prima cucina | Decision 2617598

Date Published: Sep 25, 2017

OPPOSITION No B 2 617 598

Compagnie des Gaz de Pétrole Primagaz, Tour Opus 12, 77 Esplanade du Général de Gaulle, 92081 Paris La Défense Cedex, France (opponent), represented by Cabinet Flechner, 22, avenue de Friedland, 75008 Paris, France (professional representative)

a g a i n s t

Media Fact IP AG, Montanastrasse 7, 6052 Hergiswil, Switzerland (applicant), represented by Dr. Prasse & Partner mbB Rechtsanwälte, Rathausplatz 9, 22926 Ahrensburg, Germany (professional representative).

On 12/07/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 617 598 is partially upheld, namely for the following contested goods and services:

Class 7: Sweeping, cleaning, washing and laundering machines; Machines and machine tools for treatment of materials and for manufacturing; Ironing machines and laundry presses.

Class 11: Lighting and lighting reflectors; Flues and installations for conveying exhaust gases; Burners, boilers and heaters; Filters for industrial and household use; Heating, ventilating, and air conditioning and purification equipment (ambient); Industrial treatment installations; Food and beverage cooking, heating, cooling and treatment equipment; Refrigerating and freezing equipment; Personal heating and drying implements; Regulating and safety accessories for water and gas installations; Sanitary installations, water supply and sanitation equipment; Drying installations; Vehicle lighting and lighting reflectors; Chemical processing equipment; Gas cleaners and purifiers; Industrial ovens and furnaces (not for food or beverages).

Class 21: Tableware, cookware and containers; Glasses, drinking vessels and barware.

Class 38: Telecommunication services; Broadcasting services; Computer communication and Internet access; Telephone services; Provision and rental of telecommunications facilities and equipment.

Class 39: Storage of goods; Distribution by pipeline and cable.

Class 41: Education, entertainment and sports; Audio and video production, and photography; Library services; Education and instruction; Sports and fitness; Gambling; Exhibition services for educational purposes; Exhibition services for entertainment purposes; Consultancy and information services relating to arranging, conducting and organisation of colloquiums; Consultancy and information services relating to arranging, conducting and organisation of congresses; Consultancy and information services relating to arranging, conducting and organisation of conferences; Art exhibition services; Conference services; Providing museum facilities [presentation, exhibitions]; Operating quizzes; Organisation of seminars; Conducting of seminars and congresses; Conducting of competitions on the Internet; Arranging and conducting educational conferences; Conducting entertainment exhibitions in magic shows; Conducting of phone-in competitions; Arranging and conducting of conferences, congresses and symposiums; Arranging and conducting of competitions [education or entertainment]; Organisation of quizzes, games and competitions; Arranging of conventions for entertainment purposes; Arranging of conventions for business purposes; Organisation of dancing competitions; Diving exhibitions (Organising of -); Organisation of professional golf tournaments or competitions; Arranging of competitions via the Internet; Organization of competitions; Arranging and conducting of seminars; Congresses; Seminars; Arranging of lectures; Organising of entertainment competitions; Publishing and reporting.

2. European Union trade mark application No 14 465 132 is rejected for all the above goods and 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 14 465 132. The opposition is based on:

French trade mark registration No 1 338 930 for the word mark ‘PRIMA’;

French trade mark registration No 3 812 250 for the figurative mark ‘’;

European Union trade mark registration No 3 540 119 for the figurative mark
‘’.

The opponent invoked Article 8(1)(b) EUTMR.

SUBSTANTIATION OF EARLIER FRENCH TRADE MARK NO 1 338 930

According to Article 76(1) EUTMR, in proceedings before it the Office will examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, the Office is restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

It follows that the Office cannot take into account any alleged rights for which the opponent does not submit appropriate evidence.

According to Rule 19(1) EUTMIR, the Office will give the opposing party the opportunity to present the facts, evidence and arguments in support of its opposition or to complete any facts, evidence or arguments that have already been submitted together with the notice of opposition, within a time limit specified by the Office.

According to Rule 19(2) EUTMIR, within the period referred to above, the opposing party must also file proof of the existence, validity and scope of protection of its earlier mark or earlier right, as well as evidence proving its entitlement to file the opposition.

In particular, if the opposition is based on a registered trade mark which is not a European Union trade mark, the opposing party must provide a copy of the relevant registration certificate and, as the case may be, of the latest renewal certificate, showing that the term of protection of the trade mark extends beyond the time limit referred to in paragraph 1 and any extension thereof, or equivalent documents emanating from the administration by which the trade mark was registered — Rule 19(2)(a)(ii) EUTMIR.

In the present case the evidence filed by the opponent consists of a renewal certificate dated 24/11/2006.

The evidence mentioned above is not sufficient to substantiate the opponent’s earlier French trade mark No 1 338 930, because, according to the certificate of renewal, the date of declaration of renewal was 29/11/2005. Consequently, based on the filing date as the starting point of renewal for every 10 years, the mark, filed on 17/01/1986 expired on 17/01/2016. There is no evidence that the term of protection of the trade mark was extended beyond the time limit that had been given to the opponent to substantiate its earlier rights which expired on 19/07/2016.

According to Rule 20(1) EUTMIR, if until expiry of the period referred to in Rule 19(1) EUTMIR the opposing party has not proven the existence, validity and scope of protection of its earlier mark or earlier right, as well as its entitlement to file the opposition, the opposition will be rejected as unfounded.

The opposition must therefore be rejected as unfounded, as far as it is based on this earlier mark.

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 Division will first examine the opposition in relation to earlier French trade mark registration No 3 812 250.

FRENCH TRADE MARK REGISTRATION NO 3 812 250

The goods and services

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

Class 9: Apparatus for broadcasting, recording the transmission or reproduction of sound or images, telephone apparatus; phonograph record, magnetic disks and optical, digital optical discs, digital video discs, video discs; electronic diaries, digital note-pads; computer program intended for for use in localisation, recovery and the reception of texts, of electronic documents, graphic and of audio visual information onto of networks premises, at zone extended and global including the networks internal and the network Internet; computer program intended for for use into development of programmes and the creation of sites; video games and game computer adapted for use only with a television receiver.

Class 16: Publications, newspapers, periodicals, magazines, journals, books, printed, posters, diaries, albums, almanacs, foil of advertisements, atlases, calendars, catalogues, photographs; instructional and teaching material (other than apparatus); instructional manuals; documentation on paper aids and all carriers of paper and of cardboard in the computer science and/or in the recordal of computer programmes and for the restoring of data.

Class 35: Advertising services, radio advertising and televised, on-line advertising on a computer network; advertising control; direct mail advertising, samples, prospectuses, printed, newspaper free), dissemination of advertising matter, services of insertion of advertising messages, mail advertising, publication of advertising texts, sales promotion for others, the rental of advertising space, rental of advertising time on all means of communication. assistance to industrial enterprises or commercial in the driving of their business, organisation consulting, direction, information or business enquiries, compilation of information, economic forecasting, study and market research; collection of data in a master file, computerised file management, computer relief, services of administrative management of computers; arranging newspaper subscriptions for others; secure archiving (entry) for electronic media; exploitation of patents, namely transfer (setting at disposal) of a know how commercial.

Class 38: News agencies and news information. Communications by telephone, by radiotelephone, by telegrams and by all types of remote processing : transmission by data transmission of information accessible by access code or terminals, services relating to the transmission of information and of data by telematic means with a view to obtaining information contained in data banks and image banks; telecommunications, namely; issue and reception of data, signals and telecommunications; sending and transmission of telegrams, exchange of computer documents, electronic exchanges of information by telex, facsimile machines and servers; videotext, teletext and view data services; teleconferencing services, video messaging services, video conferencing services, video telephone services; electronic mail, dissemination of information by electronic means, among other via worldwide (Internet) or private access communications networks (Intranet); transmission of data via communicating information systems namely; network Internet, Extranet, Intranet; services relating to the transmission of information via secured messaging systems; television broadcasting, radio broadcasting.

Class 41: Publishing services and of publication of texts other than advertising, newspapers, periodicals and of all sound carriers and/or visual and of mounts multi-media (interactive discs, records compacts compact smart read-only, digital video discs), services of publishing of programmes multi-media (setting in computer science shape of texts and/or images, fixed or animated, and or of sounds (musical or not), for interactive use or not. Electronic publication of books and periodical on line. Educational, teaching and entertainment services; correspondence courses, courses given as part of seminars, training courses, conferences or forums; organization of exhibitions for cultural or educational purposes; arranging and conducting of colloquiums, conferences and congresses; organisation of competitions (education or entertainment) or games; games offered online on a computer network; production of radio and television programmes; television entertainment; film production and shows, photographic reporting. Providing recreation facilities.

Class 42: Rental of software, computers, rental of apparatus and of telecommunication installations and processing of data, rental of access time to a computer system, leasing access time to a computer database, rental of programs on data processing carriers and by means of telecommunication; software maintenance services, updating computer software; design producing software, designing (development) of programmes for processing of data and of texts of enterprises, services of creation {design development) of pictures virtual and interactive, creation (design development) and website management; hosting the web-sites of others; technical standardisation, namely drawing up standards for televisual and radio communication, data communication standards and data processing standards; electronic programming, computer programming, duplication of computer programs; engineering service, transposition of software applications; certification services (control) enabling the certifying of messages and of data transmitted by telecommunication; remote loading of video games, digital data and computer software; patent exploitation.

The contested goods and services are the following:

Class 3: Toiletries; Cleaning and fragrancing preparations; Tailors' and cobblers' wax; Animal grooming preparations; Essential oils and aromatic extracts; Body cleaning and beauty care preparations; Perfumery and fragrances; Oral hygiene preparations; Vehicle cleaning preparations; Leather and shoe cleaning and polishing preparations; Household fragrances; Laundry detergent.

Class 7: Dispensing machines; Current generators; Sweeping, cleaning, washing and laundering machines; Agricultural, earthmoving, construction, oil and gas extraction and mining equipment; Machines and machine tools for treatment of materials and for manufacturing; Engines, powertrains, and generic machine parts; Pumps, compressors and fans; Robots; Moving and handling equipment; Exterior clearing and cleaning equipment; Ironing machines and laundry presses; Construction equipment; Clearing saws [machines]; Rechargeable hedge cutters; Tree branch cutters [machines]; Riding lawn mowers; Broadcast seeders; Bailing machines; Tree branch pruners (Electric -); Tree stump cutters; Pruning saws [electric]; Pruning saws [motorised]; Incubators for eggs; Threshing machines; Bunchers [machines]; Harrows; Harvesting heads; Electric lawnmowers; Fodder presses; Horticultural machines; Garden rotavators; Grain harvesters [machines]; Reapers; Grain driers; Hedge trimmers [machines]; Tedders; Power blowers for lawn debris; Timber harvesting machinery; Chaff cutter blades; Edgers [machines]; Power driven hedge shears; Agricultural machines; Agricultural machines for ploughing; Agricultural seed planting machine; Agricultural machine tools; Grass collecting machines; Barley splitting machines; Reapers and binders; Reapers and threshers; Harvesting machines; Milking machines; Ploughshares; Ploughs; Lawnmowers [machines]; Conveyors and conveyors belts; Lifting and hoisting equipment, elevators and escalators; Packing machines; Opening and closing mechanisms.

Class 8: Hygienic and beauty implements for humans and animals; Hand-operated tools and implements for treatment of materials, and for construction, repair and maintenance; Lifting Tools; Edged and blunt weapons; Food preparation implements, kitchen knives and cutlery; Hair cutting and removal implements; Hair styling appliances; Manicure and pedicure tools; Body art tools; Fire tending implements; Hand tools for construction, repair and maintenance; Agricultural, gardening and landscaping tools; Animal slaughtering and butchering implements.

Class 11: Lighting and lighting reflectors; Flues and installations for conveying exhaust gases; Burners, boilers and heaters; Sun tanning appliances; Filters for industrial and household use; Heating, ventilating, and air conditioning and purification equipment (ambient); Industrial treatment installations; Nuclear installations; Food and beverage cooking, heating, cooling and treatment equipment; Refrigerating and freezing equipment; Personal heating and drying implements; Regulating and safety accessories for water and gas installations; Sanitary installations, water supply and sanitation equipment; Drying installations; Vehicle lighting and lighting reflectors; Chemical processing equipment; Gas cleaners and purifiers; Industrial ovens and furnaces (not for food or beverages).

Class 21: Brushes and brush-making articles; Tableware, cookware and containers; Cosmetic and toilet utensils and bathroom articles; Cleaning articles; Statues, figurines, plaques and works of art, made of materials such as porcelain, terra-cotta or glass, included in the class; Unworked and semi-worked glass, not specified for use; Air fragrancing apparatus; Glasses, drinking vessels and barware; Holders for flowers; Window-boxes; Flower baskets; Flower bowls; Containers for flowers; Seed trays; Bowls for floral decorations; Bowls for plants; Nozzles for hosepipes; Spray nozzles for garden hoses; Sprayers attached to garden hoses; Plant syringes; Vases; Glass vases; Planters of glass; Planters of earthenware; Aquaria and vivaria; Devices for pest and vermin control; Wire cages for household pets; Electronic pet feeders; Filters for use in cat litter pans; Small animal feeders; Bird feeders for feeding caged birds; Bird feeders in the nature of containers; Litter trays for birds; Food containers for pet animals; Plastic containers for dispensing food to pets; Bird feeders for feeding birds in the wild; Mangers for animals; Containers for bird food; Litter scoops for use with pet animals; Mangers for cows; Mangers for horses; Mangers for sheep; Feeding troughs for livestock; Poultry rings; Goldfish bowls; Scoops for the disposal of pet waste; Cat litter pans; Combs for use on domestic animals; Cages of metal for domestic use; Plastics trays for use as litter trays for cats; Dog food scoops; Feeding troughs of metal for cattle; Metal pans for cattle; Nest eggs, artificial; Non-mechanized pet waterers in the nature of portable water and fluid dispensers for pets; Non-mechanized animal feeders; Scoops for the disposal of animals excrement; Pig troughs; Perches for bird cages; Currycombs; Combs for animals; Cages for household pets; Plastic containers for dispensing drink to pets; Drinking troughs; Feeding troughs; Poultry troughs; Birdcages; Bird baths; Bird baths not being structures; Bird cages for domestic birds; Rings for birds; Animal activated animal feeders; Animal activated livestock waterers; Animal activated livestock feeders; Bird feeders; Pet feeding and drinking bowls; Watering troughs for cattle; Battery operated lint removers; Ironing boards; Flat-iron stands; Ironing cloths; Electric lint removers; Glove stretchers; Shirt stretchers; Trouser presses; Trouser stretchers; Clothing stretchers; Buttonhooks; Ironing boards [kotedai]; Tie presses; Frames for drying and maintaining the shape of clothing items; Shoe horns; Wax-polishing appliances, non-electric, for shoes; Shoe trees; Boot stretchers of wood; Boot jacks; Boot trees [stretchers]; Clothes drying racks; Clothes-pegs; Laundry drying racks; Clothes drying hangers; Ironing board covers, shaped; Clothes drying hangers specially designed for specialty clothing; Dental cleaning articles.

Class 35: Business analysis, research and information services; Business assistance, management and administrative services; Commercial trading and consumer information services; Advertising, marketing and promotional services; Collection and systematization of business data; Administrative data processing; Clerical services; Human resources management and recruitment services; Business consultancy and advisory services; Rental of office machines; Auctioneering services; Rental of vending machines; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail store services in the field of clothing; Retail services in relation to fuels; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to furnishings; Retail services in relation to ice creams; Retail services in relation to sorbets; Retail services in relation to fodder for animals; Retail services in relation to tableware; Retail services in relation to coffee; Retail services in relation to cookware; Retail services relating to food; Retail services in relation to dietary supplements; Retail services in relation to lubricants; Retail services in relation to chocolate; Retail services connected with stationery; Shop retail services connected with carpets; Retail services in relation to non-alcoholic beverages; Retail services in relation to alcoholic beverages (except beer); Retail services in relation to chemicals for use in horticulture; Retail services in relation to frozen yogurts; Retail services in relation to hand-operated implements for construction; Retail services in relation to hand-operated tools for construction; Retail services in relation to information technology equipment; Retail services in relation to medical apparatus; Retail services in relation to construction equipment; Retail services in relation to cutlery; Retail services in relation to sun tanning appliances; Retail services in relation to computer hardware; Retail services in relation to computer software; Retail services in relation to desserts; Retail services in relation to vehicles; Retail services in relation to hygienic implements for humans; Retail services in relation to hygienic implements for animals; Retail services in relation to beauty implements for humans; Retail services in relation to beauty implements for animals; Retail services in relation to navigation devices; Retail services in relation to confectionery; Retail services in relation to seafood; Retail services in relation to dairy products; Retail services in relation to stationery supplies; Retail services in relation to preparations for making beverages; Retail services in relation to smartphones; Retail services in relation to smartwatches; Retail services in relation to games; Retail services in relation to toys; Retail services in relation to sporting articles; Retail services in relation to audio-visual equipment; Retail services in relation to horticulture equipment; Retail services in relation to wearable computers; Retail services in relation to heaters; Retail services in relation to sanitation equipment; Retail services in relation to articles for use with tobacco; Retail services in relation to food cooking equipment; Retail services in relation to heating equipment; Retail services in relation to cooling equipment; Retail services in relation to clothing; Retail services in relation to printed matter; Retail services in relation to disposable paper products; Retail services in relation to gardening articles; Retail services in relation to fabrics; Retail services in relation to cocoa; Retail services in relation to headgear; Retail services in relation to musical instruments; Retail services in relation to foodstuffs; Retail services in relation to furniture; Retail services in relation to cleaning articles; Retail services in relation to sporting equipment; Retail services in relation to teas; Retail services in relation to jewellery; Retail services in relation to toiletries; Retail services in relation to horticulture products; Retail services in relation to downloadable music files; Retail services in relation to downloadable electronic publications; Department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, optical goods, domestic electrical and electronic equipment; Retail services in relation to baked goods; Retail services in relation to lighting; Retail services in relation to beer; Retail services in relation to floor coverings; Retail services in relation to litter for animals; Retail services in relation to meats; Retail services in relation to hearing protection devices; Retail services in relation to luggage; Retail services in relation to physical therapy equipment; Retail services in relation to preparations for making alcoholic beverages; Retail services in relation to saddlery; Retail services in relation to footwear; Retail services in relation to bedding for animals; Retail services in relation to tobacco; Retail services in relation to bags; Retail services in relation to diving equipment; Retail services in relation to animal grooming preparations; Retail services in relation to educational supplies; Retail services in relation to water supply equipment; Retail services in relation to time instruments; Retail services in relation to medical instruments; Retail services in relation to sanitary installations; Retail services in relation to sex aids; Retail services in relation to veterinary apparatus; Retail services in relation to veterinary instruments; Retail services in relation to veterinary articles; Retail services in relation to earthmoving equipment; Retail services in relation to threads; Retail services in relation to yarns; Retail services in relation to freezing equipment; Retail services in relation to metal hardware; Retail services in relation to works of art; Retail services in relation to art materials; Retail services in relation to refrigerating equipment; Retail services in relation to veterinary preparations; Retail services in relation to sewing articles; Retail services in relation to umbrellas; Retail services in relation to cleaning preparations; Retail services in relation to weapons; Retail services in relation to wall coverings; Retail services in relation to recorded content; Retail services in relation to chemicals for use in forestry; Retail services in relation to chemicals for use in agriculture; Retail services in relation to dietetic preparations; Retail services in relation to festive decorations; Retail services in relation to agricultural equipment; Wholesale services in relation to baked goods; Wholesale services in relation to food preparation implements; Wholesale services in relation to kitchen knives; Wholesale services in relation to alcoholic beverages (except beer); Wholesale services in relation to articles for use with tobacco; Wholesale services in relation to ice creams; Wholesale services in relation to sorbets; Wholesale services in relation to fodder for animals; Wholesale services in relation to navigation devices; Wholesale services in relation to coffee; Wholesale services in relation to seafood; Wholesale services in relation to dairy products; Wholesale services in relation to foodstuffs; Wholesale services in relation to preparations for making alcoholic beverages; Wholesale services in relation to chocolate; Wholesale services in relation to beauty implements for humans; Wholesale services in relation to games; Wholesale services in relation to bedding for animals; Wholesale services in relation to water supply equipment; Wholesale services in relation to audio-visual equipment; Wholesale services in relation to frozen yogurts; Wholesale services in relation to hand-operated implements for construction; Wholesale services in relation to hand-operated tools for construction; Wholesale services in relation to information technology equipment; Wholesale services in relation to medical apparatus; Wholesale services in relation to medical instruments; Wholesale services in relation to sanitary installations; Wholesale services in relation to veterinary apparatus; Wholesale services in relation to veterinary instruments; Wholesale services in relation to sanitation equipment; Wholesale services in relation to heating equipment; Wholesale services in relation to food cooking equipment; Wholesale services in relation to cooling equipment; Wholesale services in relation to clothing; Wholesale services in relation to lighting; Wholesale services in relation to computer hardware; Wholesale services in relation to computer software; Wholesale services in relation to vehicles; Wholesale services in relation to freezing equipment; Wholesale services in relation to heaters; Wholesale services in relation to cocoa; Wholesale services in relation to art materials; Wholesale services in relation to refrigerating equipment; Wholesale services in relation to furniture; Wholesale services in relation to stationery supplies; Wholesale services in relation to jewellery; Wholesale services in relation to teas; Wholesale services in relation to animal grooming preparations; Wholesale services in relation to toiletries; Wholesale services in relation to educational supplies; Wholesale services in relation to weapons; Wholesale services in relation to chemicals for use in agriculture; Wholesale services in relation to horticulture equipment; Wholesale services in relation to horticulture products; Wholesale services in relation to beer; Wholesale services in relation to fuels; Wholesale services in relation to fragrancing preparations; Wholesale services in relation to furnishings; Wholesale services in relation to meats; Wholesale services in relation to threads; Wholesale services in relation to luggage; Wholesale services in relation to fabrics; Wholesale services in relation to headgear; Wholesale services in relation to works of art; Wholesale services in relation to veterinary preparations and articles; Wholesale services in relation to dietary supplements; Wholesale services in relation to preparations for making beverages; Wholesale services in relation to umbrellas; Wholesale services in relation to cleaning articles; Wholesale services in relation to cleaning preparations; Wholesale services in relation to saddlery; Wholesale services in relation to lubricants; Wholesale services in relation to footwear; Wholesale services in relation to tobacco; Wholesale services in relation to bags; Wholesale services in relation to non-alcoholic beverages; Wholesale services in relation to chemicals for use in forestry; Wholesale services in relation to chemicals for use in horticulture; Wholesale services in relation to dietetic preparations; Wholesale services in relation to veterinary articles; Wholesale services in relation to construction equipment; Wholesale services in relation to cutlery; Wholesale services in relation to desserts; Wholesale services in relation to floor coverings; Wholesale services in relation to printed matter; Wholesale services in relation to litter for animals; Wholesale services in relation to disposable paper products; Wholesale services in relation to earthmoving equipment; Wholesale services in relation to yarns; Wholesale services in relation to tableware; Wholesale services in relation to hygienic implements for humans; Wholesale services in relation to metal hardware; Wholesale services in relation to hygienic implements for animals; Wholesale services in relation to cookware; Wholesale services in relation to confectionery; Wholesale services in relation to veterinary preparations; Wholesale services in relation to sewing articles; Wholesale services in relation to toys; Wholesale services in relation to beauty implements for animals; Wholesale services in relation to sporting articles; Wholesale services in relation to sporting equipment; Wholesale services in relation to wall coverings; Wholesale services in relation to festive decorations; Wholesale services in relation to agricultural equipment; Online retail store services relating to clothing; Online retail store services relating to cosmetic and beauty products; On-line retail store services featuring cosmetic and beauty products, clothing and accessories; Mail order retail services connected with clothing accessories; Advertising, marketing and promotional consultancy, advisory and assistance services; Loyalty, incentive and bonus program services; Trade show and exhibition services; Product demonstrations and product display services; Distribution of advertising, marketing and promotional material; Provision of advertising space, time and media; Public relations services.

Class 38: Telecommunication services; Broadcasting services; Computer communication and Internet access; Telephone services; Provision and rental of telecommunications facilities and equipment.

Class 39: Parking and vehicle storage, mooring; Packaging and storage of goods; Distribution by pipeline and cable.

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 opponent’s list of goods in Class 9, 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 by analogy on the use of ‘in particular’ a reference in the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

However, the term ‘namely’, used in the opponent’s list of services in Classes 35, 38 and 42 to show the relationship of individual goods and services with a broader category, is exclusive and restricts the scope of protection only to the specifically listed 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 and services in Classes 3, 7, 8, 11, 21 and 39

The contested goods and services in these classes are, in essence, toiletry, cleaning or fragrance preparations (Class 3) machines and machine tools (Class 7), hand tools and implements (Class 8), heating, cooking, ventilating, air-conditioning and purifying equipment, sanitary installations, water supply and industrial treatment installations, refrigerating and freezing equipment (Class 11), household or kitchen utensils and containers (Class 21) and services of parking and vehicle storage, mooring and packaging of goods (Class 39). These goods and services do not show any similarity in terms of their nature, usual origin or method of use with the goods and services of earlier mark which belong to the following areas: information technology, audiovisual and optical goods (Class 9), printed matter, instructional and teaching materials (Class 16), services aimed at supporting or helping other businesses to do or improve their business (Class 35), telecommunications (Class 38), publishing, educational and entertainment services (Class 41) and information technology services (Class 42). Furthermore, the goods and services compared are neither in competition nor complementary to one another. Therefore, they are dissimilar.

Contested services in Class 35

The contested business analysis includes, as a broader category, the opponent’s economic forecasting in Class 35. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested business research includes, as a broader category, the opponent’s market research in Class 35. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested business information services are included in the broad category of the opponent’s information in Class 35. Therefore, they are identical.

The contested business assistance services include, as a broader category, the opponent’s assistance to industrial enterprises or commercial in the driving of their business in Class 35. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested business management services include, as a broader category, the opponent’s assistance to industrial enterprises or commercial in the economic forecasting in Class 35. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested business administrative services overlap with the opponent’s assistance to industrial enterprises or commercial in the driving of their business in Class 35. Therefore, they are identical.

Advertising services are identically contained in the opponent’s lists of services in Class 35.

The contested marketing and promotional services are included in the broad category of the opponent’s advertising services in Class 35. Therefore, they are identical.

The contested collection of business data overlaps with the opponent’s collection of data in a master file in Class 35. Therefore, they are identical.

The contested administrative data processing and clerical services include, as a broader category, the opponent’s computerised file management in Class 35. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested human resources management and recruitment services are included in the broad category of the opponent’s assistance to industrial enterprises or commercial in the driving of their business in Class 35. Therefore, they are identical.

The contested business consultancy and advisory services are identical to the opponent’s assistance to industrial enterprises or commercial in information or business enquiries in Class 35 because the opponent’s services are included in, or overlap with, the contested services.

The contested advertising, marketing and promotional consultancy, advisory and assistance services; loyalty, incentive and bonus program services; trade show and exhibition services; product demonstrations and product display services; distribution of advertising, marketing and promotional material; provision of advertising space, time and media; public relations services are included in the broad category of the opponent’s advertising services in Class 35. Therefore, they are identical.

The contested commercial trading and consumer information services are mainly business support services such as processing orders, advisory services relating to the purchase of goods and services, arranging commercial contracts, etc. These services are similar to the opponent’s assistance to industrial enterprises or commercial in the driving of their business, information or business enquiries in Class 35. Both the opponent’s and the contested services consist in business support activities. Therefore, they have similar nature and purpose.

The contested systematization of business data is similar to the opponent’s assistance to industrial enterprises or commercial in the compilation of information in Class 35. The services under comparison may have the same providers, distribution channels and the relevant public.

The contested rental of office machines is similar to the opponent’s assistance to industrial enterprises or commercial in the driving of their business in Class 35. Both sets of services are aimed at supporting or helping other businesses to do their business. Furthermore, they target the same public and are likely to come from the same kinds of companies.

The contested services include retail and wholesale services for various goods.

Retail services concerning the sale of particular goods are similar to a low degree to these particular goods. Although the nature, purpose and method of use of these goods and services are not the same, they have some similarities, as they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public. Therefore, the contested retail services are similar to a low degree to the opponent’s goods, if there is identity between the goods to which the retail services relate and the goods of the opponent for any reason, i.e. either because they overlap (e.g. computer hardware overlaps with game computer adapted for use only with a television receiver and smartphones, smartwatches or wearable computers overlap with apparatus for reproduction of sound and images) or because one is comprised in a category of the other’s goods (video games are included in the broad category of recorded content).

The following retail and wholesale services are similar to a low degree to the corresponding opponent’s goods in Class 9 or 16:

Retail services in relation to information technology equipment; Retail services in relation to computer hardware; Retail services in relation to computer software; Retail services in relation to smartphones; Retail services in relation to smartwatches; Retail services in relation to games; Retail services in relation to audio-visual equipment; Retail services in relation to wearable computers; Retail services in relation to printed matter; Department store retail services connected with the sale of optical goods, domestic electrical and electronic equipment; Retail services in relation to educational supplies; Retail services in relation to recorded content; Wholesale services in relation to games; Wholesale services in relation to audio-visual equipment; Wholesale services in relation to information technology equipment; Wholesale services in relation to computer hardware; Wholesale services in relation to computer software; Wholesale services in relation to educational supplies; Wholesale services in relation to printed matter.

According to the same reasoning, the contested services of retail and wholesale of goods in relation to which no identity with the goods of the opponent has been found are considered dissimilar to the goods and services of the opponent. These are the following:

Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail store services in the field of clothing; Retail services in relation to fuels; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to furnishings; Retail services in relation to ice creams; Retail services in relation to sorbets; Retail services in relation to fodder for animals; Retail services in relation to tableware; Retail services in relation to coffee; Retail services in relation to cookware; Retail services relating to food; Retail services in relation to dietary supplements; Retail services in relation to lubricants; Retail services in relation to chocolate; Retail services connected with stationery; Shop retail services connected with carpets; Retail services in relation to non-alcoholic beverages; Retail services in relation to alcoholic beverages (except beer); Retail services in relation to chemicals for use in horticulture; Retail services in relation to frozen yogurts; Retail services in relation to hand-operated implements for construction; Retail services in relation to hand-operated tools for construction; Retail services in relation to medical apparatus; Retail services in relation to construction equipment; Retail services in relation to cutlery; Retail services in relation to sun tanning appliances; Retail services in relation to desserts; Retail services in relation to vehicles; Retail services in relation to hygienic implements for humans; Retail services in relation to hygienic implements for animals; Retail services in relation to beauty implements for humans; Retail services in relation to beauty implements for animals; Retail services in relation to navigation devices; Retail services in relation to confectionery; Retail services in relation to seafood; Retail services in relation to dairy products; Retail services in relation to stationery supplies; Retail services in relation to preparations for making beverages; Retail services in relation to toys; Retail services in relation to sporting articles; Retail services in relation to horticulture equipment; Retail services in relation to heaters; Retail services in relation to sanitation equipment; Retail services in relation to articles for use with tobacco; Retail services in relation to food cooking equipment; Retail services in relation to heating equipment; Retail services in relation to cooling equipment; Retail services in relation to clothing; Retail services in relation to disposable paper products; Retail services in relation to gardening articles; Retail services in relation to fabrics; Retail services in relation to cocoa; Retail services in relation to headgear; Retail services in relation to musical instruments; Retail services in relation to foodstuffs; Retail services in relation to furniture; Retail services in relation to cleaning articles; Retail services in relation to sporting equipment; Retail services in relation to teas; Retail services in relation to jewellery; Retail services in relation to toiletries; Retail services in relation to horticulture products; Retail services in relation to downloadable music files; Retail services in relation to downloadable electronic publications; Department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, Retail services in relation to baked goods; Retail services in relation to lighting; Retail services in relation to beer; Retail services in relation to floor coverings; Retail services in relation to litter for animals; Retail services in relation to meats; Retail services in relation to hearing protection devices; Retail services in relation to luggage; Retail services in relation to physical therapy equipment; Retail services in relation to preparations for making alcoholic beverages; Retail services in relation to saddlery; Retail services in relation to footwear; Retail services in relation to bedding for animals; Retail services in relation to tobacco; Retail services in relation to bags; Retail services in relation to diving equipment; Retail services in relation to animal grooming preparations; Retail services in relation to water supply equipment; Retail services in relation to time instruments; Retail services in relation to medical instruments; Retail services in relation to sanitary installations; Retail services in relation to sex aids; Retail services in relation to veterinary apparatus; Retail services in relation to veterinary instruments; Retail services in relation to veterinary articles; Retail services in relation to earthmoving equipment; Retail services in relation to threads; Retail services in relation to yarns; Retail services in relation to freezing equipment; Retail services in relation to metal hardware; Retail services in relation to works of art; Retail services in relation to art materials; Retail services in relation to refrigerating equipment; Retail services in relation to veterinary preparations; Retail services in relation to sewing articles; Retail services in relation to umbrellas; Retail services in relation to cleaning preparations; Retail services in relation to weapons; Retail services in relation to wall coverings; Retail services in relation to chemicals for use in forestry; Retail services in relation to chemicals for use in agriculture; Retail services in relation to dietetic preparations; Retail services in relation to festive decorations; Retail services in relation to agricultural equipment; Wholesale services in relation to baked goods; Wholesale services in relation to food preparation implements; Wholesale services in relation to kitchen knives; Wholesale services in relation to alcoholic beverages (except beer); Wholesale services in relation to articles for use with tobacco; Wholesale services in relation to ice creams; Wholesale services in relation to sorbets; Wholesale services in relation to fodder for animals; Wholesale services in relation to navigation devices; Wholesale services in relation to coffee; Wholesale services in relation to seafood; Wholesale services in relation to dairy products; Wholesale services in relation to foodstuffs; Wholesale services in relation to preparations for making alcoholic beverages; Wholesale services in relation to chocolate; Wholesale services in relation to beauty implements for humans; Wholesale services in relation to bedding for animals; Wholesale services in relation to water supply equipment; Wholesale services in relation to frozen yogurts; Wholesale services in relation to hand-operated implements for construction; Wholesale services in relation to hand-operated tools for construction; Wholesale services in relation to medical apparatus; Wholesale services in relation to medical instruments; Wholesale services in relation to sanitary installations; Wholesale services in relation to veterinary apparatus; Wholesale services in relation to veterinary instruments; Wholesale services in relation to sanitation equipment; Wholesale services in relation to heating equipment; Wholesale services in relation to food cooking equipment; Wholesale services in relation to cooling equipment; Wholesale services in relation to clothing; Wholesale services in relation to lighting; Wholesale services in relation to vehicles; Wholesale services in relation to freezing equipment; Wholesale services in relation to heaters; Wholesale services in relation to cocoa; Wholesale services in relation to art materials; Wholesale services in relation to refrigerating equipment; Wholesale services in relation to furniture; Wholesale services in relation to stationery supplies; Wholesale services in relation to jewellery; Wholesale services in relation to teas; Wholesale services in relation to animal grooming preparations; Wholesale services in relation to toiletries; Wholesale services in relation to weapons; Wholesale services in relation to chemicals for use in agriculture; Wholesale services in relation to horticulture equipment; Wholesale services in relation to horticulture products; Wholesale services in relation to beer; Wholesale services in relation to fuels; Wholesale services in relation to fragrancing preparations; Wholesale services in relation to furnishings; Wholesale services in relation to meats; Wholesale services in relation to threads; Wholesale services in relation to luggage; Wholesale services in relation to fabrics; Wholesale services in relation to headgear; Wholesale services in relation to works of art; Wholesale services in relation to veterinary preparations and articles; Wholesale services in relation to dietary supplements; Wholesale services in relation to preparations for making beverages; Wholesale services in relation to umbrellas; Wholesale services in relation to cleaning articles; Wholesale services in relation to cleaning preparations; Wholesale services in relation to saddlery; Wholesale services in relation to lubricants; Wholesale services in relation to footwear; Wholesale services in relation to tobacco; Wholesale services in relation to bags; Wholesale services in relation to non-alcoholic beverages; Wholesale services in relation to chemicals for use in forestry; Wholesale services in relation to chemicals for use in horticulture; Wholesale services in relation to dietetic preparations; Wholesale services in relation to veterinary articles; Wholesale services in relation to construction equipment; Wholesale services in relation to cutlery; Wholesale services in relation to desserts; Wholesale services in relation to floor coverings; Wholesale services in relation to litter for animals; Wholesale services in relation to disposable paper products; Wholesale services in relation to earthmoving equipment; Wholesale services in relation to yarns; Wholesale services in relation to tableware; Wholesale services in relation to hygienic implements for humans; Wholesale services in relation to metal hardware; Wholesale services in relation to hygienic implements for animals; Wholesale services in relation to cookware; Wholesale services in relation to confectionery; Wholesale services in relation to veterinary preparations; Wholesale services in relation to sewing articles; Wholesale services in relation to toys; Wholesale services in relation to beauty implements for animals; Wholesale services in relation to sporting articles; Wholesale services in relation to sporting equipment; Wholesale services in relation to wall coverings; Wholesale services in relation to festive decorations; Wholesale services in relation to agricultural equipment; Online retail store services relating to clothing; Online retail store services relating to cosmetic and beauty products; On-line retail store services featuring cosmetic and beauty products, clothing and accessories; Mail order retail services connected with clothing accessories.

The contested auctioneering services are rendered by specialised companies (auction agencies) that mediate the process of buying and selling goods or services, offering them up for bidding, taking bids and then selling the item to the highest bidder. The contested rental of vending machines is a specific service provided by specialist companies in order to allow other entrepreneurs to be involved in machine-operated retail sales without purchasing the vending machine. These services have different natures and purposes from the opponent’s goods and services. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary nor in competition. Their distribution channels and methods of use are also different. Consumers would not think that they come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested services in Class 38

The contested telecommunication services; telephone services include, as broader categories, the opponent’s video telephone services in Class 38. Since the Opposition Division cannot dissect ex officio the broad categories of the contested services, they are considered identical to the opponent’s services.

The contested broadcasting services include, as a broader category, the opponent’s television broadcasting and radio broadcasting in Class 38. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested computer communication and internet access includes, as a broader category, or overlaps with, the opponent’s transmission of data via communicating information systems namely; network Internet, Extranet, Intranet in Class 38. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested provision and rental of telecommunications facilities and equipment is similar to the opponent’s transmission of data via communicating information systems namely; network Internet, Extranet, Intranet in Class 38 as they can have the same providers, distribution channels and relevant public.

Contested services in Class 41

The contested education (listed twice) is identically contained in the opponent’s list of services in Class 41, although worded differently.

The contested entertainment is identical to the opponent’s entertainment services in Class 41.

The contested sports, sports and fitness have a similar purpose to the opponent’s entertainment services in Class 41. Furthermore, these services may have the same relevant public and distribution channels. Therefore, they are similar.

The contested audio and video production, includes, as a broader category, the opponent’s production of radio and television programmes in Class 41. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested photography includes, as a broader category, the opponent’s photographic reporting in Class 41. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested library services are considered similar to the opponent’s educational services in Class 41, as they have the same educational purpose and it is common practice for educational institutions to maintain a library and to lend teaching materials such as books to participants in educational courses. Therefore, the goods are commonly offered by the same institutions that provide education and teaching services, and these goods and services also target the same public. Therefore, they are identical.

The contested instruction; exhibition services for educational purposes are included in the broad category of, or overlap with, the opponent’s educational services in Class 41. Therefore, they are identical.

The contested gambling; exhibition services for entertainment purposes; conducting entertainment exhibitions in magic shows; diving exhibitions (organising of -) are included in the broad category of the opponent’s entertainment services in Class 41. Therefore, they are identical.

The contested art exhibition services are included in the broad category of, or overlap with, the opponent’s organization of exhibitions for cultural purposes in Class 41. Therefore, they are identical.

The contested conference services; organisation of seminars; conducting of seminars and congresses; arranging and conducting educational conferences; arranging and conducting of conferences, congresses and symposiums; arranging of conventions for entertainment purposes; arranging of conventions for business purposes; arranging and conducting of seminars; congresses; seminars; arranging of lectures are identical to the opponent’s arranging and conducting of colloquiums, conferences and congresses in Class 41, either because they are identically contained in both lists (although worded differently) or because the opponent’s services include, are included in, or overlap with, the contested services.

The contested providing museum facilities [presentation, exhibitions] includes as a broader category, or overlaps with, the opponent’s organization of exhibitions for cultural purposes in Class 41. Therefore, they are identical.

The contested operating quizzes; arranging of competitions [education or entertainment]; organisation of quizzes, games and competitions; organisation of dancing competitions; organisation of professional golf tournaments or competitions; arranging of competitions via the internet; organization of competitions; organising of entertainment competitions are identical to the opponent’s organisation of competitions (education or entertainment) or games in Class 41, either because they are identically contained in both lists (including synonyms) or because the opponent’s services include, are included in, or overlap with, the contested services. Therefore, they are identical.

The contested conducting of competitions on the Internet; conducting of phone-in competitions; conducting of competitions [education or entertainment] overlap with the opponent’s games offered online on a computer network in Class 41. Therefore, they are identical.

The contested publishing includes, as a broader category, the opponent’s publishing services and of publication of texts other than advertising, newspapers, periodicals and of all sound carriers and/or visual and of mounts multi-media (interactive discs, records compacts compact smart read-only, digital video discs), services of publishing of programmes multi-media (setting in computer science shape of texts and/or images, fixed or animated, and or of sounds (musical or not), for interactive use or not in Class 41. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested reporting includes, as a broader category, the opponent’s photographic reporting in Class 41. Since the Opposition Division cannot dissect ex officio the broad category of the contested services, they are considered identical to the opponent’s services.

The contested consultancy and information services relating to arranging, conducting and organisation of colloquiums; consultancy and information services relating to arranging, conducting and organisation of congresses; consultancy and information services relating to arranging, conducting and organisation of conferences are similar to the opponent’s arranging and conducting of colloquiums, conferences and congresses in Class 41, given that they are complementary and may coincide in service providers, distribution channels and relevant public.

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 partly at the public at large (e.g. video games, entertainment) and partly at business customers with specific professional knowledge or expertise (e.g. business management services).

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 goods and services.

The signs

Earlier trade mark

Contested sign

The relevant territory is France.

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).

Both signs contain the word ‘PRIMA’, which appears on a stand-alone basis. Although the term ‘PRIMA’ includes the root ‘PRIM’ which is used in words such as the adjective ‘primaire’ or the verb ‘primer’ which have connotations of being ‘first’ in importance, in rank or in time, the word as such does not exist in French and the possibility of an association with the abovementioned words/meanings is too remote to affect the distinctiveness of the element ‘PRIMA’.

The word ‘CUCINA’ of the contested mark will be understood at least by a part of the relevant public as an Italian word for ‘kitchen’, in particular, since it is close to the French equivalent ‘cuisine’. Furthermore, this meaning is reinforced by the figurative element representing the chef’s hat with a star on it. The degree of distinctiveness of these elements is lower than normal in relation to the services that could concern cooking (e.g. even if not expressly mentioned, education services may include those related to cooking). For the remaining relevant services these elements have no meaning and are, therefore, distinctive.

The signs have no elements that could be considered clearly more dominant than other elements.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37).

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

Visually, the signs coincide in the word ‘prima’ which appears in both signs written in lower case. They differ in the additional word ‘cucina’ of the contested sign and in the graphical representation of letters, figurative elements and colours. However, despite being graphically represented, the letters are clearly legible and the figurative elements have lesser impact.

Therefore, the signs are visually similar to an average degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛PRIMA’, present identically in both signs. The pronunciation differs in the sound of the word ‘CUCINA’ of the contested sign, which has no counterpart in the earlier mark. However, since the public reads from left to right, the word ‘PRIMA’ in the contested sign will be the first word to catch the attention of the reader.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs contain the word ‘PRIMA’ which has no meaning in French. However, there are other elements in the contested sign which have a meaning or may be understood.

Therefore, the signs are not conceptually similar.

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.

Global assessment, other arguments and conclusion

The goods and services are partly identical or similar (to varying degrees) and partly dissimilar. The signs are visually and aurally similar to an average degree. They are not similar conceptually. The earlier mark has a normal degree of distinctiveness.

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.

Therefore, although there are some differences between the signs at issue, the Opposition Division considers that the coincidence in the word ‘PRIMA’, which plays an independent and distinctive role in each sign, creates a similarity which may lead the consumers to consider that the identical and similar goods and services come from the same undertaking or, as the case may be, from economically linked undertakings.

Considering all the above, the Opposition Division finds that, in relation to identical and similar goods and services, there is a likelihood of confusion on the part of the French public, even displaying a higher than average degree of attention, and therefore the opposition is partly well founded on the basis of the opponent’s French trade mark registration No 3 812 250.

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

The opposition is not successful insofar as the goods and services that are similar to a low degree are concerned because the degree of similarity of the signs is not sufficient to outweigh the low degree of similarity of the goods and services.

The rest of the 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.

The examination proceeds based on the opponent’s earlier European Union trade mark registration No 3 540 119.

EUROPEAN UNION TRADE MARK REGISTRATION NO 3 540 119

The goods and services

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

Class 4: Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks (lighting); liquified petroleum gas.

Class 11: Apparatus for lighting, heating, steam generating, cooking, drying, ventilating, water supply and sanitary purposes.

Class 39: Distribution of power, in particular gas.

The remaining contested goods and services are the following:

Class 35: Auctioneering services; Rental of vending machines; Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail store services in the field of clothing; Retail services in relation to fuels; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to furnishings; Retail services in relation to ice creams; Retail services in relation to sorbets; Retail services in relation to fodder for animals; Retail services in relation to tableware; Retail services in relation to coffee; Retail services in relation to cookware; Retail services relating to food; Retail services in relation to dietary supplements; Retail services in relation to lubricants; Retail services in relation to chocolate; Retail services connected with stationery; Shop retail services connected with carpets; Retail services in relation to non-alcoholic beverages; Retail services in relation to alcoholic beverages (except beer); Retail services in relation to chemicals for use in horticulture; Retail services in relation to frozen yogurts; Retail services in relation to hand-operated implements for construction; Retail services in relation to hand-operated tools for construction; Retail services in relation to medical apparatus; Retail services in relation to construction equipment; Retail services in relation to cutlery; Retail services in relation to sun tanning appliances; Retail services in relation to desserts; Retail services in relation to vehicles; Retail services in relation to hygienic implements for humans; Retail services in relation to hygienic implements for animals; Retail services in relation to beauty implements for humans; Retail services in relation to beauty implements for animals; Retail services in relation to navigation devices; Retail services in relation to confectionery; Retail services in relation to seafood; Retail services in relation to dairy products; Retail services in relation to stationery supplies; Retail services in relation to preparations for making beverages; Retail services in relation to toys; Retail services in relation to sporting articles; Retail services in relation to horticulture equipment; Retail services in relation to heaters; Retail services in relation to sanitation equipment; Retail services in relation to articles for use with tobacco; Retail services in relation to food cooking equipment; Retail services in relation to heating equipment; Retail services in relation to cooling equipment; Retail services in relation to clothing; Retail services in relation to disposable paper products; Retail services in relation to gardening articles; Retail services in relation to fabrics; Retail services in relation to cocoa; Retail services in relation to headgear; Retail services in relation to musical instruments; Retail services in relation to foodstuffs; Retail services in relation to furniture; Retail services in relation to cleaning articles; Retail services in relation to sporting equipment; Retail services in relation to teas; Retail services in relation to jewellery; Retail services in relation to toiletries; Retail services in relation to horticulture products; Retail services in relation to downloadable music files; Retail services in relation to downloadable electronic publications; Department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools; Retail services in relation to baked goods; Retail services in relation to lighting; Retail services in relation to beer; Retail services in relation to floor coverings; Retail services in relation to litter for animals; Retail services in relation to meats; Retail services in relation to hearing protection devices; Retail services in relation to luggage; Retail services in relation to physical therapy equipment; Retail services in relation to preparations for making alcoholic beverages; Retail services in relation to saddlery; Retail services in relation to footwear; Retail services in relation to bedding for animals; Retail services in relation to tobacco; Retail services in relation to bags; Retail services in relation to diving equipment; Retail services in relation to animal grooming preparations; Retail services in relation to water supply equipment; Retail services in relation to time instruments; Retail services in relation to medical instruments; Retail services in relation to sanitary installations; Retail services in relation to sex aids; Retail services in relation to veterinary apparatus; Retail services in relation to veterinary instruments; Retail services in relation to veterinary articles; Retail services in relation to earthmoving equipment; Retail services in relation to threads; Retail services in relation to yarns; Retail services in relation to freezing equipment; Retail services in relation to metal hardware; Retail services in relation to works of art; Retail services in relation to art materials; Retail services in relation to refrigerating equipment; Retail services in relation to veterinary preparations; Retail services in relation to sewing articles; Retail services in relation to umbrellas; Retail services in relation to cleaning preparations; Retail services in relation to weapons; Retail services in relation to wall coverings; Retail services in relation to chemicals for use in forestry; Retail services in relation to chemicals for use in agriculture; Retail services in relation to dietetic preparations; Retail services in relation to festive decorations; Retail services in relation to agricultural equipment; Wholesale services in relation to baked goods; Wholesale services in relation to food preparation implements; Wholesale services in relation to kitchen knives; Wholesale services in relation to alcoholic beverages (except beer); Wholesale services in relation to articles for use with tobacco; Wholesale services in relation to ice creams; Wholesale services in relation to sorbets; Wholesale services in relation to fodder for animals; Wholesale services in relation to navigation devices; Wholesale services in relation to coffee; Wholesale services in relation to seafood; Wholesale services in relation to dairy products; Wholesale services in relation to foodstuffs; Wholesale services in relation to preparations for making alcoholic beverages; Wholesale services in relation to chocolate; Wholesale services in relation to beauty implements for humans; Wholesale services in relation to bedding for animals; Wholesale services in relation to water supply equipment; Wholesale services in relation to frozen yogurts; Wholesale services in relation to hand-operated implements for construction; Wholesale services in relation to hand-operated tools for construction; Wholesale services in relation to medical apparatus; Wholesale services in relation to medical instruments; Wholesale services in relation to sanitary installations; Wholesale services in relation to veterinary apparatus; Wholesale services in relation to veterinary instruments; Wholesale services in relation to sanitation equipment; Wholesale services in relation to heating equipment; Wholesale services in relation to food cooking equipment; Wholesale services in relation to cooling equipment; Wholesale services in relation to clothing; Wholesale services in relation to lighting; Wholesale services in relation to vehicles; Wholesale services in relation to freezing equipment; Wholesale services in relation to heaters; Wholesale services in relation to cocoa; Wholesale services in relation to art materials; Wholesale services in relation to refrigerating equipment; Wholesale services in relation to furniture; Wholesale services in relation to stationery supplies; Wholesale services in relation to jewellery; Wholesale services in relation to teas; Wholesale services in relation to animal grooming preparations; Wholesale services in relation to toiletries; Wholesale services in relation to weapons; Wholesale services in relation to chemicals for use in agriculture; Wholesale services in relation to horticulture equipment; Wholesale services in relation to horticulture products; Wholesale services in relation to beer; Wholesale services in relation to fuels; Wholesale services in relation to fragrancing preparations; Wholesale services in relation to furnishings; Wholesale services in relation to meats; Wholesale services in relation to threads; Wholesale services in relation to luggage; Wholesale services in relation to fabrics; Wholesale services in relation to headgear; Wholesale services in relation to works of art; Wholesale services in relation to veterinary preparations and articles; Wholesale services in relation to dietary supplements; Wholesale services in relation to preparations for making beverages; Wholesale services in relation to umbrellas; Wholesale services in relation to cleaning articles; Wholesale services in relation to cleaning preparations; Wholesale services in relation to saddlery; Wholesale services in relation to lubricants; Wholesale services in relation to footwear; Wholesale services in relation to tobacco; Wholesale services in relation to bags; Wholesale services in relation to non-alcoholic beverages; Wholesale services in relation to chemicals for use in forestry; Wholesale services in relation to chemicals for use in horticulture; Wholesale services in relation to dietetic preparations; Wholesale services in relation to veterinary articles; Wholesale services in relation to construction equipment; Wholesale services in relation to cutlery; Wholesale services in relation to desserts; Wholesale services in relation to floor coverings; Wholesale services in relation to litter for animals; Wholesale services in relation to disposable paper products; Wholesale services in relation to earthmoving equipment; Wholesale services in relation to yarns; Wholesale services in relation to tableware; Wholesale services in relation to hygienic implements for humans; Wholesale services in relation to metal hardware; Wholesale services in relation to hygienic implements for animals; Wholesale services in relation to cookware; Wholesale services in relation to confectionery; Wholesale services in relation to veterinary preparations; Wholesale services in relation to sewing articles; Wholesale services in relation to toys; Wholesale services in relation to beauty implements for animals; Wholesale services in relation to sporting articles; Wholesale services in relation to sporting equipment; Wholesale services in relation to wall coverings; Wholesale services in relation to festive decorations; Wholesale services in relation to agricultural equipment; Online retail store services relating to clothing; Online retail store services relating to cosmetic and beauty products; On-line retail store services featuring cosmetic and beauty products, clothing and accessories; Mail order retail services connected with clothing accessories.

Class 39: Parking and vehicle storage, mooring; Packaging and storage of goods; Distribution by pipeline and cable.

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 terms ‘in particular’ used in the opponent’s list of services in Class 39 and ‘such as’, used in the applicant’s list of goods in Class 21, indicate that the specific goods and services are only examples of items included in the category and that protection is not restricted to them. In other words, they introduce non-exhaustive lists of examples (see by analogy on the use of ‘in particular’ a reference in the judgment of 09/04/2003, T-224/01, Nu-Tride, EU:T:2003:107).

Contested goods in Classes 3 and 8

The contested goods in these classes are, in essence, toiletry, cleaning or fragrance preparations (Class 3) and hand tools and implements (Class 8). These goods do not show any similarity in terms of their nature, usual origin or method of use with the goods and services of earlier mark which are mainly industrial oils and greases, fuels, illuminants, dust absorbing, wetting and binding compositions (Class 4), lighting, heating, steam generating, cooking, drying, ventilating, sanitary and water supply apparatus (Class 11) as well as services of distribution of power (Class 39). Furthermore, the goods and services compared are neither in competition nor complementary to one another.

Contested goods in Class 7

The contested sweeping, cleaning, washing and laundering machines; ironing machines and laundry presses are similar to the opponent’s apparatus for drying purposes in Class 11. The goods may coincide in producers, distribution channels and the relevant public.

The contested machines and machine tools for treatment of materials and for manufacturing include goods such as food and beverage processing and preparation machines and apparatus. Therefore, these goods are similar to the opponent’s apparatus for heating and cooking purposes in Class 11. The goods may share the same producers, distribution channels and the relevant public.

The contested pumps, compressors and fans and the opponent’s apparatus for water supply and sanitary purposes in Class 11 may have the same producers, distribution channels and target the same public. Therefore, they are similar to a low degree.

The remaining contested dispensing machines; current generators; agricultural, earthmoving, construction, oil and gas extraction and mining equipment; engines, powertrains, and generic machine parts; robots; moving and handling equipment; exterior clearing and cleaning equipment; construction equipment; clearing saws [machines]; rechargeable hedge cutters; tree branch cutters [machines]; riding lawn mowers; broadcast seeders; bailing machines; tree branch pruners (electric -); tree stump cutters; pruning saws [electric]; pruning saws [motorised]; incubators for eggs; threshing machines; bunchers [machines]; harrows; harvesting heads; electric lawnmowers; fodder presses; horticultural machines; garden rotavators; grain harvesters [machines]; reapers; grain driers; hedge trimmers [machines]; tedders; power blowers for lawn debris; timber harvesting machinery; chaff cutter blades; edgers [machines]; power driven hedge shears; agricultural machines; agricultural machines for ploughing; agricultural seed planting machine; agricultural machine tools; grass collecting machines; barley splitting machines; reapers and binders; reapers and threshers; harvesting machines; milking machines; ploughshares; ploughs; lawnmowers [machines]; conveyors and conveyors belts; lifting and hoisting equipment, elevators and escalators; packing machines; opening and closing mechanisms are dissimilar to all the goods and services as they have different natures, purpose and methods of use. They are neither complementary nor in competition.

Contested goods in Class 11

The contested lighting and lighting reflectors; vehicle lighting and lighting reflectors are identical to the opponent’s apparatus for lighting in Class 11, either because they are identically contained in the opponent’s list of goods in this class, although worded differently, or because the opponent’s goods include the contested goods.

The contested flues and installations for conveying exhaust gases and air conditioning equipment (ambient) are included in the broad category of, or overlap with, the opponent’s apparatus for ventilating in Class 11. Therefore, they are identical.

The contested burners, boilers and heaters; food and beverage heating equipment and personal heating implements are included in the broad category of the opponent’s apparatus for heating purposes in Class 11. Therefore, they are identical.

The contested filters for industrial and household use are similar to the opponent’s apparatus for sanitary purposes in Class 11. These goods may have the same commercial origin, distribution channels and target the same public.

The contested ventilating equipment (ambient) is identical to the opponent’s apparatus for ventilating in Class 11, although worded differently.

The contested heating equipment (ambient) is identically contained in the opponent’s list of goods in Class 11, although worded differently.

The contested purification equipment (ambient); industrial treatment installations; chemical processing equipment; gas cleaners and purifiers are included in the broad category of, or overlap with, the opponent’s apparatus for sanitary purposes in Class 11. Therefore, they are identical.

The contested food and beverage cooking equipment overlaps with the opponent’s apparatus for cooking purposes in Class 11. Therefore, they are identical.

The contested personal drying implements are included in the broad category of the opponent’s apparatus for drying purposes in Class 11. Therefore, they are identical.

The contested sanitary installations and sanitation equipment are identically contained in the opponent’s list of goods in Class 11, although worded differently.

The contested water supply equipment is identically contained in the opponent’s list of goods in Class 11, although worded differently. Therefore, they are identical.

The contested drying installations are included in the broad category of the opponent’s apparatus for drying purposes in Class 11. Therefore, they are identical.

The contested food and beverage cooling equipment; refrigerating and freezing equipment are similar to the opponent’s apparatus for heating purposes in Class 11 as they may coincide in producers, distribution channels and the relevant public.

The contested food and beverage treatment equipment may have the same origins, distribution channels and consumers as the opponent’s apparatus for cooking purposes in Class 11. Therefore, they are similar.

The contested regulating and safety accessories for water installations are similar to the opponent’s apparatus for water supply purposes in Class 11 as they are complementary. Furthermore, they may share producers and distribution channels.

The contested industrial ovens and furnaces (not for food or beverages) have certain points of contact with the opponent’s apparatus for heating purposes in Class 11. The latter include boilers and burners which are indispensable feature of industrial ovens and furnaces. Such apparatus is not able to function without being connected to a boiler or burner. Thus, it can be expected that these goods will be distributed together and sold by the same undertakings. These goods are, therefore, similar.

The contested regulating and safety accessories for gas installations are similar to the opponent’s apparatus for heating purposes in Class 11 as they are complementary. Furthermore, they may share producers and distribution channels.

However, the contested sun tanning appliances and nuclear installations have a nature that is clearly different from the opponent’s goods in Class 11. In addition, the goods under comparison differ in purpose, and are not complementary or in competition with each other. They are also produced by different undertakings. Therefore, these goods are dissimilar to the opponent’s goods in Class 11.

Furthermore, the contested goods indicated in the previous paragraph are also clearly different from all the remaining earlier goods and services in terms of their nature, purpose and method of use. They are neither complementary nor in competition. Therefore, these goods are dissimilar to all the opponent’s goods and services.

Contested goods in Class 21

The contested tableware, cookware and containers; glasses, drinking vessels and barware are similar to the opponent’s apparatus for heating and cooking purposes in Class 11. The goods may coincide in producers, distribution channels and the relevant public.

The remaining contested goods in this class are all dissimilar to all the goods and services of the earlier mark because they do not show any similarity in terms of their nature, usual origin or method of use. Furthermore, the goods and services compared are neither in competition nor complementary to one another.

In particular, the contested frames for drying and maintaining the shape of clothing items; clothes drying racks; laundry drying racks; clothes drying hangers; clothes drying hangers specially designed for specialty clothing are not considered to be similar to the earlier apparatus for drying purposes in Class 11. Although all these goods are used for drying, they do not have the same nature as the contested goods do not incorporate a heat source. Furthermore, they differ from these and other earlier goods and services in their methods of use and distribution channels. They are not likely to be manufactured by the same undertakings and are neither in competition nor complementary. The above applies even more to the remaining contested goods which, in addition, differ in their purposes.

Contested services in Class 35

As to the contested retail and wholesale services of various goods, reference is made to the reasoning concerning the comparison of the contested retail and wholesale services of various goods with the opponent’s French trade mark registration No 3 812 250.

Similarity between retail services of specific goods covered by one mark and specific goods covered by another mark can only be found where the goods involved in the retail services and the specific goods covered by the other mark are identical.

Therefore, the following retail and wholesale services are similar to a low degree to the opponent’s goods in Classes 4 and 11 of earlier European Union trade mark registration No 3 540 119:

Retail services in relation to fuels; Retail services in relation to lubricants; Retail services in relation to heaters; Retail services in relation to sanitation equipment; Retail services in relation to food cooking equipment; Retail services in relation to heating equipment; Retail services in relation to lighting; Retail services in relation to water supply equipment; Retail services in relation to sanitary installations; Wholesale services in relation to water supply equipment; Wholesale services in relation to sanitary installations; Wholesale services in relation to sanitation equipment; Wholesale services in relation to heating equipment; Wholesale services in relation to food cooking equipment; Wholesale services in relation to lighting; Wholesale services in relation to heaters; Wholesale services in relation to fuels; Wholesale services in relation to lubricants.

Retail or wholesale services for pharmaceutical, veterinary and sanitary preparations and medical supplies; Retail store services in the field of clothing; Retail services connected with the sale of clothing and clothing accessories; Retail services in relation to furnishings; Retail services in relation to ice creams; Retail services in relation to sorbets; Retail services in relation to fodder for animals; Retail services in relation to tableware; Retail services in relation to coffee; Retail services in relation to cookware; Retail services relating to food; Retail services in relation to dietary supplements; Retail services in relation to chocolate; Retail services connected with stationery; Shop retail services connected with carpets; Retail services in relation to non-alcoholic beverages; Retail services in relation to alcoholic beverages (except beer); Retail services in relation to chemicals for use in horticulture; Retail services in relation to frozen yogurts; Retail services in relation to hand-operated implements for construction; Retail services in relation to hand-operated tools for construction; Retail services in relation to medical apparatus; Retail services in relation to construction equipment; Retail services in relation to cutlery; Retail services in relation to sun tanning appliances; Retail services in relation to desserts; Retail services in relation to vehicles; Retail services in relation to hygienic implements for humans; Retail services in relation to hygienic implements for animals; Retail services in relation to beauty implements for humans; Retail services in relation to beauty implements for animals; Retail services in relation to navigation devices; Retail services in relation to confectionery; Retail services in relation to seafood; Retail services in relation to dairy products; Retail services in relation to stationery supplies; Retail services in relation to preparations for making beverages; Retail services in relation to toys; Retail services in relation to sporting articles; Retail services in relation to horticulture equipment; Retail services in relation to articles for use with tobacco; Retail services in relation to cooling equipment; Retail services in relation to clothing; Retail services in relation to disposable paper products; Retail services in relation to gardening articles; Retail services in relation to fabrics; Retail services in relation to cocoa; Retail services in relation to headgear; Retail services in relation to musical instruments; Retail services in relation to foodstuffs; Retail services in relation to furniture; Retail services in relation to cleaning articles; Retail services in relation to sporting equipment; Retail services in relation to teas; Retail services in relation to jewellery; Retail services in relation to toiletries; Retail services in relation to horticulture products; Retail services in relation to downloadable music files; Retail services in relation to downloadable electronic publications; Department store retail services connected with the sale of beauty products, toiletries, machines for household use, hand tools, Retail services in relation to baked goods; Retail services in relation to beer; Retail services in relation to floor coverings; Retail services in relation to litter for animals; Retail services in relation to meats; Retail services in relation to hearing protection devices; Retail services in relation to luggage; Retail services in relation to physical therapy equipment; Retail services in relation to preparations for making alcoholic beverages; Retail services in relation to saddlery; Retail services in relation to footwear; Retail services in relation to bedding for animals; Retail services in relation to tobacco; Retail services in relation to bags; Retail services in relation to diving equipment; Retail services in relation to animal grooming preparations; Retail services in relation to time instruments; Retail services in relation to medical instruments; Retail services in relation to sex aids; Retail services in relation to veterinary apparatus; Retail services in relation to veterinary instruments; Retail services in relation to veterinary articles; Retail services in relation to earthmoving equipment; Retail services in relation to threads; Retail services in relation to yarns; Retail services in relation to freezing equipment; Retail services in relation to metal hardware; Retail services in relation to works of art; Retail services in relation to art materials; Retail services in relation to refrigerating equipment; Retail services in relation to veterinary preparations; Retail services in relation to sewing articles; Retail services in relation to umbrellas; Retail services in relation to cleaning preparations; Retail services in relation to weapons; Retail services in relation to wall coverings; Retail services in relation to chemicals for use in forestry; Retail services in relation to chemicals for use in agriculture; Retail services in relation to dietetic preparations; Retail services in relation to festive decorations; Retail services in relation to agricultural equipment; Wholesale services in relation to baked goods; Wholesale services in relation to food preparation implements; Wholesale services in relation to kitchen knives; Wholesale services in relation to alcoholic beverages (except beer); Wholesale services in relation to articles for use with tobacco; Wholesale services in relation to ice creams; Wholesale services in relation to sorbets; Wholesale services in relation to fodder for animals; Wholesale services in relation to navigation devices; Wholesale services in relation to coffee; Wholesale services in relation to seafood; Wholesale services in relation to dairy products; Wholesale services in relation to foodstuffs; Wholesale services in relation to preparations for making alcoholic beverages; Wholesale services in relation to chocolate; Wholesale services in relation to beauty implements for humans; Wholesale services in relation to bedding for animals; Wholesale services in relation to frozen yogurts; Wholesale services in relation to hand-operated implements for construction; Wholesale services in relation to hand-operated tools for construction; Wholesale services in relation to medical apparatus; Wholesale services in relation to medical instruments; Wholesale services in relation to veterinary apparatus; Wholesale services in relation to veterinary instruments; Wholesale services in relation to cooling equipment; Wholesale services in relation to clothing; Wholesale services in relation to vehicles; Wholesale services in relation to freezing equipment; Wholesale services in relation to cocoa; Wholesale services in relation to art materials; Wholesale services in relation to refrigerating equipment; Wholesale services in relation to furniture; Wholesale services in relation to stationery supplies; Wholesale services in relation to jewellery; Wholesale services in relation to teas; Wholesale services in relation to animal grooming preparations; Wholesale services in relation to toiletries; Wholesale services in relation to weapons; Wholesale services in relation to chemicals for use in agriculture; Wholesale services in relation to horticulture equipment; Wholesale services in relation to horticulture products; Wholesale services in relation to beer; Wholesale services in relation to fragrancing preparations; Wholesale services in relation to furnishings; Wholesale services in relation to meats; Wholesale services in relation to threads; Wholesale services in relation to luggage; Wholesale services in relation to fabrics; Wholesale services in relation to headgear; Wholesale services in relation to works of art; Wholesale services in relation to veterinary preparations and articles; Wholesale services in relation to dietary supplements; Wholesale services in relation to preparations for making beverages; Wholesale services in relation to umbrellas; Wholesale services in relation to cleaning articles; Wholesale services in relation to cleaning preparations; Wholesale services in relation to saddlery; Wholesale services in relation to footwear; Wholesale services in relation to tobacco; Wholesale services in relation to bags; Wholesale services in relation to non-alcoholic beverages; Wholesale services in relation to chemicals for use in forestry; Wholesale services in relation to chemicals for use in horticulture; Wholesale services in relation to dietetic preparations; Wholesale services in relation to veterinary articles; Wholesale services in relation to construction equipment; Wholesale services in relation to cutlery; Wholesale services in relation to desserts; Wholesale services in relation to floor coverings; Wholesale services in relation to litter for animals; Wholesale services in relation to disposable paper products; Wholesale services in relation to earthmoving equipment; Wholesale services in relation to yarns; Wholesale services in relation to tableware; Wholesale services in relation to hygienic implements for humans; Wholesale services in relation to metal hardware; Wholesale services in relation to hygienic implements for animals; Wholesale services in relation to cookware; Wholesale services in relation to confectionery; Wholesale services in relation to veterinary preparations; Wholesale services in relation to sewing articles; Wholesale services in relation to toys; Wholesale services in relation to beauty implements for animals; Wholesale services in relation to sporting articles; Wholesale services in relation to sporting equipment; Wholesale services in relation to wall coverings; Wholesale services in relation to festive decorations; Wholesale services in relation to agricultural equipment; Online retail store services relating to clothing; Online retail store services relating to cosmetic and beauty products; On-line retail store services featuring cosmetic and beauty products, clothing and accessories; Mail order retail services connected with clothing accessories.

The contested auctioneering services and rental of vending machines have different natures and purposes from the opponent’s goods and services. They are offered by different companies to consumers with different needs. Furthermore, they are neither complementary to nor in competition with each other. Their distribution channels and methods of use are also different. Consumers would not think that they come from the same undertaking or economically linked undertakings. Therefore, they are dissimilar.

Contested services in Class 39

The contested services of distribution by pipeline and cable overlap with the opponent’s services of distribution of power, in particular gas. Therefore, they are identical.

The contested storage of goods includes storage of power. Therefore, these services are similar to the opponent’s distribution of power, in particular gas in Class 39, as they may coincide in their providers, distribution channels and the relevant public.

The contested parking and vehicle storage, mooring; packaging of goods are dissimilar to all the goods and services covered by the earlier right. In particular, these contested services are not considered to be similar to the earlier services in Class 39 as they have different natures and intended purpose. They are not produced or provided by the same undertakings and do not share the distribution channels. Furthermore, they are neither complementary nor in competition with each other. The same applies when comparing these contested services with the remaining opponent's goods in Classes 4 and 11.

Relevant public — degree of attention

In the present case, the goods and services found to be identical or similar (to varying degrees) are directed partly at the public at large (e.g. personal drying implements) and partly at business customers with specific professional knowledge or expertise (e.g. industrial treatment installations). 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 goods and services.

The signs

Earlier trade mark

Contested sign

The relevant territory is the European Union.

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.

The word element 'PRIMA' has a clear meaning in certain languages of the European Union, in particular in German and Dutch. However, there are languages of the European Union, such as French, in which, this word does not exists.

Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on the French-speaking part of the public.

As regards the earlier mark, although it is composed of one verbal element, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T-256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T-146/06, Aturion, EU:T:2008:33, § 58). Therefore, the relevant public will identify in the earlier mark the words ‘PRIMA’ and ‘GAZ’. As explained above, although the term ‘PRIMA’ includes the root ‘PRIM’ which is used in words such as the adjective ‘primaire’ or the verb ‘primer’ which have connotations of being ‘first’ in importance, in rank or in time, the word as such does not exist in French and the possibility of an association with the abovementioned words/meanings is too remote to affect the distinctiveness of the element ‘PRIMA’. On the other hand, the word ‘GAZ’ of the earlier mark has a meaning in French, namely that of a substance used, inter alia, as fuel when cooking or heating. Consequently, it is non-distinctive in relation to the goods and services which it describes, such as fuels in Class 4, or which may be gas-operated, such as apparatus for heating and cooking purposes in Class 11, or which have gas as their object, such as distribution of power, in particular gas in Class 39.

However, when taken as a whole, for the French-speaking part of the public the expression ‘PRIMAGAZ’ does not necessarily convey a clear and unambiguous meaning.

As to the contested sign, the word ‘PRIMA’ appears separated from other elements. The figurative element representing the chef’s hat with a star on it and the word ‘CUCINA’, for those who see it as an Italian word for ‘kitchen’, are weak in relation to the cooking or kitchen related goods and services (e.g. the contested retail and wholesale services concern goods which may include those destined for kitchens).

In view of the above, the word ‘PRIMA’ plays an independent distinctive role in both signs.

The signs have no elements that could be considered clearly more dominant than other elements.

Visually, the signs coincide in the word ‘PRIMA’. They differ in the other words, colours, figurative elements, graphical representation of letters and upper/lower case used. Nevertheless, the words are clearly legible. Furthermore, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T-312/03, Selenium-Ace, EU:T:2005:289, § 37). In addition, the figurative elements of the signs are not larger than the word elements and are not arranged in a specific, original or elaborate manner significantly influencing the overall impression produced by the signs (15/12/2009, T-412/08, Trubion, EU:T:2009:507, § 44, also see in relation to the earlier mark 24/09/2015, T-195/14, PRIMA KLIMA / PRIMAGAZ et al., EU:T:2015:681, § 47 and reference to this case). Finally, as far as the verbal elements are concerned, since the public reads from left to right, the word ‘PRIMA’ in both signs will first catch the attention of the reader. This word plays an independent distinctive role in both signs.

In addition, the elements of difference, namely ‘GAZ’, ‘CUCINA’ (for those who associate it with ‘kitchen’) and the representation of the chef’s hat, are non-distinctive or weak in relation to the gas-related and kitchen/cooking-related goods and services, respectively.

Therefore, the signs are visually similar to a low degree.

Aurally, the pronunciation of the signs coincides in the sound of the word ‛PRIMA’, playing an independent distinctive role in both signs. This word will be pronounced first in both signs. The pronunciation differs in the sound of the word ‘GAZ’ of the earlier mark and ‘CUCINA’ of the contested sign. These elements of difference are non-distinctive (‘GAZ’) or weak (‘CUCINA’ for those who associate it with ‘kitchen’) for the related goods and services.

Therefore, the signs are aurally similar to an average degree.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. Both signs contain the word ‘PRIMA’ which has no meaning in French. There are other elements in the signs which have a meaning or may be understood.

Therefore, the signs are not conceptually similar.

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 as a whole has no meaning for any of the goods and services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of the element ‘GAZ’ which is non-distinctive in relation to the goods and services which may be gas-related, as explained above in section c) of this decision.

Global assessment, other arguments and conclusion

The goods and services are partly identical or similar (to varying degrees) and partly dissimilar. The signs are visually similar to a low degree and aurally similar to an average degree. They are not similar conceptually. The earlier mark has a normal degree of distinctiveness.

Therefore, although there are some differences between the signs at issue, the Opposition Division considers that, as the coinciding word ‘PRIMA’ plays an independent and distinctive role in each sign, the consumers, even when their degree of attention is heightened, may be led to believe that the identical and similar goods and services come from the same undertaking or, as the case may be, from economically linked undertakings.

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 goods and services found to be identical or similar to those of the earlier trade mark.

The opposition is not successful insofar as the goods and services that are similar to a low degree are concerned since the degree of similarity of the signs is not sufficient to outweigh the low degree of similarity of the goods and services.

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

Catherine MEDINA

Justyna GBYL

Frédérique SULPICE

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.

prima cucina | Decision 2617598

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