OPPOSITION No B 2 672 957

O2 Worldwide Limited, 20 Air Street, London W1B 5AN, United Kingdom (opponent), represented by Stobbs, Endurance House, Vision Park, Chivers Way, Cambridge CB24 9ZR, United Kingdom (professional representative)

a g a i n s t

JVG Finance B.V., Craneveldstraat 181, 5914SH Venlo, Netherlands (applicant), represented by Thomas Cluesmann, Aegidientorplatz 2 B, 30159 Hannover, Germany (professional representative).

On 28/03/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 672 957 is partially upheld, namely for the following contested services:

Class 35: Advertising services provided via the internet; rental of advertising space on the internet; business analysis, research and information services; advertising, marketing and promotional services; business assistance, management and administrative services; retailing relating to smokers' articles and tobacco substitutes; advertising services provided via the internet.

Class 38: Internet based telecommunication services; provision of on-line communications services; provision of on-line forums; providing Internet chat lines; computer communication and internet access; forums [chat rooms] for social networking; provision of internet access services; telecommunication services provided via internet platforms and portals; providing access to e-commerce platforms on the internet; provision of on-line forums; internet service provider services.

Class 42: Hosting web portals; hosting websites on the internet; computer programming for the internet; internet web site design services; creation of internet web sites; updating internet pages; constructing an internet platform for electronic commerce; hosting of e-commerce platforms on the internet; consultancy relating to the creation and design of websites for e-commerce; hosting of digital content, namely, on-line journals and blogs; creating and maintaining blogs for others; internet web site design services.

2. European Union trade mark application No 14 571 211 is rejected for all the above services. It may proceed for the remaining goods and services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 571 211. The opposition is based on, inter alia, European Union trade mark registration No 10 177 152. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

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

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 10 177 152.

1. The goods and services

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

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; fire-extinguishing apparatus; apparatus for the transmission of sound and image; telecommunications apparatus; mobile telecommunication apparatus; mobile telecommunications handsets; computer hardware; computer software; computer software downloadable from the Internet; PDAs (Personal Digital Assistants), pocket PCs, mobile telephones, laptop computers; telecommunications network apparatus; drivers software for telecommunications networks and for telecommunications apparatus; protective clothing; protective helmets; computer software recorded onto CD Rom; SD-Cards; glasses, spectacle glasses, sunglasses, protective glasses and cases therefor; contact lenses; cameras; camera lenses; MP3 players; audio tapes, audio cassettes, audio discs; audio-video tapes, audio-video cassettes, audio-video discs; video tapes, video cassettes, video discs; CDs, DVDs; electronic publications (downloadable); mouse mats; magnets; mobile telephone covers, mobile telephone cases; magnetic cards, encoded cards; parts and fittings for all the aforesaid goods.

Class 35: Advertising; business management; business administration; office functions; retail services and online retail services relating to scientific, nautical, surveying, photographic, cinematographic, optical weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, apparatus for recording, transmission or reproduction of sound or images, magnetic data carriers, recording discs, automatic vending machines and mechanisms for coin operated apparatus, cash registers, calculating machines, data processing equipment and computers, fire extinguishing apparatus, apparatus for the transmission of sound or image, telecommunications apparatus, mobile telecommunication apparatus, mobile telecommunications handsets, computer hardware, computer software, computer software downloadable from the Internet, PDAs (Personal Digital Assistants), pocket PCs, mobile telephones, laptop computers, telecommunications network apparatus, drivers software for telecommunications networks and for telecommunications apparatus, protective clothing, protective helmets, computer software recorded onto CD-Rom, SD-Cards, glasses, spectacle glasses, sunglasses, protective glasses and cases therefor, contact lenses, cameras, camera lenses, MP3 players, audio tapes, audio cassettes, audio discs, audio-video tapes, audio-video cassettes, audio-video discs, video tapes, video cassettes, video discs, CDs, DVDs, electronic publications (downloadable), mouse mats, magnets, mobile telephone covers, mobile telephone cases, magnetic cards, encoded cards; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 36: Insurance; financial affairs; monetary affairs; real estate affairs; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 37: Building construction; repair; installation services; installation, maintenance and repair of telecommunications installations, communications networks, computer networks and data networks; installation, maintenance and repair of telecommunications apparatus and equipment; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 38: Telecommunications; telecommunications services; mobile telecommunications services; telecommunications portal services; Internet portal services; mobile telecommunications network services; fixed line telecommunication services; provision of broadband telecommunications access; broadband services; broadcasting services; television broadcasting services; broadcasting services relating to Internet protocol TV; provision of access to Internet protocol TV; Internet access services; email and text messaging services; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; communications services for accessing a database, leasing of access time to a computer database, providing access to computer databases, rental of access time to a computer database; operation of a network, being telecommunication services; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 39: Transport; packaging and storage of goods; travel arrangement; provision of information relating to travel, transport, traffic, traffic flows and congestion; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 41: Education; providing of training; entertainment; sporting and cultural activities; interactive entertainment services; electronic games services provided by means of any communications network; entertainment services provided by means of telecommunication networks; information services relating to education, training, entertainment, sporting and cultural activities provided by means of telecommunication networks; provision of news information; television production services, television programming services; television production and television programming services provided by means of Internet protocol technology; provision of entertainment by means of television and Internet protocol television; provision of musical events; entertainment club services; discotheque services; presentation of live performances; night clubs; rental of music venues and stadiums; casino services; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 42: Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; IT services; computer programming services; services of a programmer; recovery of computer data; consultancy in the field of computer hardware; computer programming; duplication of computer programs; computer rental; computer software design; installation of computer software; maintenance of computer software; updating of computer software; rental of computer software; rental of computer hardware; computer system design; computer systems analysis; consultancy in the field of computer software; conversion of data or documents from physical to electronic media; creating and maintaining websites for others; data conversion of computer programs and data (not physical conversion); hosting computer sites (web sites); services of engineers; expert advice and expert opinion relating to technology; rental of data processing apparatus and computers; technical services relating to projection and planning of equipment for telecommunications; services of information brokers and providers, namely product research for others; weather forecasting; research in the field of telecommunication technology; monitoring of network systems in the field of telecommunications; technical support services relating to telecommunications and apparatus information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 43: Services for providing food and drink; temporary accommodation; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 44: Medical services; veterinary services: hygienic and beauty care for human beings or animals; agriculture, horticulture end forestry services; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

Class 45: Personal and social services rendered by others to meet the needs of individuals; security services for the protection of property and individuals; legal services; management and exploitation of copyright; arbitration services; information and advisory services relating to the aforesaid services; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

The contested goods and services are the following:

Class 3: Cleaning and fragrancing preparations; household fragrances; scented sachets; extracts of flowers; cushions filled with perfumed substances; cushions filled with fragrant substances; potpourris [fragrances]; room fragrancing preparations.

Class 34: Smokers' articles; tobacco and tobacco products (including substitutes); herbs for smoking; smokers' articles; pipes; smokers' articles of precious metal; smokers' articles, not of precious metal.

Class 35: Advertising services provided via the internet; rental of advertising space on the internet; business analysis, research and information services; advertising, marketing and promotional services; business assistance, management and administrative services; retailing relating to smokers' articles and tobacco substitutes; wholesaling relating to smokers' articles and tobacco substitutes; advertising services provided via the internet.

Class 38: Internet based telecommunication services; provision of on-line communications services; provision of on-line forums; providing Internet chat lines; computer communication and internet access; forums [chat rooms] for social networking; provision of internet access services; telecommunication services provided via internet platforms and portals; providing access to e-commerce platforms on the internet; provision of on-line forums; internet service provider services.

Class 42: Hosting web portals; hosting websites on the internet; computer programming for the internet; internet web site design services; creation of internet web sites; updating internet pages; constructing an internet platform for electronic commerce; hosting of e-commerce platforms on the internet; consultancy relating to the creation and design of websites for e-commerce; hosting of digital content, namely, on-line journals and blogs; creating and maintaining blogs for others; internet web site design services.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Classes 3 and 34

The contested goods in Class 3 are mainly cleaning and fragrancing products. The contested goods in Class 34 are tobacco, tobacco products and other products for smokers. These goods have no connection with the opponents’ goods in Class 9 which are for example apparatus and instruments for scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching purposes, electric devices, audio-visual and telecommunication apparatus, recording supports, data processing equipment, software or electronic publications. These goods and services do not coincide as regards any of the relevant factors relating to the comparison of the goods or services. The opponent’s services are also totally different from the applicant’s goods. Apart from being different in nature, since services are intangible whereas goods are tangible, they serve different needs. These goods and services have different methods of use and are neither in competition nor complementary. Moreover, in this case, the contested goods in Classes 3 and 34 and the opponent’s services in Classes 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45 have different commercial origins, end users and distribution channels. Therefore, these goods and services are dissimilar.

Contested services in Class 35

The contested advertising services provided via the internet (listed twice); rental of advertising space on the internet; advertising, marketing and promotional services; are identical to the opponent’s advertising, either because they are identically contained in both lists or because the opponent’s services, as a broader category, include the contested services, or inversely.

The contested business analysis, research and information services and business assistance, management […] services are included in the broad category of the opponent’s business management. Therefore, they are identical.

The contested business […] administrative services are included in the broad category of the opponent’s business administration. Therefore, they are identical.

The contested retailing relating to smokers' articles and tobacco substitutes are considered similar to the opponent’s retail services [..] relating to […] calculating machine. The services at issue have the same nature since both are retail services, the same purpose of allowing consumers to conveniently satisfy different shopping needs, and the same method of use.

The contested wholesaling relating to smokers' articles and tobacco substitutes are services related to sales of smokers' articles and tobacco substitutes to other wholesalers. Although they are sales services as the opponent’s retail services, their nature differ as well as the relevant public and the distribution channels. These services are related to the sale of unrelated goods and do not coincide with the opponent’s goods and services as regards any of the relevant factors relating to the comparison of the goods or services. Therefore, these goods and services are dissimilar.

Contested services in Class 38

The contested Internet based telecommunication services; provision of on-line communications services; provision of on-line forums; providing Internet chat lines; computer communication and internet access; forums [chat rooms] for social networking; provision of internet access services; telecommunication services provided via internet platforms and portals; providing access to e-commerce platforms on the internet; provision of on-line forums; internet service provider services are included in the broad category of the opponent’s telecommunications. Therefore, they are identical.

Contested services in Class 42

The contested hosting web portals; hosting websites on the internet; computer programming for the internet; internet web site design services; creation of internet web sites; updating internet pages; constructing an internet platform for electronic commerce; hosting of e-commerce platforms on the internet; consultancy relating to the creation and design of websites for e-commerce; hosting of digital content, namely, on-line journals and blogs; creating and maintaining blogs for others; internet web site design services are included in the broad category of the opponent’s IT services. Therefore, they are identical.

2. Relevant public — degree of attention

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

In the present case, the services found to be identical or similar are directed at the public at large and/or at business customers with specific professional knowledge or expertise.

The public’s degree of attentiveness may vary from average to high, depending on the price, specialised nature, or terms and conditions of the purchased services.

3. The signs

O2 GURU	herbalguru
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). This applies by analogy to international registrations designating the European Union. Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘GURU’ is understood in certain territories of the European Union, as a spiritual teacher and/or as an influential advisor or mentor. For part of the relevant public, such as German consumers, this word has only the meaning of a religious teacher in Hinduism. So this element has a normal degree of distinctiveness for the German public because its meaning is not related to and/or commonly used in trade for the services found identical or similar. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the German-speaking part of the public.

The element ‘O2’ of the earlier mark may refer to a chemical formula, namely, oxygen in its stable form. This formula is commonly known throughout the world and the vast majority of German consumers will know it. The element ‘HERBAL’ of the contested sign will be understood by German consumers as a term related to herbs and/or plants because, although the word does not exist as such in German, it has the same root as the German word ‘Herbalist’ who is a medical expert specialised in herbal medicine. As these elements are not descriptive, allusive or otherwise weak for the relevant services, they are distinctive.

Both signs are word marks and, thus, the words themselves are protected, not their written form. Therefore, it is irrelevant whether the word marks are represented in lower or upper case letters. The signs have no element that could be considered clearly more dominant than other elements or components.

Visually and aurally, the signs coincide because the second element ‘GURU’ of the earlier mark is totally incorporated at the end of the contested sign. However, they differ in the sounds of the element ‘O2’ of the earlier mark and ‘herbal’ of the contested sign. Visually, the signs also differ because the earlier mark consists of two elements and the contested sign of only one. However, the length of the signs when pronounced is similar: /ozweiguru/ vs /herbalguru/. Therefore, the signs are visually similar to a low degree and aurally to a below average degree.

Conceptually, for the German-speaking part of the public, the element ‘GURU’, included in both signs, will be associated with the meaning explained above.

Reference is made to the previous assertions concerning the semantic content conveyed by other elements of the marks. Although the contested sign can be perceived as a whole as a ‘religious teacher expert in herbal matters’, the signs will be associated with a same concept and are therefore similar to an average degree.

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

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier mark has been extensively used and enjoys 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’).

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The appreciation of likelihood of confusion on the part of the public depends on numerous elements and, in particular, on the recognition of the earlier mark on the market, the association which can be made with the registered mark, the degree of similarity between the marks and between the goods or services identified (eighth recital of the CTMR). It must be appreciated globally, taking into account all factors relevant to the circumstances of the case (22/06/1999, C-342/97, ‘Lloyd Schuhfabrik’, EU:C:1999:323, § 18; 11/11/1997, C-251/95, ‘Sabèl’, EU:C:1997:528, § 22).

As has been concluded above, the contested services, found identical or similar to those of the earlier mark, are directed at the public at large and/or at business customers whose level of attention may vary from average to high. The contested goods in Classes 3 and 34 and part of the services in Class 35 are dissimilar to the opponent’s goods and services.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, §  54).

Therefore, although the signs are similar visually only to a low degree and aurally to a below average degree, the earlier mark enjoys, at least, a normal degree of distinctiveness and the degree of similarity is average from the conceptual point of view. The fact that the element ‘GURU’, which has an independent role in the earlier mark, is totally incorporated in the contested sign and will easily be identified by the German-speaking part of the public is a relevant and decisive factor in the present assessment.

Moreover, evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17).

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. The German-speaking part of the public could think that the contested sign covers a new line of services from the opponent.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the part of the German-speaking part of the public and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 10 177 152. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the services found to be identical or similar to those of the earlier trade mark.

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

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 extensive use/reputation as claimed by the opponent and in relation to identical and 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 goods and 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:

• EUTM registration No 12 195 772 for the figurative mark for services in Classes 35, 36, 37, 38, 41 and 42;

• EUTM registration No 13 092 887 for the figurative mark for goods and services in Classes 9, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;

• EUTM registration No 10 428 654 for the figurative mark for goods and services in Classes 9, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;

• EUTM registration No 13 089 271 for the figurative mark for goods and services in Classes 9, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;

• EUTM registration No 10 177 152 for the word mark ‘O2 GURU’ for goods and services in Classes 9, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;

• EUTM registration No 11 914 587 for the word mark ‘O2 GURU TV’ for goods and services in Classes 9, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45;

• EUTM registration No 10 245 942 for the word mark ‘GURU TV’ for goods and services in Classes 9, 35, 36, 37, 38, 39, 41 and 42;

• UK trade mark registration No 3 024 436 for the word mark ‘GURU’ for services in Classes 35, 36, 37, 38, 41 and 42;

• UK trade mark registration No 2 580 234 for the word mark ‘O2 GURUS FOR BUSINESS, O2 GURU FOR BUSINESS’ for goods and services in Classes 9, 35, 36, 37, 38, 39, 41, 42, 43, 44 and 45.

Since these marks cover the same or a narrower scope of goods and services, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected. Therefore, no likelihood of confusion exists with respect to those goods and services.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM registration No 10 177 152 and UK trade mark registration No 3 024 436.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, 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) EUTMR 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) EUTMR (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.

1. The signs

The sign of European Union registration No 10 177 152 for the word mark ‘O2 GURU’ has already been compared above under the grounds of Article 8(1)(b) EUTMR. Reference is made to most of those findings, which are equally valid for Article 8(5) EUTMR with the difference that the component ‘HERBAL’ of the contested sign is distinctive to a low degree, as explained hereafter, for the goods and services of Classes 3, 34 and 35 considered dissimilar to the opponent’s goods and services in the comparison performed above under the ground of Article 8(1)(b) EUTMR.

Earlier UK trade mark No 3 024 436 is compared to the contested sign as follows:

GURU	herbalguru
Earlier UK trade mark No 3 024 436	Contested sign

The relevant territory is United Kingdom.

Earlier UK mark is made up of a sole word without any more distinctive or more dominant (eye catching) component.

The contested sign, as a whole, does not have any meaning but the element ‘HERBAL’ will be associated with ‘of, relating to, or consisting of herbs’ and the element ‘GURU’ with an ‘intellectual or spiritual guide’ or any ‘person who counsels or advices’. As a whole, the contested sign will be perceived as a ‘spiritual guide and/or an expert in herbal matters’ The element ‘GURU’ is the most distinctive element of the contested sign because its meaning evokes guidance and advice services but is not related to and/or commonly used in trade for the remaining goods and services in Classes 3, 34 and 35. At the contrary, the element ‘HERBAL’ of the contested sign is weak because it indicates that the relevant goods have herbs as ingredients, has the flavour of herbs or emit aromatic herbal scent. This applies also to the remaining contested wholesaling services of Class 35 that relate to smokers' articles and tobacco substitutes. Therefore, this component of the contested sign has a low distinctiveness for these goods and services. The contested sign has no element more dominant (eye-catching) than others.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the elements of the marks. As the signs will be associated with a same concept and the additional meaning of the contested sign stems from an element with a low distinctiveness, the signs are conceptually similar to a high degree.

Visually and aurally, the signs coincide to the extent that the earlier mark is totally incorporated at the end of the contested sign. However, they differ in the first six letters ‘HERBAL’ of the contested sign which has been considered lowly distinctive. The signs are visually and aurally similar to a high degree.

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

2. The ‘link’ between the signs

For reasons of procedural economy, the evidence filed by the opponent to prove the reputation of its earlier marks does not have to be assessed in the present case. The examination will proceed on the assumption that the earlier mark has the highest level of reputation.

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) EUTMR 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.

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.)

In the present case, there is a certain overlap between the relevant sections of the public for the trade marks in dispute as the public at large may buy cigarettes or cleaning and fragrance products and use also for example telecommunications services. However, purchasing products that clean or emit fragrance and smokers’ products on one side or goods in Class 9, such as technological and telecommunications products, and services in Classes 37, 38 and 41 in sectors such as construction, telecommunications, education, training, entertainment or sport and culture on the other side, give rise to totally different behaviour patterns.

Therefore, although it is assumed that the earlier marks have the highest level of reputation and despite the high similarity of the signs overall, the goods and services covered by the conflicting marks are so different that the later mark is unlikely to bring the earlier mark to the mind of the relevant public. The huge differences in usage between the contested goods and services and the earlier goods and services for which a reputation is claimed make it totally unlikely that the public will make a link between the signs in dispute, 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. It is unlikely that, when intending to purchase cleaning and fragrance products or tobacco products, the relevant public will link these goods to a trade mark that is very well known, but for goods and services in sectors related to technology, construction, telecommunications, education, entertainment or sport and culture which are profoundly and extremely dissimilar.

Since the signs of the other earlier marks, namely EUTM registrations No 12 195 772, No 13 092 887, No 10 428 654, No 13 089 271, No 11 914 587, No 10 245 942 and UK trade mark registration No 2 580 234 have a similar or even a lower degree of similarity with the contested sign and the opponent claims reputation for the same or even a narrower scope of goods and services, the outcome cannot be different to the extent that the necessary link between the signs is also missing.

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) EUTMR and must be rejected.

COSTS

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

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

The Opposition Division

Adriana VAN ROODEN

Benoit VLEMINCQ

Martina GALLE

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.