K!TCHN | Decision 2688227
Date Published: Sep 28, 2017
OPPOSITION No B 2 688 227
Tom Kitchin Limited, MacDonald House, Ground Floor, 108 Commercial Street, Leith, Edinburgh EH6 6NF, United Kingdom (opponent), represented by Ancient Hume Limited, 21 Lansdowne Crescent, Edinburgh EH12 5EH, United Kingdom (professional representative)
a g a i n s t
Arçelik Anonim Sirketi, E5 Ankara Asfalti Uzeri, Tuzla, Istanbul 34950, Turkey (applicant), represented by Grünecker Patent- und Rechtsanwälte PartG mbB, Leopoldstr. 4, 80802 München, Germany (professional representative)
On 05/05/2017, the Opposition Division takes the following
DECISION:
1. Opposition No B 2 688 227 is partially upheld, namely for the following contested goods and services:
Class 7: Machines, looms for working and shaping wood, metal, glass and plastic material and metals (including galvanizing machines and electroplating machines); robotic mechanisms for working and shaping wood, metal, glass and plastic material and metals; Machines and robotic mechanisms used in the agriculture and viticulture and in processing cereals / fruits / vegetables / food; Engines, electrical engines; Painting machines, automatic spray guns for paint, electric punching machines and punches for punching machines, electric glue guns, guns for compressed air or liquid spraying machines, electric hand drills, motor hand saw, jigsaw machines, compressed air pumps, compressors, vehicle washing installations and robots with the same function as the above-mentioned machines and tools; Welding machines, electric arc welding apparatus, electric welding apparatus, electric arc cutting apparatus, electrodes for welding machines and robots with the same function as the above-mentioned; Packaging machines, filling-plugging and finishing machines, labeling machines, separators and robots and robotic mechanisms with the same function as the above-mentioned machines (including electrical apparatus for sealing plastics [packaging]); Textile washing machines, sewing machines and industrial robots with the same function as the above-mentioned machines; Pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these); Electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling; washing machines (laundry / dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts; Laundry dryers, namely machines not drying with heating method; Waste management installations.
Class 8: Forks, spoons, knives and non-electric cutlery for cutting, chopping, peeling purposes, including those of precious metals; Cutting and jabbing/stabbing arms; Tools and appliances included in this class used for personal care in shaving, depilation, manicure, pedicure and beauty-care (including hair straighteners and hair curling implements, scissors); Hand-operated tools for repair of machines, appliances and vehicles, hand-operated tools for building, agriculture, gardening and forestry; Electric and non-electric irons.
Class 9: Measuring apparatus and instruments, indicators and laboratory materials including those for scientific research in laboratories other than for medical use; Apparatus for recording, transmission or reproduction of sound or images (including apparatus and peripheral devices for data processing, telecommunication and reproduction); Magnetic and optical data carriers and software recorded in these; downloadable electronic publications, recorded to magnetic and optical media; magnetic/optical cards; Antennas, satellite dishes, amplifiers and their parts; Ticket dispensers, automated teller machines; Electronic components used in machines and apparatus; Counters measuring amount of consumption in unit time and time clocks; Protective suits and life saving apparatus and equipment (including ear plugs for divers); Glasses, sunglasses, contact lenses and their boxes, covers, parts and accessories; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (including cables used for electric and electronic purposes, batteries, accumulators, anodes and cathodes); Apparatus for warning and alarms [other than for vehicles], electric bells; Signaling devices and apparatus used in traffic; Fire extinguishing apparatus including fire engines (including fire hoses and fire hose nozzles); Radar apparatus, sonars, apparatus and devices providing night vision; Magnets, decorative magnets.
Class 11: Lighting apparatus and installations (lighting installations for vehicles, interior and exterior spaces); Devices for cooking, heating and vapor producing installations and apparatus (including electric ovens, microwave ovens, gas ovens, electric heating apparatus or heating apparatus for solid, liquid or gaseous fuels, electric tea and coffee makers and machines); Air conditioning devices; Cooling apparatus, namely refrigerators, milk coolers, water coolers, ice-boxes, ice machines and devices, freezers; Electric and gas operated apparatus, machines and devices used in cooling, drying and boiling (including electric and heating-operated laundry dryers, hair dryers and hand drying apparatus); Sanitary installations, sanitary ware; Water softening apparatus, water purifying apparatus, water purification installations; Bedwarmers and electric blankets not for medical purposes, heating cushions and pads not for medical purposes, electric or non-electric footwarmers, hot water bottles; Filters and filter-motor combinations for aquariums; Industrial type cooking, drying and cooling installations; Pasteurizers and sterilizers; Laundry dryers.
Class 38: Telecommunications; television broadcasting and television transmission services; radio broadcasting services.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing on-line directories and databases in relation to publishing printed matter, books, magazines, instructional and teaching material, educational matter, periodicals and cooking recipes; entertainment services provided by television, radio, television entertainment, satellite television shows, audiovisual recordings featuring motion picture film and television entertainment; rental of motion pictures and showing of cinematographic and motion picture films, pre-recorded videotapes, DVDs and CDs featuring motion picture film and television entertainment.
2. European Union trade mark application No 14 944 862 is rejected for all the above goods and services. It may proceed for the remaining goods, namely:
Class 7: Industrial robots for working and shaping wood, metal, glass and plastic material and metals (including galvanizing machines and electroplating machines); heavy machinery for working and shaping wood, metal, glass and plastic material and metals; lifting, conveying and transportation machines, robotic mechanisms with the same function (including lifts, escalators, cranes); engine parts and equipments and electrical engine parts and equipments other than for land vehicles (including parts, electric door openers-closers used in land vehicles and included in this class); bearings, ball-bearings or roller bearings; tire mounting and dismounting machines; alternators, generators, generators of electricity, generators working with solar energy; spiral machines and robots with the same function as the above-mentioned machines and tools; printing machines; textile milling, scotching or tentering machines and industrial robots with the same function as the above-mentioned machines; vending machines; power supply apparatus [generators].
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 14 944 862. The opposition is based on European Union trade mark registration No 9 789 173. The opponent invoked Article 8(1)(b) EUTMR.
LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR
A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.
- The goods and services
The goods and services on which the opposition is based are the following:
Class 7: Dishwashers; washing machines; drying machines; washer dryers; vacuum cleaners; vacuum cleaner attachments for disseminating perfumes and disinfectants; waste disposals; waste disposers; wrapping machines; machines for making aerated beverages; aerated water making apparatus; electro-mechanical machines for preparing beverages; blade sharpening machines; electric blenders; electric beaters; electric whisks; bottle sealing machines; butter machines; electric can and tin openers; colanders being parts of machines; machines and apparatus for shampooing carpets; coffee grinders; cream/milk separators; electric crushers and grinders; electro-mechanical food preparation machines; electric food processors; electric fruit presses; hand held power-operated tools; electric knives; knives being parts of machines; mincing, chopping and cutting machines; food mixers; sausage machines; electric scissors; separators; sieves [parts of machines]; sugar making machines; wine presses; electric domestic and household machines included in this class; chopping machines; storage containers [fitted] for tools and utensils.
Class 8: Hand tools; cutlery; razors; knives; knife steels; oven to tableware in the nature of knives, forks and spoons; atomisers; blades; can openers; choppers; cleavers; cutting tools; cutting bars; pizza cutters; egg slicers; fleshing knives; forks; ice picks; ladles; mallets; mincing knives; nut crackers; oyster openers; palette knives; paring knives; scissors; sharpening steels and sharpening stones; sharpening instruments; silver plate knives, forks and spoons; spatulas; spoons; sugar tongs; tableware [cutlery]; table forks; tin openers; tweezers; vegetable knives; vegetable choppers, shredders and slicers; ladles for wine; cutlery of plastic, namely, knives, forks and spoons; disposable tableware [cutlery]; plastic tableware [cutlery]; table cutlery of plastic.
Class 9: Scales; weighing apparatus and instruments; weighing machines; charging systems for battery operated domestic appliances; teaching apparatus and instruments; measurers; measuring apparatus; measuring glassware; measuring spoons; measuring cups; measuring instruments; fire extinguishing apparatus; time recording devices; egg timers; gloves for protection against accidents; protective eye shades; protective face shields; life saving apparatus and equipment; clothing for protection against fire; fire blankets; smoke detectors; thermometers, not for medical purposes; hollow glassware with graduations for measuring; smart cards; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers; recording discs; downloadable computer programmes; downloadable software; downloadable online text, data and images; telecommunications apparatus; broadcasting apparatus; discs; CDs; CD ROMs; videos and DVDs; downloadable electronic publications; computer software; computer games; talking books; telephones; telephone ringtones (downloadable); digital music downloadable from the Internet; downloadable MP3s; digital music provided from MP3 websites; computers; mobile phones; covers, fascias and cases for mobile phones; sunglasses and cases for sunglasses; spectacles and contact lenses; cases for spectacles and contact lenses; personal stereos; screensavers; mouse mats.
Class 11: Electric cooking appliances; electrical appliances for making beverages; domestic appliances for producing ice and for refrigerating; apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air cooling apparatus; air deodorising apparatus; air filtering installations; barbeques; lava rocks for use in barbeque grills; toasters; sandwich makers; electric coffee machines and coffee filters; electric coffee percolators; coffee roasters; cookers; cooking apparatus and installations; cooking utensils; deep fryers; filters for drinking water; appliances for making yoghurt; lamps; fans; filters for air conditioning; filters; freezers; fruit roasters; griddles; grills; heating plates; extractor hoods; ice boxes; ice machines and apparatus; kettles; ovens; cooking ranges; malt roasters; microwave ovens; oven fittings made of fire clay; shaped fittings for ovens; plate warmers; hot plates; pressure cookers; pressure cooking saucepans; roasters; roasting spits; rotisseries; sinks; steam boilers; sterilisers; stoves; air conditioning installations and apparatus; ventilation hoods; electric waffle irons; warming pans; wash hand basins and wash hand bowls; water sterilisers.
Class 16: Books; manuals; cookery books; recipe books; photographs; magazines; mats; table mats; coasters; table napkins of paper; table linen of paper; table cloths of paper; stationery; books; instructional and teaching material; albums; bags of paper or plastics for packaging; bags for microwave cooking; garbage bags of paper or of plastic; printed matter; booklets; book markers; bottle wrappers of cardboard or paper; boxes of cardboard or paper; wrapping paper; coffee filters; covers of paper for flower pots; face towels of paper; plastic cling film; filter paper; hand towels of paper; paper knives; mats for beer glasses; newsletters; notebooks; waxed paper; plastic film for wrapping; tracing paper; paper tissues; writing instruments; storage boxes, containers and cases; gift vouchers; recipes; menus.
Class 20: Articles made from wood; articles made principally of wood; articles made of simulated wood; boxes of wood or of plastic; casks of wood for decanting wine; containers made of wood; decorations made of wood; decorations made of wood for foodstuffs; household articles of furniture of wood or plastic; cases of wood or plastics; signboards of wood or plastics; stacking trays and boxes of wood or plastics; storage chests; tubs; wooden crates; storage boxes of wood or plastics; chopping blocks, namely, tables; moulded furniture parts made of wood fibre mats; removable mats for sinks; storage containers, cabinets, drawers and racks; articles of furniture; cabinets, drawers; racks and shelves; high seats and high stools; stools; chairs; laminated work surfaces; screens; sink units [kitchen furniture]; wine racks; work tops; work surfaces; goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum, and substitutes for all of these materials, or of plastics; parts and fittings for all of the aforesaid goods.
Class 21: Pots and pans; china dinnerware; china serveware; ceramic crockery; oven to tableware; glassware; tableware of plastics material; utensils and containers; brushes; articles for cleaning purposes; porcelain and earthenware; abrasive pads; basins and baskets; basting spoons; non-electric blenders; bottle openers; bottles; boxes; bread baskets; bread boards; buckets; butter dishes and covers for butter dishes; cake moulds; candle extinguishers; ceramics for household purposes; coasters; coffee grinders and coffee percolators; coffee pots; coffee services; coffee filters; cold boxes; pastry bags; containers for household use; cookery moulds; cooking utensils; corkscrews; crockery; crystal glassware; cups; deep fryers; dishes; glasses and glassware; gloves for household purposes; griddles; grills; ice buckets and ice cube moulds; insulating flasks; jugs and jars; kettles; non-electric food mixers; lunch boxes; menu card holders; non-electric mixing machines; mixing spoons; moulds; mugs; napkin holders; napkin rings; noodle machines; pastry cutters; frying pans; perfume burners; paper plates; lids for pots and pans; pottery; garlic presses; non-electric pressure cookers; salad bowls; sauce pans; salt cellars and salt shakers; shakers; services, namely, tableware; sieves; spatulas; spice sets; statuettes of porcelain, terracotta or glass; strainers; sugar bowls; tableware; teapots; trays; trivets; vases; vegetable dishes; non-electric waffle irons; non-electric whisks; wine tasters; combs and sponges, colanders; oven gloves; chopping boards; articles of wood for household use; chopping boards of plastic; containers of wood; chopping boards of wood; cookware; aluminium cookware; plastic cookware items; tableware holders; hollowware; stainless hollowware; drip mats; storage jars; storage containers; baskets, boxes, chests, tins and vessels; serveware.
Class 24: Household textiles; textiles and textile goods; bed and table covers; coasters of textile; covers for cushions; curtains; handkerchiefs of textile; household linen; labels (textile); place mats; table napkins; serviettes; table cloths and table linen; table mats; table runners; textile wall hangings; towels of textile; travelling rugs; washing mitts; towels; tea towels.
Class 25: Clothing, footwear and headgear; aprons; hats and caps; gloves; non-slipping devices for boots and shoes; outerclothing; leather clothing; waterproof clothing; overalls; paper clothing; paper hats; t-shirts, polo shirts and rugby shirts; sweaters, sweatshirts, jerseys and jumpers; fleece tops; underwear; uniforms; waistcoats; wooden shoes; clogs.
Class 32: Beer; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; fruit based drinks; organic drinks.
Class 35: Retail services, electronic shopping retail services, retail services provided by mail order, all connected with the sale of books, home entertainment media, textiles, clothing, food and drink products, chocolates, organic foods, woodware, namely articles of wood for household use, furniture, domestic electrical items, storage, household and cooking items, dinnerware, knives, tools, serveware, crockery, tableware, hollowware, oven to tableware, glassware, cutlery, cookware, linens, plastic household and cooking items; advertising; business management; business administration; office functions; franchise services; consultancy, information and advisory services relating to all of the aforesaid services.
Class 41: Entertainment services; production of radio and television programmes; film production; production of recorded tapes, cassettes, discs and DVDs; production, presentation, distribution, syndication and rental of television and radio programmes, interactive entertainment, films and sound and video recordings, interactive compact discs and CD-ROMs; production and rental of educational and instructional materials; organisation, production and presentation of shows, competitions, contests, games, concerts and events; production of shows; providing on-line electronic publications; organisation and provision of road shows, courses and demonstrations relating to cookery; education services; training services; providing of training; cultural activities; cookery schools; cookery classes; training of chefs; training services related to food and nutrition; educational academy services; arranging and conducting of colloquiums, conferences, congresses, seminars, symposiums and workshops; organisation of shows and competitions; presentation of live performances; practical demonstrations for educational and/or entertainment purposes; publication; publication of books; publication of electronic books, manuals and magazines on-line; teaching; cookery teaching; educational and entertainment services provided by on-line access; arranging and conducting educational workshops in relation to food and cookery matters; fan club services; providing entertainment through computer networks; operation of interactive electronic media entertainment facilities; interactive television services; electronic games services provided via the Internet or a computer based system; consultancy, information and advisory services relating to all of the aforesaid services.
Class 43: Catering; restaurants; cafeterias; snack-bars; bistros; bars; canteens; self service restaurants; hospitality services for food, drink and accommodation; hospitality suites; catering services for the supply of meals; mobile catering services; hotel services; services for providing food and drink; temporary accommodation; reservation services relating to hotel, restaurant and accommodation services; rental of chairs, tables, table linen and glassware; mobile catering services; arranging of wedding receptions; club services for the provision of food and drink; wine club services; consultancy, information and advisory services relating to all of the aforesaid services.
The contested goods and services are the following:
Class 7: Machines, looms and industrial robots for working and shaping wood, metal, glass and plastic material and metals (including galvanizing machines and electroplating machines); Heavy machinery, robotic mechanisms for working and shaping wood, metal, glass and plastic material and metals; Lifting, conveying and transportation machines, robotic mechanisms with the same function (including lifts, escalators, cranes); Machines and robotic mechanisms used in the agriculture and viticulture and in processing cereals / fruits / vegetables / food; Engines, electrical engines, their parts and equipments other than for land vehicles (including parts, electric door openers-closers used in land vehicles and included in this class); Bearings, ball-bearings or roller bearings; Tire mounting and dismounting machines; Alternators, generators, generators of electricity, generators working with solar energy; Painting machines, automatic spray guns for paint, electric punching machines and punches for punching machines, electric glue guns, guns for compressed air or liquid spraying machines, electric hand drills, motor hand saw, jigsaw machines, spiral machines, compressed air pumps, compressors, vehicle washing installations, and robots with the same function as the above-mentioned machines and tools; Welding machines, electric arc welding apparatus, electric welding apparatus, electric arc cutting apparatus, electrodes for welding machines and robots with the same function as the above-mentioned; Printing machines; Packaging machines, filling-plugging and finishing machines, labeling machines, separators and robots and robotic mechanisms with the same function as the above-mentioned machines (including electrical apparatus for sealing plastics [packaging]); Textile milling, scotching, tentering or washing machines, sewing machines and industrial robots with the same function as the above-mentioned machines; Pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these); Electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling; washing machines (laundry / dishwashing machines); electrical machines for cleaning floors and carpets, vacuum cleaners and their parts; Vending machines; Power supply apparatus [generators]; Laundry dryers, namely machines not drying with heating method; Waste management installations.
Class 8: Forks, spoons, knives and non-electric cutlery for cutting, chopping, peeling purposes, including those of precious metals; Cutting and jabbing/stabbing arms; Tools and appliances included in this class used for personal care in shaving, depilation, manicure, pedicure and beauty-care (including hair straighteners and hair curling implements, scissors); Hand-operated tools for repair of machines, appliances and vehicles, hand-operated tools for building, agriculture, gardening and forestry; Electric and non-electric irons.
Class 9: Measuring apparatus and instruments, indicators and laboratory materials including those for scientific research in laboratories other than for medical use; Apparatus for recording, transmission or reproduction of sound or images (including apparatus and peripheral devices for data processing, telecommunication and reproduction); Magnetic and optical data carriers and software recorded in these; downloadable electronic publications, recorded to magnetic and optical media; magnetic/optical cards; Antennas, satellite dishes, amplifiers and their parts; Ticket dispensers, automated teller machines; Electronic components used in machines and apparatus; Counters measuring amount of consumption in unit time and time clocks; Protective suits and life saving apparatus and equipment (including ear plugs for divers); Glasses, sunglasses, contact lenses and their boxes, covers, parts and accessories; Apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity (including cables used for electric and electronic purposes, batteries, accumulators, anodes and cathodes); Apparatus for warning and alarms [other than for vehicles], electric bells; Signaling devices and apparatus used in traffic; Fire extinguishing apparatus including fire engines (including fire hoses and fire hose nozzles); Radar apparatus, sonars, apparatus and devices providing night vision; Magnets, decorative magnets.
Class 11: Lighting apparatus and installations (lighting installations for vehicles, interior and exterior spaces); Devices for cooking, heating and vapor producing installations and apparatus (including electric ovens, microwave ovens, gas ovens, electric heating apparatus or heating apparatus for solid, liquid or gaseous fuels, electric tea and coffee makers and machines); Air conditioning devices; Cooling apparatus, namely refrigerators, milk coolers, water coolers, ice-boxes, ice machines and devices, freezers; Electric and gas operated apparatus, machines and devices used in cooling, drying and boiling (including electric and heating-operated laundry dryers, hair dryers and hand drying apparatus); Sanitary installations, sanitary ware; Water softening apparatus, water purifying apparatus, water purification installations; Bedwarmers and electric blankets not for medical purposes, heating cushions and pads not for medical purposes, electric or non-electric footwarmers, hot water bottles; Filters and filter-motor combinations for aquariums; Industrial type cooking, drying and cooling installations; Pasteurizers and sterilizers; Laundry dryers.
Class 38: Telecommunications; television broadcasting and television transmission services; radio broadcasting services.
Class 41: Education; providing of training; entertainment; sporting and cultural activities; providing on-line directories and databases in relation to publishing printed matter, books, magazines, instructional and teaching material, educational matter, periodicals and cooking recipes; entertainment services provided by television, radio, television entertainment, satellite television shows, audiovisual recordings featuring motion picture film and television entertainment; rental of motion pictures and showing of cinematographic and motion picture films, pre-recorded videotapes, DVDs and CDs featuring motion picture film and television entertainment.
An interpretation of the wording of the list of goods and services is required to determine the scope of protection of these goods and services.
The term ‘including’, used in the applicant’s specifications of goods, indicates that the specific goods are only examples of items included in the category and that protection is not restricted to them. In other words, it introduces a non-exhaustive list of examples (see the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).
However, the term ‘namely’ used in the applicant’s and the opponent’s lists of goods and/or services to show the relationship of individual goods and/or services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed goods or services.
As a preliminary remark, it is also to be noted that according to Article 28(7) EUTMR, goods or services are not regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.
The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.
Contested goods in Class 7
The contested machines and robotic mechanisms used in the agriculture overlap with the opponent’s separators (which include separators for agricultural use). Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested machines and robotic mechanisms used in viticulture include, as broader categories the opponent’s wine presses. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested machines and robotic mechanisms used in processing cereals / fruits / vegetables / food; electrical appliances used in kitchen for chopping, grinding, crushing, whisking and milling and electrical machines for cleaning floors and carpets, vacuum cleaners are included in or overlap with the opponent’s broad category of electric domestic and household machines included in this class. Therefore, they are considered identical.
The contested packaging machines and robots and robotic mechanisms with the same function as the above-mentioned machines (including electrical apparatus for sealing plastics [packaging]) include or overlap with the opponent’s wrapping machines. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested separators are identically listed in the specification of the earlier mark. The contested robots and robotic mechanisms with the same function as the above-mentioned machines (i.e. separators) are covered by the opponent’s separators. Therefore, these goods are identical.
The contested textile washing machines and industrial robots with the same function as the above-mentioned machines are covered by the opponent’s broad category of washing machines which also include industrial robot washing machines. Therefore, these goods are considered identical.
The contested washing machines (laundry / dishwashing machines) are covered by the broad category of the opponent’s washing machines. Therefore, they are identical.
The contested laundry dryers, namely machines not drying with heating method are covered by the opponent’s drying machines. Therefore, they are identical.
The contested waste management installations include, as a broader category the opponent’s waste disposers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested sewing machines overlap with the opponent’s broad category of electric domestic and household machines included in this class which includes sewing machines for household purposes. Therefore, they are considered identical.
The contested vehicle washing installations and robots with the same function as the above-mentioned machines and tools overlap with the opponent’s broad category of washing machines which includes car washing machines. Therefore, they are considered identical.
The contested and their parts [electrical machines for cleaning floors and carpets, vacuum cleaners] are similar to the opponent’s broad category of electric domestic and household machines included in this class which covers electrical machines for cleaning floors and carpets, vacuum cleaners. Parts for such goods are complementary, they share the same distribution channels and target the same relevant public and are also often produced by the same manufacturers.
The opponent’s broad category of hand tools in Class 8 covers non-electric tools used by hand and includes goods such as hand-operated guns and spray guns, punching dies, drills, hand saws and jig-saws, cutting and surface treatment hand tools, non-electric soldering irons and hand-operated tools for treatment of materials. The contested painting machines, automatic spray guns for paint, electric punching machines and punches for punching machines, electric glue guns, guns for compressed air or liquid spraying machines, electric hand drills, motor hand saw, jigsaw machines, and robots with the same function as the above-mentioned machines and tools; welding machines, electric arc welding apparatus, electric welding apparatus, electric arc cutting apparatus, electrodes for welding machines and robots with the same function as the above-mentioned; machines, looms for working and shaping wood, metal, glass and plastic material and metals (including galvanizing machines and electroplating machines); robotic mechanisms for working and shaping wood, metal, glass and plastic material and metals, although of a different nature, can therefore have the same or a similar purpose as the opponent’s hand tools; they can be in competition, have the same distribution channels and target the same relevant public. Therefore, these goods are considered similar.
The broad categories of the contested engines, electrical engines which include such goods for washing machines are similar to the opponent’s washing machines as they can coincide in producer, end user and distribution channels. Furthermore, they are complementary.
The contested filling-plugging and finishing machines, labeling machines and robots and robotic mechanisms with the same function as the above-mentioned machines are at least similar to a low degree to the opponent’s wrapping machines. These goods can be used in combination, have the same distribution channels, target the same relevant public and be produced by the same undertakings.
The contested compressed air pumps, compressors and pumps other than parts of machines or engines (including fuel dispensing pumps and guns for these) are similar to a low degree to the opponent’s broad category of apparatus for water supply and sanitary purposes in Class 11. These goods can have the same distribution channels, target the same relevant public and be produced by the same undertakings.
The contested industrial robots with the same function as the above-mentioned machines [sewing machines] are at least similar to a low degree to the opponent’s electric domestic and household machines included in this class which include sewing machines for household purposes. These goods have the same purpose; they can have the same method of use and be produced by the same undertakings.
The contested industrial robots for working and shaping wood, metal, glass and plastic material and metals (including galvanizing machines and electroplating machines); heavy machinery for working and shaping wood, metal, glass and plastic material and metals, although they can have the same or a similar purpose as the opponent’s hand tools in Class 8, they are not in competition or complementary; they do not have the same distribution channels and are not normally produced by the same manufacturers or target the same relevant public. Therefore, these goods are considered dissimilar. These goods are also dissimilar to all other of the opponent’s goods and services as they do not share any of the relevant factors either.
The remaining contested goods lifting, conveying and transportation machines, robotic mechanisms with the same function (including lifts, escalators, cranes); engine parts and equipments and electrical engine parts and equipments other than for land vehicles (including parts, electric door openers-closers used in land vehicles and included in this class); bearings, ball-bearings or roller bearings; tire mounting and dismounting machines; alternators, generators, generators of electricity, generators working with solar energy; spiral machines and robots with the same function as the above-mentioned machines and tools; printing machines; textile milling, scotching or tentering machines and industrial robots with the same function as the above-mentioned machines; vending machines; power supply apparatus [generators] are dissimilar to all the opponent’s goods and services. The opponent’s goods and services in Classes 7, 8, 9, 11, 16, 20, 21, 24, 25, 32, 35, 41 and 43 all have a different nature and purpose to these goods, they are not complementary nor in competition and they are not normally produced by the same manufacturers or target the same relevant public.
The opponent contends that the contested power supply apparatus [generators] are similar to its charging systems for battery operated domestic appliances in Class 9. However, whilst the contested goods supply electric energy to an electrical load the primary purpose of which is to convert one form of electrical energy to another, the purpose of the opponent’s goods is to re-charge the battery of domestic appliances. Therefore, these goods do not have the same nature or purpose and do not share any other of the relevant factors outlined above. As a result, the Opposition Division considers that there is no sufficient point of contact between these goods for a finding of a degree of similarity. Therefore, they must be held to be dissimilar.
Contested goods in Class 8
The contested forks, spoons, knives and non-electric cutlery for cutting, chopping, peeling purposes, including those of precious metals are included in the opponent’s broad category of cutlery. Therefore, these goods are identical.
The contested cutting and jabbing/stabbing arms overlap with the opponent’s knives. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested tools and appliances included in this class used for personal care in shaving, depilation, manicure, pedicure and beauty-care (including hair straighteners and hair curling implements, scissors) include or overlap with the opponent’s razors, blades and scissors. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested hand-operated tools for repair of machines, appliances and vehicles, hand-operated tools for building, agriculture, gardening and forestry are included in the opponent’s broad category of hand tools. Therefore, these goods are identical.
The contested non-electric irons include goods such as flat irons which are also included in the broad category of the opponent’s hand tools. Therefore, these goods are identical.
The contested electric irons have the same purpose as flat irons covered by the opponent’s hand tools; they often have the same commercial origin and distribution channels. Furthermore, they can target the same relevant public and be in competition. Therefore, the contested electric irons are highly similar to the opponent’s broad category of hand tools.
Contested goods in Class 9
Measuring apparatus and instruments are identically contained in both lists of goods.
The contested indicators and laboratory materials including those for scientific research in laboratories other than for medical use overlap with the opponent’s broad categories of measuring apparatus and measuring instruments. Therefore, they are identical.
Apparatus for recording, transmission or reproduction of sound or images (including apparatus and peripheral devices for data processing, telecommunication and reproduction) are identical to the opponent’s apparatus for recording, transmission or reproduction of sound or images as the contested goods listed after the term ‘including’ are only examples of items included in the broader categories preceding that term.
Magnetic data carriers are identically contained in both lists of goods.
The contested optical data carriers include, as a broader category, the opponent’s CDs. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested software recorded in these [magnetic and optical data carriers] overlaps with the opponent’s computer software. Therefore, they are identical.
The contested downloadable electronic publications, recorded to magnetic and optical media are included in the opponent’s downloadable electronic publications. Therefore, they are identical.
The contested counters measuring amount of consumption in unit time and time clocks are included in the opponent’s broad category of measuring apparatus. Therefore, they are identical.
The contested antennas, satellite dishes, amplifiers either overlap with or are included in the opponent’s broad category of telecommunications apparatus. Therefore, they are identical.
The contested protective suits overlap with the opponent’s clothing for protection against fire. Therefore, they are identical.
The contested life saving apparatus and equipment (including ear plugs for divers) are identical to the opponent’s life saving apparatus and equipment as the contested goods listed after the term ‘including’ are only examples of items included in the broader categories preceding that term.
The contested glasses, sunglasses and contact lenses are identical to the opponent’s spectacles, sunglasses and contact lenses (including synonyms).
The contested their boxes, covers and accessories [glasses, sunglasses and contact lenses] include the opponent’s cases for spectacles, sunglasses and contact lenses. Since the Opposition Division cannot dissect ex officio the broad categories of the contested goods, they are considered identical to the opponent’s goods.
The contested fire extinguishing apparatus including fire engines (including fire hoses and fire hose nozzles) are identical to the opponent’s fire extinguishing apparatus as the contested goods listed after the term ‘including’ are only examples of items included in the broader category preceding that term.
The contested apparatus for warning and alarms [other than for vehicles] includes, as a broader category, the opponent’s smoke detectors. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested signaling devices and apparatus used in traffic include acoustic alarms which are also covered by the opponent’s apparatus for reproduction of sound. Therefore, they are identical.
The contested magnetic/optical cards are plastic cards which have magnetic or laser sensitive stripes on them to store different kinds of information. The opponent’s smart cards are plastic cards that contain an embedded computer chip that stores and transacts data. This data is usually associated with either value, information, or both and is stored and processed within the card's chip. As a result, the contested magnetic/optical cards and the opponent’s smart cards have the same essential nature (plastic cards for storage of information and data), can share the same purpose and are normally manufactured by the same undertakings; they also have the same distribution channels, often target the same relevant public and can be in competition. Therefore, these goods are highly similar.
The contested electric bells include electric fire alarm bells. Therefore, they are similar to the opponent’s smoke detectors. These goods can be used in combination, share the same distribution channels, target the same relevant public and often be produced by the same manufacturers.
The contested and their parts [antennas, satellite dishes, amplifiers] are similar to the opponent’s broad category of telecommunications apparatus which covers antennas as communications apparatus, satellite dishes and amplifiers. Parts for such goods share the same distribution channels and target the same relevant public and will be expected to be produced by the same manufacturers. Furthermore, they can also be complementary.
The contested their parts [glasses, sunglasses and contact lenses] are similar to the opponent’s spectacles, sunglasses and contact lenses. Parts for such goods share the same distribution channels and sales outlets, target the same relevant public and are also often produced by the same manufacturers. Furthermore, they can also be complementary.
The broad category of the contested electronic components used in machines and apparatus contain, inter alia, electronic parts intended for the implementation in computers (which are programmable machines). Therefore, the contested goods are similar to the opponent’s computers as the goods can have the same distribution channels and sales outlets and may have the same producers. In addition, considering that nowadays many computer users improve their computers themselves by changing or replacing accessories and components in order to obtain better performance, they can also target the same relevant public. Furthermore, these goods may also be complementary as some electronic components are essential to computers.
Apparatus and instruments for conducting or accumulating electricity (including cables used for electric and electronic purposes, batteries, accumulators, anodes and cathodes) are similar to the opponent’s apparatus for recording, transmission or reproduction of sound or images. These goods can be complementary, share the same distribution channels and target the same relevant public.
The contested magnets and decorative magnets are similar to the opponent’s stationery in Class 16. The contested goods are routinely used as a decorative or functional piece of stationery at home (e.g. fridge magnets) or in the office environment (e.g. board magnets) to hold reminders or sheets of paper in presentations. Therefore, these goods can have the same purpose, share the same distribution channels and target the same relevant public.
The contested radar apparatus and sonars are devices that are normally controlled or managed by software. In this respect, the contested goods are similar to the opponent’s computer software. The goods can have a complementary relationship as computer software is essential for the performance and use of the contested goods; they can target the same relevant public, usually be produced by the same manufacturers and be distributed through the same channels.
The contested apparatus and devices providing night vision are similar to the opponent’s spectacles which include spectacles for night vision. These goods can therefore have the same purpose, target the same relevant public, be distributed through the same channels and be produced by the same manufacturers.
Apparatus and instruments for switching, transforming, regulating or controlling electricity are similar to a low degree to the opponent’s measuring apparatus and measuring instruments. These goods can share the same distribution channels, target the same relevant public and be produced by the same manufacturers.
The contested ticket dispensers are machines that produce tickets. For instance, ticket dispensers dispense train tickets at railway stations, transit tickets at metro stations and tram tickets at some tram stops and in some trams. The typical transaction consists of a user using the display interface to select the type and quantity of tickets and then choosing a payment method of either cash, credit/debit card or smartcard. Such electronic devices are, essentially, a computer, or apparatus that processes given data, i.e. those recorded on the card and those typed in by the user, verifies certain requirements and, if the verification is successful, delivers the requested amount of money or ticket. The contested automated teller machines, usually known as ATMs, are electronic devices that allow a bank's customers to make cash withdrawals and check their account balances at any time without the need for a human teller. Many ATMs also allow people to deposit cash or cheques, transfer money between their bank accounts or even buy postage stamps. Considering the above method of use and the nature of the goods, there is a link between the contested ticket dispensers and automated teller machines and the opponent’s computers. Moreover, the goods can share the same commercial origin and target the same relevant public. Therefore, the goods are at least similar to a low degree.
Contested goods in Class 11
The contested lighting apparatus and installations (lighting installations for vehicles, interior and exterior spaces) are covered by or overlap with the opponent’s broad category of apparatus for lighting. Therefore, they are identical.
The contested devices for cooking, heating (including electric ovens, microwave ovens, gas ovens, electric heating apparatus or heating apparatus for solid, liquid or gaseous fuels, electric tea and coffee makers and machines) are identical to the opponent’s apparatus for cooking, heating (including synonyms) as the contested goods listed after the term ‘including’ are only examples of items included in the broader categories preceding that term.
The contested devices for vapor producing installations and apparatus include or overlap with the opponent’s apparatus for steam generating. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested cooling apparatus, namely refrigerators, milk coolers, water coolers, ice-boxes, ice machines and devices, freezers are covered by the opponent’s broad category of apparatus for refrigerating. Therefore, they are identical.
The contested sanitary installations, sanitary ware; water softening apparatus, water purifying apparatus, water purification installations are covered by or overlap with the opponent’s broad category of apparatus for water supply and sanitary purposes. Therefore, they are identical.
The contested electric and gas operated apparatus, machines and devices used in cooling, drying and boiling (including electric and heating-operated laundry dryers, hair dryers and hand drying apparatus) are covered by or overlap with the opponent’s broad categories of apparatus for refrigerating, drying and heating. Therefore, they are identical.
The contested industrial type cooking, drying and cooling installations overlap respectively with the opponent’s respective broad categories of apparatus for cooking, drying and refrigerating. The contested laundry dryers are covered by the broad category of apparatus for drying of the earlier mark. Therefore, they are identical.
The contested air conditioning devices include, as a broader category, the opponent’s air cooling apparatus. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.
The contested bedwarmers and electric blankets not for medical purposes, heating cushions and pads not for medical purposes, electric or non-electric footwarmers, hot water bottles are included in the opponent’s broad category of apparatus for heating. Therefore, they are identical.
The contested pasteurizers are apparatus used for heating beverages or solid foods to destroy harmful or undesirable microorganisms or to limit the rate of fermentation by the application of controlled heat and are thus included in the opponent’s broad category of apparatus for heating. Therefore, they are identical.
The contested sterilizers are included in the opponent’s broad category of apparatus for sanitary purposes. Therefore, they are identical.
The contested filters and filter-motor combinations for aquariums are similar to the opponent’s water sterilisers which include aquarium water sterilisers. Therefore, these goods can have a similar purpose, target the same relevant public, share the same distribution channels and often be produced by the same manufacturers.
Contested services in Class 38
The contested telecommunications are similar to the opponent’s computers in Class 9. These goods and services have a complementary character; although their nature is different, their purpose and distribution channels are the same (judgment of 12/11/2008, T-242/07, Q2web, EU:T:2008:488, § 24-26).
The contested television broadcasting and television transmission services; radio broadcasting services are similar to the opponent’s broadcasting apparatus in Class 9 for the same reasons as those given above.
Contested services in Class 41
The contested education; providing of training; entertainment; cultural activities are identically included in both lists of services.
The contested entertainment services provided by television, radio, television entertainment, satellite television shows, audiovisual recordings featuring motion picture film and television entertainment; showing of cinematographic and motion picture films, pre-recorded videotapes, DVDs and CDs featuring motion picture film and television entertainment are included in the opponent’s broad category of entertainment services. Therefore, they are identical.
The contested providing on-line directories and databases in relation to publishing printed matter, books, magazines, instructional and teaching material, educational matter, periodicals and cooking recipes are included in the opponent’s broad category of publication. Therefore, they are identical.
The contested rental of motion pictures is covered by the opponent’s rental of films. Therefore, they are identical.
The contested sporting activities are similar to the opponent’s cultural activities. These services can have the same purpose, target the same relevant public and be offered by the same providers.
- Relevant public — degree of attention
The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.
In the present case, the goods and services found to be identical or similar to varying degrees are directed at the public at large and at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high, depending on the specialised nature of the goods or services, the frequency of purchase and their price.
- The signs
KITCHIN | |
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 earlier mark is the word mark ‘KITCHIN’ and the contested sign is a figurative mark consisting of the verbal element ‘K!TCHN’ depicted in bold, spaced uppercase letters in a standard typeface. The second character of the contested sign is an exclamation mark. Neither ‘KITCHIN’ nor ‘K!TCHN’ has, as such, any meaning in relation to the relevant goods and services and are therefore distinctive.
However, the exclamation mark in ‘K!TCHN’ resembles a letter ‘i’ turned upside down and, in view of its position within the contested sign, it will be perceived as referring to the letter ‘I’. The vowel that is used to pronounce a single ‘N’ letter is likely to be added by consumers between the letters ‘CH’ and ‘N’ when referring to the contested sign to make it pronounceable. Therefore, and as the ‘N’ letter is typically pronounced as /EN/, most of the relevant public in the EU is likely to pronounce the contested sign as ‘KITCHEN’. As regards the earlier mark, the opponent mentions that ‘KITCHIN’ is an uncommon surname (presumably in the United Kingdom). Therefore, part of the English-speaking public may perceive the earlier mark as referring to a surname. However, part of the English-speaking public may also perceive the earlier mark as a misspelling of the word ‘KITCHEN’. Therefore, part of the English-speaking public in the relevant territory is likely to perceive both the contested sign and the earlier mark as referring to the word ‘KITCHEN’ and, therefore, as only of weak distinctive character in relation to some of the relevant goods and services which are, or may be, household-related. Nevertheless, consumers in the non-English-speaking parts of the relevant territory (such as Romania and Lithuania) are not likely to generally understand the meaning of the English word ‘KITCHEN’ and, therefore, they will perceive the contested sign and the earlier mark as having no meaning and thus as being distinctive for all the relevant goods and services.
The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.
In view of the above, the Opposition Division finds it appropriate to focus the comparison of the signs on the part of the public in non-English-speaking territories such as Romania and Lithuania.
Visually, the signs coincide in the letters ‘K-*-T-C-H-*-N’. However, they differ in the second letter/symbol contained in each sign which consists of the letter ‘I’ and an exclamation mark, ‘!’, respectively. The signs also differ in that the penultimate letter in the earlier mark is not present in the contested sign.
The applicant argues that the signs differ visually in that the letters of the contested sign are wider spaced. While it is true that the contested sign is figurative, as explained above, the stylisation of the script is fairly standard and does not significantly impact the visual impression produced by the sign or impede consumers from perceiving the element ‘K!TCHN’ as such. Therefore, this claim of the applicant must be set aside.
The applicant also argues that the exclamation mark in the contested sign dominates its visual impression and that the signs are therefore visually similar only to a low degree. However, the contested sign is not dominated by any particular letter or symbol and, as mentioned above, the exclamation mark resembles a letter ‘i’ turned upside down and is thus highly similar to the letter ‘I’. In addition, the only other difference between the signs is the penultimate letter, ‘I’, in the earlier mark which is omitted in the contested sign. However, taking into account that this letter is simply a vertical line and missing at the end of the contested sign, this does not have a significant impact on the visual similarity between the signs.
Therefore, the signs are visually highly similar.
Aurally, contrary to the applicant’s arguments that the contested sign does not contain any vowels and would therefore be difficult to pronounce, due to the position of the exclamation mark and the fact that it resembles a letter ‘i’ turned upside down, it will be read as a letter ‘I’. Therefore and irrespective of the different pronunciation rules in the relevant territories, the signs coincide in the first syllable /KITCH/, present identically in both signs. However, for the reasons outlined above, the pronunciation of the signs differs in the second syllable /IN/ and /EN/ respectively. Nevertheless, although slightly different, the pronunciation of the respective second syllables within the signs is almost the same and this slight difference is produced at the end of the signs.
Therefore, the signs are aurally highly similar.
Conceptually, it may reasonably be assumed that, given its position, the exclamation mark in the contested sign will not be perceived on its own as evoking the concept of expressing an exclamation and, therefore, as explained above, neither of the signs have a meaning as a whole for the public in the relevant territories. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.
As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.
- Distinctiveness of the earlier mark
The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.
The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.
Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark has no meaning for any of the goods and services in question from the perspective of the public in the relevant territories. Therefore, the distinctiveness of the earlier mark must be seen as normal.
- Global assessment, other arguments and conclusion
Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).
Account should also be 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).
In the present case, the goods and services at issue are identical, similar to varying degrees or dissimilar and the degree of attention of the relevant public will vary from average to high.
The earlier mark has a normal degree of distinctiveness. Despite the slight differences between the signs due to the exclamation mark present in the contested sign in the second position instead of a letter ‘I’, the slight stylisation of the script and the omission of the penultimate letter ‘I’ of the earlier mark, the signs are visually and aurally highly similar overall and there is no conceptual aspect that could help consumers to differentiate the signs.
Therefore, not even the low degree of similarity between some of the relevant goods nor the higher degree of attention displayed by the relevant public in relation to some of the relevant goods and services, can offset the high degree of similarity between the signs, in particular bearing in mind the lack of a conceptual difference between them and considering that even consumers who pay a high degree of attention need to rely on their imperfect recollection of the signs.
Consequently, the Opposition Division considers that there is a likelihood of confusion on part of the relevant public in Romania and Lithuania within the meaning of Article 8(1)(b) EUTMR in relation to all the goods and services found to be identical or similar, including to a low degree only. 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.
The applicant argues that the visual perception of the signs plays a greater role in the global assessment of a likelihood of confusion in relation to most of the relevant goods in Classes 7, 8, 9 and 11 and that the considerable visual differences between the signs are therefore particularly relevant. However, for the reasons outlined above in section c) of this decision, the signs at issue are visually highly similar and the slight differences between them do not have a considerable impact on the overall visual impression they produce. As a result, even if some of the relevant goods are mainly purchased on a visual basis, this cannot alter the finding of a likelihood of confusion reached above.
Therefore, the opposition is partially well founded on the basis of the opponent’s European Union trade mark registration No 9 789 173. It follows that the contested trade mark must be rejected for all the contested goods and services found to be identical or similar to varying degrees.
The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1)(b) EUTMR, the opposition based on this article and directed at these goods cannot be successful.
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 will 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
Milda CERNIAUSKAITE | Sam GYLLING | Oana-Alina STURZA |
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.