hooks for towels (Non-metallic -); Shower curtain hooks; Hooks for wall hangings (Non-metallic -); Knife handles, not of metal; Broom handles; Broom handles, not of metal; Scythe handles, not of metal; Tool handles, not of metal; Tool handles (Non-metallic -) for gardening implements; Wooden handles; Handles of plastics materials for saucepans; Handles of plastics materials for hollowware; Handles made of plastics for paint brushes; Handles made of plastics for brushes; Handles made of plastics for sweeping brushes; Handles made of plastics for tools; Handles made of plastics for garden implements; Handles of plastics materials for kettles; Handles made of plastics for doors; Handles (Non-metallic -) for brushes; Plastic molds for making soap; Plastic molds for use in manufacturing furniture; Mouldings made of substitutes of wood for picture frames; Mouldings made of plastics for picture frames; Grommets made of plastics materials; Wooden sticks for holding candy or ice cream; Shoulder poles [yokes]; Plastic knobs; Turnbuckles (Non-metallic -); Ring pulls, not of metal; Sink liners; Tap venting plugs of wood; Tap venting plugs of plastic; Basin plugs of non-metallic materials; Tube plugs (Non-metallic -); Plugs for showers, not of metal; Plugs for baths, not of metal; Clothes lines (Props for -), of wood or plastics; Tree protectors, not of metal; Identification bracelets, not of metal; Overhead suspension tracks of non-metallic materials; Springs made principally of plastic; Stakes for plants or trees; Spacers of plastic for use with sandwich panels; Brackets of (Non-metallic -) used for fixing plaques; Tissue holders [fixed] not of metal; Tree supports (Non-metallic -); Holders for pennants; Plant supports; Cantilevered brackets of non-metallic materials [other than for building]; Corner protectors of plastics; Tree protectors [tubes] not of metal; Suction pads [fixings]; Stair rods; Suspension rods (Non-metallic -) for hanging up articles; Stair rods of plastic; Strain relief clips (Non-metallic -); Lock casings, not of metal; Padlocks, not of metal; Striking plates (Non-metallic -) for locks; Locks [other than electric], not of metal, for vehicles; Self-opening non-metallic locks for belt reels; Cylinder locks made of non-metallic materials; Combination locks (non-metallic -) [non-electric]; Combination locks (Non-metallic -) for vehicles; Safety locks [non-metallic, non-electric]; Rim locks [non-electric], not of metal; Locks, not of metal, for vehicles; Furniture locks (Non-metallic -); Locks, other than electric, not of metal; Lock barrels, not of metal; Cremone bolts of non-metallic materials for locks; Spring locks (Non-metallic -); Mechanical locks [non-electric, non-metallic]; Safety locking devices [not of metal, non-electric]; Releasable locking devices (Non-metallic -) [non-electric]; Tumblers (non-metallic -) [parts of locks]; Plastic key rings; Safety keys, not of metal; Keys (Non-metallic -) for opening locks; Mechanisms (Non-metallic, non-electric -) for locking doors; Mechanisms (Non-metallic, non-electric -) for locking windows; Boarding stairs, not of metal, mobile, for passengers; Ladders made of glass fibre; Step ladders made of wood; Ladders of wood or plastics; Ladders made of plastics; Steps [ladders], not of metal; Kick step; Valves (Non-metallic -) [taps] for controlling the flow of liquid into barrels; Water control valves of plastic.
Class 21: Gardening articles; Cleaning articles; Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Tableware, cookware and containers; Unworked and semi-worked glass, not specified for use; Brushes and brush-making articles; Cosmetic and toilet utensils and bathroom articles; Buttonhooks; Glove stretchers; Wax-polishing appliances, non-electric, for shoes; Shoe horns; Clothes brushes; Battery operated lint removers; Ironing board covers, shaped; Shoe cloths; Shoe polishing mitts; Shoe trees [stretchers]; Shoe shine cloths; Ironing cloths; Clothes drying hangers; Clothes-pins; Tie presses; Trouser presses; Shoe scrapers incorporating brushes; Boot jacks; Flat-iron stands; Ironing boards; Drying racks for laundry; Stretchers for clothing; Aquaria and vivaria; Devices for pest and vermin control; Drinking troughs; Watering troughs for cattle; Pig troughs; Bird feeders in the nature of containers; Bird feeders for feeding caged birds; Currycombs; Poultry rings; Rings for birds; Plastics trays for use as litter trays for cats; Litter trays for birds; Bird baths; Non-mechanized pet waterers in the nature of portable water and fluid dispensers for pets; Animal activated livestock waterers; Cat litter pans; Horse brushes of wire; Brushes for pets; Horse brushes; Mane brushes [horse combs]; Bristles (Animal -) [brushware]; Feeding troughs; Animal activated animal feeders; Plastic containers for dispensing food to pets; Bird feeders for feeding birds in the wild; Mangers for animals; Poultry troughs; Animal activated livestock feeders; Bird feeders; Food containers for pet animals; Cages of metal for domestic use; Birdcages; Bird cages for domestic birds; Wire cages for household pets; Cages for pets; Nest eggs, artificial; Litter scoops for use with pet animals; Dog food scoops; Goldfish bowls; Combs for animals; Combs for use on domestic animals; Perches for bird cages; Containers for bird food; Plastic containers for dispensing drink to pets; Scoops for the disposal of pet waste; Scoops for the disposal of animals excrement.
Class 24: Filtering materials of textile; Textile goods, and substitutes for textile goods; Fabrics.
Class 27: Floor coverings and artificial ground coverings; Wall and ceiling coverings; Carpets, rugs and mats; Artificial ground coverings; Anti-slip material for use under floor coverings; Floor tiles made of cork; Tiles made of linoleum; Tiles made of linoleum for fixing to existing floors; Non-slip underlays; Padded coverings for existing floors; Padded linings for existing floors; Linoleum; Linoleum for covering existing floors; Linoleum for use on floors; Anti-slip material for use under carpets; Fencing pistes; Anti-slip floor coverings for use on staircases; Floor coverings; Floors coverings of rubber; Vinyl floor coverings for existing floors; Vinyl floor coverings; Floor coverings having insulating properties.
Class 28: Fairground and playground apparatus; Festive decorations and artificial Christmas trees; Sporting articles and equipment; Toys, games, playthings and novelties.
Class 35: Franchise-issuing relating to business management assistance; Advertising; Business intermediary services; Commercial or industrial management assistance and consultancy; Sales promotion for others; Business representation, compilation of advertisements for use as webpages and compilation of directories for publication on global computer networks, data management of computerised files; Dissemination of advertising for others via global communication networks, Data search services in computer files for others; Consultancy relating to customer services; Wholesaling and retailing, including via global computer networks, of soaps, perfumery, essential oils, cosmetics, candles, cutlery, spectacles, cases for spectacles and computers, apparatus for lighting purposes, jewellery, watches and clocks, paper, cardboard, bookbinding material, bags, stationery, photographs, paint brushes, handbags, travelling bags, belts, wallets, purses, umbrellas, furniture, mirrors, picture frames, household or kitchen utensils and containers, textiles and textile goods, carpets, tapestries, clothing, footwear, headgear, games and playthings, decorations for Christmas trees, and smokers' articles.
Class 36: Provision of prepaid cards and tokens; Safe deposit services; Fundraising and sponsorship; Insurance services; Valuation services; Financial and monetary services, and banking; Real estate services; Pawnbrokerage.
Class 40: Custom manufacture and assembly services; Acrylic finishing of vehicles; Rental of cutting equipment; Rental of sewing machines; Knitting machine rental; Rental of shoe making machines; Application of backing to carpet to the order of others; Clothing alteration; Embroidery; Shoemaking; Custom fashioning of fur; Custom construction of machines; Cutting of replacement keys; Fur cutting; Cloth cutting; Dressmaking; Sewing (custom manufacture); Needlework [custom manufacture]; Needlework and dressmaking; Key duplicating; Cabinet-making (custom manufacture); Joinery [custom manufacture]; Picture-framing; Framing of works of art; Custom assembling of materials for others; Made-to-measure curtain-making; Cloth edging; Covering of furniture; Moulding of furniture; Manufacture of furniture to order and specification of others; Tapestry-weaving; Tapestry weaving for others; Cobbler's services [custom manufacture]; Tailoring [custom manufacture]; Tailoring services; Tailoring or dressmaking; Fur working; Cabinet making; Custom manufacture of drapery.
Some of the contested goods and services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested goods and services were identical to those of the earlier mark.
Earlier trade marks
The relevant territory is the European Union and Spain.
The earlier mark 1) is the word mark ‘OCASO’. The earlier mark 2) is a figurative mark consisting of the verbal element ‘OCASO’, depicted in black bold standard upper case letters, and a square figurative element to its left containing an abstract depiction of a sunrise or sunset. The contested sign is a figurative mark composed by the rather standard black capital letters ‘OKEYSI’.
Visually, the signs are similar to the extent that they coincide in the letters ‘O***S*’. On the other hand, they differ in the letters ‘*CA*O’ of the earlier marks and the letters ‘*KEY*I’ of the contested sign, as well as in the figurative element and stylisation of the earlier mark 2) and the contested sign.
Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides for a substantial part of the relevant public in their first syllables /O/ and in the sound of the letters /OC*S*/ of the earlier marks and /OK**S*/ of the contested sign, as the letters ‘C’ and ‘K’ are identically pronounced. However, the marks differ in the second and third syllables, and more particularly in the sound of the letters ‘A’ and ‘O’ in the earlier marks and the letters ‘EY’ and ‘I’ of the contested sign, this even for the English-speaking public, contrary to what is argued by the opponent as the verbal elements will be pronounced as /o/kay/so/ or /o/ka/so/ and /o/ki/si/ or /o/key/si/.
Conceptually, the verbal elements of the earlier marks ‘OCASO’ will be perceived by the Spanish-speaking public as a sunrise or sunset (http://www.oxforddictionaries.com/translate/spanish-english/ocaso). For the remaining part of the relevant public, the verbal element ‘OCASO’ is meaningless.
The figurative element of the earlier mark 2) will be associated with a sunrise or sunset by the entire relevant public.
The contested sign will be perceived by the entire relevant public as meaningless.
For the part of the relevant public who will perceive the verbal elements of the earlier marks with a specific meaning and for the entire relevant public who will perceive the figurative element of earlier mark 2) with a specific meaning, the contested sign lacks any meaning in that territory. Since one of the signs will not be associated with any meaning, the signs are not conceptually similar.
For the part of the relevant public that will perceive both the earlier mark 1) and the contested sign as meaningless, a conceptual comparison is not possible and the conceptual aspect does not influence the assessment of the similarity of the signs.
Taking into account the abovementioned visual and conceptual coincidences, the signs under comparison are similar.
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 under comparison have no elements which could be considered clearly more distinctive than other elements.
The marks under comparison have no elements which could be considered clearly more dominant (visually eye‑catching) than other elements.
Distinctiveness of the earlier marks
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 marks have been extensively used and enjoy an enhanced scope of protection. 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’). The examination will proceed on the assumption that the earlier marks have enhanced distinctiveness.
Relevant public – degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services assumed to be identical are directed at the public at large and at a professional public with specific professional knowledge or expertise. The degree of attention may vary from average to higher than average, depending on the price, (specialised) nature and conditions of the purchased goods and services.
Global assessment, other arguments and conclusion
Although the signs coincide in the letters ‘O***S*’, they show overall more differences than similarities.
First of all, the marks differ visually in the letters ‘*CA*O’ of the earlier marks and the letters ‘*KEY*I’ of the contested sign, as well as in the figurative element depicting a sunset or sunrise and the stylisation of the earlier mark 2) and the contested sign.
Secondly, from an aural point of view, the third letter ‘A’ in the earlier marks and the third and fourth letters ‘EY’ of the contested sign will be pronounced differently, even for the English-speaking public. Furthermore, the marks differ in the ending vowel of their third syllable. Therefore, the marks will be pronounced, for example as /o/kay/so/ or /o/ka/so/ and /o/ki/si/ or /o/key/si/, which show important differences.
Finally, the verbal elements of the earlier marks will be associated with a specific concept by the Spanish-speaking public, and the figurative element of the earlier mark 2) will be perceived as the depiction of a sunrise or sunset while the contested sign is meaningless.
The Opposition Division has assumed in part d) of this decision that the earlier marks have been extensively used and enjoy an enhanced scope of protection. The examination of likelihood of confusion will, therefore, proceed on the premise that the earlier marks have an enhanced degree of distinctiveness. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore, marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (judgment of 29/09/1998, C‑39/97, ‘Canon’,paragraph 18).
In the present case, it is considered that even in case the earlier marks enjoy an enhanced degree of distinctiveness, there exists no likelihood of confusion. As explained above, the marks show many visual and aural differences which contribute to differentiate between them. The verbal elements of the marks are rather short, five and six letters, so the differences will be easily perceived. Therefore, the differences between the marks are considered sufficient to safely distinguish between the marks, even with an average degree of attention and even in case of identical goods and services. This will be even be more true for the part of the relevant public that will perceive the verbal elements of the earlier marks with a specific meaning, and for the entire relevant public which will perceive the earlier mark 2) with the concept of a sunrise or sunset.
Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public. Therefore, the opposition must be rejected.
Even assuming that the earlier marks enjoy an enhanced distinctiveness due to extensive use/reputation, the outcome of no likelihood of confusion remains the same. Therefore, it is not necessary to examine the evidence of extensive use/reputation.
REPUTATION – ARTICLE 8(5) CTMR
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 (judgment of 16/12/2010, T‑345/08, & T‑357/08, ‘Botolist’ / ‘Botocyl’, paragraph 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.
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.
Reputation of the earlier trade marks
According to the opponent, the earlier trade marks have a reputation in Spain for insurances services.
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 ‘The link between the signs’). The examination will proceed on the assumption that the earlier marks have a reputation in Spain for insurance services.
The ‘link’ between the signs
As seen above, the earlier marks are assumed to be reputed and the signs are similar to some extent. 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’, paragraphs 29 and 31, and of 27/11/2008, C‑252/07, ‘Intel’, paragraph 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 (judgment of 27/11/2008, C‑252/07, ‘Intel’, paragraph 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.
In the present case, the signs show some similarities. However, this does not mean that the relevant public is likely to establish a link between them.
As reputation is claimed only in Spain, the analysis below focuses on the Spanish public.
From a visual point of view, the marks only coincide in two letters ‘O***S*’, out of five in the earlier marks and out of six in the contested sign. The marks differ visually in the letters ‘*CA*O’ of the earlier marks and the letters ‘*KEY*I’ of the contested sign, as well as in the figurative element representing a sunrise or sunset and stylisation of the earlier mark 2) and the stylisation of the contested sign
From an aural point of view, the earlier marks are pronounced as /okaso/ while the contested sign is pronounced as /okeysi/, coinciding the pronouncation only in the sound of the first two letters /ok/ and the penultimate letter /s/.
Finally, from a conceptual point of view, the Spanish relevant public will perceive the verbal elements of the earlier marks ‘OCASO’ as a sunrise or sunset while the contested sign is meaningless.
Therefore, in view of the differences between the marks and especially the conceptual difference, the similarities between the contested sign and the earlier trade marks are unlikely to bring the earlier trade marks to the mind of the average consumer, even assuming that the earlier marks are reputed and assuming that the goods and services are identical.
Therefore, taking into account and weighing up all the relevant factors of the present case, 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) CTMR and must be rejected.
Even assuming that the earlier marks are reputed, the outcome of the examination of a possible link between the marks remains the same. Therefore, it is not necessary to examine the evidence of reputation.
According to Article 85(1) CTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.
Since the opponent is the losing party, it must bear the costs incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (7)(d)(ii) CTMIR, the costs to be paid to the applicant are the costs of representation which are to be fixed on the basis of the maximum rate set therein.
The Opposition Division
Chantal VAN RIEL
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.
The amount determined in the fixation of the costs may only be reviewed by a decision of the Opposition Division on request. According to Rule 94(4) CTMIR, such a request must be filed within one month from the date of notification of this fixation of costs and shall be deemed to be filed only when the review fee of EUR 100 (Article 2(30) CTMFR) has been paid.